DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Priority
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed application, Application No. 13/672,946, fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application. Specifically, the prior filed application does not provide support for a maskless assembly as required by claim 1.
As stated above claims 1-14 contain subject matter that is not supported by US application 13/672,946. The examiner notes that individual claims have their own priority date, and priority does not belong to the individual limitations within a claim. Therefore, each of the claims of the current application has a priority date of October 6, 2015, which is the earliest filed application with the claimed subject matter.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-5 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 of U.S. Patent No. 11,883,602. Although the claims at issue are not identical, they are not patentably distinct from each other because all of the limitations of the instant claims are found in the patented claims.
Regarding claim 1, a nasal assembly comprising (Claim 1): a pair of tubes, each in gaseous communication with a hose or a fluid source (Claim 10; a pair of posts (Claim 1), each post including: a flange, at a first end, that defines an opening therein (Claim 1), the openings in gaseous communication with each corresponding tube of the pair of tubes (Claim 1); an adhesive applied to each flange and configured for sealably engaging a patient’s nare (Claim 1); and wherein each post is pivotally connected with one of the pair of tubes at a second end opposite the first end of the post and configured to be selectively and independently positionable relative to the other post and the pair of tubes to engage with a respective nare of a patient. (Claim 3, a ball joint for allowing pivotal movement of the pai of tubes about the splitter)
Regarding claim 2, the nasal assembly of claim 1, wherein the second end of each post is pivotally connected one of the pair of tubes through mating engagement of a ball joint within a socket for allowing pivotal movement of the pair of posts about each respective tube of the pair of tubes. (Claim 3)
Regarding claim 3, The nasal assembly of claim 1, further comprising a splitter engaged with each of the pair of tubes at opposite ends from that engaged with each of the posts and engaged with the hose or the fluid source for allowing the gaseous flowthrough between the hose or the fluid source and each of the pair of tubes. (Claim 2)
Regarding claim 4, The nasal assembly of claim 3, wherein the splitter is engaged with each of the pair of tubes through mating engagement of a ball joint within a socket for allowing pivotal movement of the pair of tubes about the splitter. (Claim 3)
Regarding claim 5, The nasal assembly of claim 3, wherein the splitter is engaged with each of the pair of tubes through two receptacles on opposed sides of the splitter from the portion engaged with the hose or the fluid source. (Claim 4, two splitter ball joints)
Allowable Subject Matter
Claims would be allowed if the double patenting rejection of claims 1-5 is overcome.
The following is a statement of reasons for the indication of allowable subject matter:
The closest prior art reference is McAuley (US 2003/0094178), hereinafter McAuley. McAuley teaches a nasal assembly (Fig. 2) comprising: a pair of tubes (Fig. 2: 32, 33), each in gaseous communication with a hose or a fluid source (Y connector connected to the gases outlet end of conduit 3); a pair of posts (Fig. 2:34, 37 and 35, 38), each post including: a first end, that defines an opening therein (paragraph 42, ends in an aperture that is the outlet of pressurized gases), the openings in gaseous communication with each corresponding tube of the pair of tubes. (Fig. 2, paragraph 42)
McAuley does not teach the post including a flange at a first end; an adhesive applied to each flange and configured for sealable engaging a patient’s nare.
However, Doshi (US 2009/0194109) also teaches a nasal assembly (Figs. 8,9, 11, paragraph 134) which comprises a pair of posts (Fig. 8: 303, Fig. 9:403, Fig. 10: 502, Fig. 11: 503) each post comprising a flange that defines an opening therein with an adhesive applied to each flange and configured sealably engaging a patient’s nare. (Paragraphs 134, 136, 139, the user interface surfaces on the interface 303 are adhesive and can be used to secure the devices to the user’s nose. Paragraph 12, the interface body may have a sealing surface that seals against the user’s face or portion of the face such as the nose)
It would have been obvious to a person of ordinary skill in the art to have substituted the attachment method of McAuley with the attachment method of Doshi since either method provides the predictable result of securing the nasal assembly to the nose.
McAuley in view of Doshi does not teach wherein each post is pivotably connected with one of the pair of tubes at a second end opposite the first end of the post and configured to be selectively and independently positionable relative to the other post and the pair of tubes to engage with a respective nare of a patient.
However, although Gusky (US teaches a nasal interface (Fig. 5) wherein each post is pivotably connected to a manifold at a second end opposite the first end of the post (Paragraphs 40-41, Fig. 6), Gusky does not teach wherein each post is pivotably connected with one of the pair of tubes at a second end opposite the first end of the post and configured to be selectively and independently positionable relative to the other post and the pair of tubes to engage with a respective nare of a patient.
It would not have been obvious to a person of ordinary skill in the art to modify the nasal assembly of McAuley so that each post is pivotably connected with one of the pair of tubes as claimed without the benefit of impermissible hindsight.
Claims 6-14 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARGARET M LUARCA whose telephone number is (303)297-4312. The examiner can normally be reached 6:30 am - 3:00 pm MT.
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/MARGARET M LUARCA/Primary Examiner, Art Unit 3785
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