DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17, 19-29, 31-34 and 38-39 of U.S. Patent No. 11,925,450 in view of Elia et al (US 2010/0030133). Although the claims at issue are not identical, they are not patentably distinct from each other because the patent claims anticipate the instant claims as detailed below:
Instant
Patent
1. A device for insertion into a stomach of a patient for use with enteral feeding, comprising:
an indwelling tube having a length;
a plurality of sensors attached along the length of the indwelling tube,
wherein the plurality of sensors are configured to detect an electrical property of gastric contents and
wherein the plurality of sensors are further configured to provide an indication of tube placement within the patient;
a controller in communication with the plurality of sensors,
wherein the controller is configured to determine measurements of a volume of gastric contents by correlating the electrical property of gastric contents to the volume of gastric contents and
wherein the controller is further configured to provide guidance via the controller for patient care.
1. A device for insertion into a stomach of a patient for use with enteral feeding, comprising:
an indwelling tube having a length;
one or more impedance sensors attached along the length of the indwelling tube,
wherein the one or more impedance sensors are configured to detect an electrical property of gastric contents;
a controller in communication with the one or more impedance sensors,
wherein the controller is configured to determine measurements of a volume of gastric contents by correlating the electrical property of gastric contents to the volume of gastric contents such
that the measurements of the volume of gastric contents are provided on a continuous basis and further
provide guidance via the controller for patient care.
The patent claim is silent regarding “wherein the plurality of sensors are further configured to provide an indication of tube placement within the patient.” However, Elia teaches an enteral feeding tube (¶0136), thus being in the same field of endeavor, that uses sensors (4; Fig. 2) to provide an indication of tube placement within a patient (¶0198-0199) in order to properly position the device within a patient. It would have been obvious to a person of ordinary skill in the art prior to the effective filing date of the claimed invention to have modified the device of the patent claims to use the sensors to indicate placement of the tube as taught by Elia in order to properly position the device within the patient, as recognized by Elia.
1. A device for insertion into a stomach of a patient for use with enteral feeding, comprising:
an indwelling tube having a length;
a plurality of sensors attached along the length of the indwelling tube,
wherein the plurality of sensors are configured to detect an electrical property of gastric contents and
wherein the plurality of sensors are further configured to provide an indication of tube placement within the patient;
a controller in communication with the plurality of sensors,
wherein the controller is configured to determine measurements of a volume of gastric contents by correlating the electrical property of gastric contents to the volume of gastric contents and
wherein the controller is further configured to provide guidance via the controller for patient care.
21. A device for insertion into a stomach of a patient for use with enteral feeding, comprising:
an indwelling tube having a length;
one or more impedance sensors attached along the length of the indwelling tube,
wherein the one or more impedance sensors are configured to detect an electrical property of gastric contents;
a controller in communication with the one or more impedance sensors,
wherein the controller is configured to determine measurements of a volume of gastric contents by correlating the electrical property of gastric contents to the volume of gastric contents and
wherein the controller is further configured to calculate a rate of change of the measurements of the volume of gastric contents
such that the controller provides guidance for patient care based on the measurements of the volume of gastric contents.
The patent claim is silent regarding “wherein the plurality of sensors are further configured to provide an indication of tube placement within the patient.” However, Elia teaches an enteral feeding tube (¶0136), thus being in the same field of endeavor, that uses sensors (4; Fig. 2) to provide an indication of tube placement within a patient (¶0198-0199) in order to properly position the device within a patient. It would have been obvious to a person of ordinary skill in the art prior to the effective filing date of the claimed invention to have modified the device of the patent claims to use the sensors to indicate placement of the tube as taught by Elia in order to properly position the device within the patient, as recognized by Elia.
Instant
2
3
4
5
6
7
8
9
10
11
12
Patent
2, 22
3, 23
19, 38
1, 21
4, 24
5, 25
6, 26
7, 27
8, 28
9, 29
10, 31
Instant
13
14
15
16
17
18
19
20
Patent
11, 32
12, 33
13, 34
14
15
16
17
20, 39
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TASNIM M AHMED whose telephone number is (571)272-9536. The examiner can normally be reached M-F 9am-5pm Pacific time.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Bhisma Mehta can be reached at (571)272-3383. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/TASNIM MEHJABIN AHMED/Primary Examiner, Art Unit 3783
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