DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-15 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sinofsky (USPN 5,773,835-Cited by the Applicant).
Regarding claim 1, Sinofsky discloses a system comprising: an elongated body defining a lumen, the elongated body comprising a proximal portion and a distal portion (figures 1-3); a fluorescent material configured to be in fluid communication with a fluid in the lumen (Col.2 lines 45-66); and a diffuse reflector configured to: diffuse excitation light received from an excitation light source and direct the diffused excitation light toward the fluorescent material (Col.2 lines 45-66, Col.3 lines 5-60); and diffuse the fluoresced light received from the fluorescence material and direct the fluoresced light toward a fluorescent light detector, wherein the fluoresced light is produced by the fluorescent material based on the excitation light (Col.2 lines 45-66, Col.3 lines 5-60).
Regarding claim 2, Sinofsky discloses the fluorescent material is configured to fluoresce in response to the excitation light from the excitation light source incident on the fluorescence material via the diffuse reflector, wherein the amount of fluoresced light measured by the fluorescent light detector is substantially independent of an angle of incidence of the excitation light from the excitation light source on the diffuse reflector, and wherein the amount of fluoresced light measured by the fluorescent light detector is substantially independent of a view angle of the fluorescent light detector with respect to the diffuse reflector (Col.2 lines 45-66, Col.3 lines 5-60).
Regarding claim 3, Sinofsky discloses a housing comprising at least one aperture and configured to allow the liquid to enter and exit the housing, wherein the fluorescence material is disposed within the housing, wherein the diffuse reflector is disposed within the housing, and wherein the housing is configured to substantially block the fluorescence material and the diffuse reflector from ambient light (Col.2 lines 45-66, Col.3 lines 5-60).
Regarding claim 4, Sinofsky discloses the housing is configured to fit within the lumen (Col.2 lines 45-66, Col.3 lines 5-60).
Regarding claim 5, Sinofsky discloses that the housing comprises an integrated sphere (figures 2-3)
Regarding claim 6, Sinofsky discloses the excitation light source is configured to direct excitation light through the at least one aperture and to the diffuse reflector, and wherein the fluorescent light detector is configured to receive fluoresced light from the diffuse reflector through the at least one aperture (Col.2 lines 45-66, Col.3 lines 5-60).
Regarding claim 7, Sinofsky discloses the diffuse reflector forms at least a portion of an inner surface of the housing (Col.2 lines 45-66, Col.3 lines 5-60).
Regarding claim 8, Sinofsky discloses the fluorescence material forms at least a portion of the inner surface of the housing (Col.2 lines 45-66, Col.3 lines 5-60).
Regarding claim 9, Sinofsky discloses the excitation light source configured to emit the excitation light; and the fluorescent light detector configured to measure an amount of the fluoresced light (Col.2 lines 45-66, Col.3 lines 5-60).
Regarding claim 10, Sinofsky discloses the excitation light source and the fluorescent light detector are each releasably coupled to the elongated body (Col.2 lines 45-66, Col.3 lines 5-60).
Regarding claim 11, Sinofsky discloses a computing device configured to determine at least one of an amount of oxygen or a concentration of oxygen in the fluid based on the amount of fluoresced light detected by the fluorescent light detector (Col.2 lines 45-66, Col.3 lines 5-60).
Regarding claim 12, Sinofsky discloses the computing device is configured to determine a flow rate of the fluid based on the amount of fluoresced light detected by the fluorescent light detector ((Col.2 lines 45-66, Col.3 lines 5-60)).
Regarding claim 13, Sinofsky discloses the elongated body comprises a catheter (Col.2 lines 45-66, Col.3 lines 5-60).
Regarding claim 14, Sinofsky discloses that the diffuse reflector comprises a first portion and a second portion, and wherein the first portion of the diffuse reflector is configured to diffuse the excitation light received from the excitation light source and to direct the diffused excitation light toward the fluorescent material (figures 2-3).
Regarding claim 15, Sinofsky discloses that the second portion of the diffuse reflector is configured to diffuse the fluoresced light received from the fluorescent material and direct the fluoresced light toward the fluorescent light detector (figures 2-3).
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 1-15 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 U.S. Patent No. 11,872,038. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the instant application are broader than those of the Patent. As, such, any invention meeting the limitations of the claims of the Patent would necessarily meet those of the instant application as well.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARJAN FARDANESH whose telephone number is (571)270-5508. The examiner can normally be reached Monday-Friday 9:00-17:00.
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/MARJAN FARDANESH/Primary Examiner, Art Unit 3791