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) 21-36 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hoarau et al. (USPN 7,650,177-previously cited).
Regarding claims 21 Hoarau et al. discloses a sensor, comprising: a light-emitting diode (LED); a detector to detect light emitted by the LED; and a bandage, comprising: a first portion of the bandage; a second portion of the bandage; and a releasable liner disposed between the first portion and the second portion to facilitate folding open the first portion and the second portion to enable insertion of at least the LED and the detector between the first portion and the second portion. See the annotated figure below and Col.6 line 44- Col.7 line 25.
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Regarding claim 22, the first portion and the second portion fold to close over at least the LED and the detector after the insertion of at least the LED and the detector between the first portion and the second portion (as shown in the figure above the fold line facilitates folding the first and the second portions).
Regarding claim 23, Hoarau et al. discloses the releasable liner exposes an adhesive after removal of the releasable liner from the bandage to adhere the LED, the detector, or both to the bandage (Examiner inherently interprets that the adhesive layer shown in the figure above includes a releasable liner to cover the adhesive in order to protect the adhesive). See the annotated figure above and Col.6 line 44- Col.7 line 25.
Regarding claim 24, the releasable liner comprises a tab to facilitate peeling the releasable liner from the bandage (See the annotated figure above and Col.6 line 44- Col.7 line 25).
Regarding claim 25, the bandage comprises a tab coupled to the first portion to facilitate folding open the first portion and the second portion (as shown in the figure above the tab is configured to folding open the first portion and the second portion).
Regarding claim 26, the tab comprises a polyethylene film.
Regarding claim 27, the first portion comprises a metalized tape that shields the LED, the detector, or both.
Regarding claim 28, the second portion comprises an additional metalized tape with holes that enable the light to pass across the additional metalized tape.
Regarding claim 29, the bandage comprises a fold line to facilitate folding open the first portion and the second portion at the fold line.
Regarding claim 30, the bandage comprises an additional releasable liner disposed between the first portion and the second portion to facilitate folding open the first portion and the second portion to enable insertion of at least the LED and the detector between the first portion and the second portion.
Regarding claim 31, the first portion defines a leaflet to fold away from the second portion.
Regarding claim 32, the first portion comprises a backing and a shielding member that define the leaflet to fold away from the second portion.
Regarding claim 33, a bandage for a sensor, comprising: a first portion of the bandage; a second portion of the bandage; and a releasable liner disposed between the first portion and the second portion to open the first portion and the second portion for placement of sensor components between the first portion and the second portion. See the annotated figure above and Col.6 line 44- Col.7 line 25.
Regarding claim 34, the first portion comprises a metalized tape to fold away from the second portion to open the first portion and the second portion.
Regarding claim 35, the second portion comprises an additional metalized tape on a first side of the second portion and an adhesive on a second side of the second portion.
Regarding claim 36, an additional releasable liner disposed between the first portion and the second portion, wherein the releasable liner is coupled to the first portion, the additional releasable liner is coupled to the second portion, the releasable liner exposes a first adhesive after removal of the releasable liner for adherence of the sensor components, and the additional releasable liner exposes a second adhesive after removal of the additional releasable liner for adherence of the sensor components.
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 21-36 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11872037. 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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jacqueline Cheng can be reached on (571)272-5596. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MARJAN FARDANESH/Primary Examiner, Art Unit 3791