DETAILED ACTION
Acknowledgements
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claims 1-20 are pending.
This action is Non-Final.
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 1, 4, 13 are provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1, 3, 5 of copending Application No. 18/564500 (reference application). This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented.
Claims 1, 4, 13 of this application is patentably indistinct from claims 1, 3, 5 of Application No. 18564500. Pursuant to 37 CFR 1.78(f), when two or more applications filed by the same applicant or assignee contain patentably indistinct claims, elimination of such claims from all but one application may be required in the absence of good and sufficient reason for their retention during pendency in more than one application. Applicant is required to either cancel the patentably indistinct claims from all but one application or maintain a clear line of demarcation between the applications. See MPEP § 822.
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 1-2, 8-11 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 2, 7, 9-10 of copending Application No. 18564500 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims recite obvious variations between the co-pending claims, and contain genus/species relations (claims 2, 8-11 instant claims compared to claims 2, 7, 9-10 of co-pending claims); and since all claims in the co-pending application depend from the identical and same features as instant claim 1, they are considered species under the genus of instant claim 1 (co-pending claims 2, 4, 6-20; not co-pending claims 1, 3 or 5 as these are statutory double patenting as addressed above).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Specification
The use of the terms 3M, Filtrete, which each is a trade name or a mark used in commerce, has been noted in this application. The terms should be accompanied by the generic terminology; furthermore the term should be capitalized wherever it appears or, where appropriate, include a proper symbol indicating use in commerce such as ™, SM , or ® following the term.
Although the use of trade names and marks used in commerce (i.e., trademarks, service marks, certification marks, and collective marks) are permissible in patent applications, the proprietary nature of the marks should be respected and every effort made to prevent their use in any manner which might adversely affect their validity as commercial marks.
The disclosure is objected to because of the following informalities: Between paragraph 62 and 63 applicant has labeled paragraphs 1 and 2. Likely paragraphs 1 and 2 after 62 should be 63 and 64 and current 63 though be 65 and so on. Applicant should renumber the paragraphs as suggested. Appropriate correction is required.
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 Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-20 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Ahmad et al. (Ahmad, US 10,591,460)
Regarding claim 1, Ahmad teaches a sample collection system (the claims are recited broadly and thus are taught as described below, or in the alternative, the slight differences in features amount to obvious variations of lexicographic terms for structures and broad relations claimed) comprising: a housing comprising a first part (see at least Figure 1C element 110) and a second part (see at least Figure 1C elements 140 and 160), the first and second parts being movable relative to one another (see at least col. 23 lines 38-44 threaded indicates movement); porous sample collection media disposed along an airflow path in the first part (see at least Figure 1C element 130); and an assay disposed on the second part and constructed to receive a sample captured by the porous sample collection media (see at least Figure 1C element 120).
Regarding claim 2, Ahmad teaches wherein the airflow path comprises a through opening in the first part and the second part, and wherein the porous sample collection media occludes the through opening of the first part (see at least Figure 1C-3).
Regarding claim 3, Ahmad teaches wherein the airflow path comprises a second through opening in each of the first and second parts (see at least Figure 1C-3).
Regarding claim 4, Ahmad teaches wherein the first and second parts are rotatably movable relative to one another (see at least Figure 1C-3, col. 23 lines 38-44 threaded indicates movement).
Regarding claim 5, Ahmad teaches wherein the first part forms an outer tube and the second part forms an inner tube at least partially disposed inside the outer tube (see at least Figure 1C-3).
Regarding claim 6, Ahmad teaches wherein the first part and the second part have a first position that is a sample collection position and a second position that is a testing position (broad claim reasonably reads on intended use during collection and post collection, and also can include form for use in collection i.e. complete form which includes threaded state and pre/post collection states which can include non-connected/constructed and unthreaded state, as discussed in col. 23 lines 38-44).
Regarding claim 7, Ahmad teaches wherein in the first position, through holes extending through the first part and the second part are aligned (see at least Figures 1C-3).
Regarding claim 8, Ahmad teaches wherein in the second position, the porous sample collection media is aligned with the assay (see at least Figures 1C-3).
Regarding claim 9, Ahmad teaches wherein in the second position, the porous sample collection media is in contact with the assay (see at least Figures 1C-3).
Regarding claim 10 Ahmad teaches wherein the assay comprises a sample receiving area, and wherein in the second position, the porous sample collection media is aligned with the sample receiving area (see at least Figures 1C-3 location where 120 is).
Regarding claim 11, Ahmad teaches wherein the assay comprises a sample receiving area, and wherein in the second position, the porous sample collection media is in contact with the sample receiving area (see at least Figures 1C-3 location where 120 is).
Regarding claim 12, Ahmad teaches wherein the first part comprises a transparent material in an area overlaying a result display of the assay in the second position (see at least Figures 1C-3 window 112).
Regarding claim 13 Ahmad teaches wherein the first part comprises a screen disposed in the airflow path in front of the porous sample collection media (see at least Figures 1C-3 window 112).
Regarding claim 14, Ahmad teaches wherein the first part further comprises a mouthpiece aligned with the porous sample collection media (see at least Figure 8A-8C 212).
Regarding claim 15, Ahmad teaches wherein the mouthpiece is removably coupled with the first part (see at least Figure 8A-8C 212).
Regarding claim 16, Ahmad teaches wherein the first part forms an outer tube having an outer surface with a non-circular cross section (see at least Figure 1C).
Regarding claim 17, Ahmad teaches wherein the assay comprises a lateral flow assay or a vertical flow assay (see at least Figure 1C).
Regarding claim 18, Ahmad teaches wherein the assay comprises a strip of material with a length, and wherein the length is parallel to a longitudinal axis of the second part (see at least Figure 1C).
Regarding claim 19, Ahmad teaches wherein the assay comprises a strip of material with a length, and wherein the length is transverse to a longitudinal axis of the second part (see at least Figure 1C).
Regarding claim 20, Ahmad teaches wherein the porous sample collection media comprises nonwoven material (see at least col. 16 lines 49-53).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US 9169521, US 2020/0245898, US 2021/0059560 teaches related systems.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL R BLOCH whose telephone number is (571)270-3252. The examiner can normally be reached M-F 11-8 EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert (Tse) Chen can be reached at (571)272-3672. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MICHAEL R BLOCH/Primary Examiner, Art Unit 3791