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 .
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 1-9, 11, and 13-17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 17-20 of U.S. Patent No. 10,189,632. Although the claims at issue are not identical, they are not patentably distinct from each other because both are directed to the same invention.
Claims 1-3, 6-9, 11, and 13-15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-24 of U.S. Patent No. 11,091,314. Although the claims at issue are not identical, they are not patentably distinct from each other because both are directed to the same invention.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 11,945,644. Although the claims at issue are not identical, they are not patentably distinct from each other because both are directed to the same invention.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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, 2, 4-6, 9, 11, and 14-18 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by D1 (US 20150020804 A1).
With regards to claims 1, 2, 11, and 16, D1 discloses an aerosol device comprising: a main device including control circuitry for controlling an array of emitters and to process signals from an array of sensors [0017-0020] (Fig. 1); and a cartridge 10 engaged with the main device, the cartridge including an aerosol chamber that is at least partially transparent (optical paths through the tube require transparent portions (e.g., windows or walls)), an array of emitters 6B, 6C arranged outside of the aerosol chamber, and an array of sensors 8B, 8C arranged outside of the aerosol chamber (Fig. 1).
With regards to claim 4, D1 discloses wherein the control circuitry is in communication with the array of emitters and the array of sensors [0017-0019].
With regards to claim 5, D1 discloses wherein the main device further includes a power supply and a housing, the housing enclosing the power supply and the control circuitry [0002] (portable, battery powered device which necessarily requires the claimed configuration).
With regards to claims 6, 14, and 17, D1 discloses wherein the array of emitters includes a first emitter and a second emitter, the first emitter configured to emit light having a first wavelength, the second emitter configured to emit light having a second wavelength, the first wavelength being different from the second wavelength [0016].
With regards to claim 9, D1 discloses wherein the array of sensors includes a first sensor and a second sensor, the first sensor configured to receive the light having the first wavelength, the second sensor configured to receive the light having the second wavelength (Fig. 1; each sensor receives light from a corresponding emitter).
With regards to claim 15, D1 discloses wherein the array of emitters is opposite to the array of sensors (Fig. 1).
With regards to claim 18, D1 discloses wherein the controller is configured to processes a first signal from a first sensor of the array of sensors and to process a second signal from a second sensor of the array of sensors, and the controller is configured to determine a presence of an element in the partially transparent aerosol chamber based on the first signal, the second signal, or the first signal and the second signal [0020; 0032] (wherein the detected signal represents the presence of an element).
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 of this title, 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.
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 3, 7, 8, and 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over D1.
With regards to claim 3, D1 does not explicitly teach wherein the main device includes a sensor separate from the array of sensors. Nevertheless, such a modification would have been known and considered obvious in order to provide system level monitoring, feedback, and/or safety data.
With regards to claims 7 and 8, D1 does not teach the claimed wavelengths. However, such a modification would have been known and considered obvious depending upon the type of aerosol and/or analysis. As such, it would have been well known, obvious, and predictably suitable to one with ordinary skill in the art to modify D1 with the claimed wavelengths in view performing infrared analysis.
With regards to claim 19, D1 does not teach the claimed controller. However, D1 does discloses measuring particle characteristics to determine particle size variations (Claim 11). It would have been well known, obvious, and predictably suitable to one with ordinary skill in the art to modify D1 with the claimed controller in order to alert the user of detected particle sizes outside a given threshold.
Allowable Subject Matter
Claims 10, 12, 13, and 20 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.
The following is a statement of reasons for the indication of allowable subject matter:
Prior art does not teach the cartridge and/or controller as claimed.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARCUS H TANINGCO whose telephone number is (571)272-1848. The examiner can normally be reached Monday-Friday 9am-6pm 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, Uzma Alam can be reached on 571-272-3995. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MARCUS H TANINGCO/ Primary Examiner, Art Unit 2884