DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of pre-AIA 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 –
(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of application for patent in the United States.
Claim(s) 1-19 is/are rejected under pre-AIA 35 U.S.C. 102(b) as being anticipated by Yamashita et al. (4,113,354).
Yamashita discloses an optical apparatus configured for use with an optical sensor, the optical apparatus comprising: an apparatus body having a first side configured to face the optical sensor and a second side configured to face a patient's skin, at least a portion of the apparatus body configured to allow light to pass from the first side to the second side optical window (elements 2+3); a focusing lens on the first side of the apparatus body, the focusing lens configured to receive light from the optical sensor a lens (element 4); and a Petzval surface on the second side of the apparatus body, the Petzval surface configured to press against the patient's skin he second lens (element 5) (dome shaped piece); wherein the focusing lens is configured to direct light received from the optical sensor through the Petzval surface and onto the patient's skin. See (figure 1, entire description of figure 1).
Claim(s) 1-19 is/are rejected under pre-AIA 35 U.S.C. 102(b) as being anticipated by Monfre et al. (USPN 7,333,843).
Monfre et al. discloses a disposable guide apparatus with an improved hydration inducing plug used in coupling a noninvasive analyzer to a sampling site to determine blood glucose levels in the human body. The plug contains multiple layers of fluoropolymer sheets attached to lenses to increase incident light throughput. The hydration inducing plug can be shaped into a light directing optic or can have Petzval surface in the shape of a dome to interface with the surface area of the biological tissue or can have a shape of a pedestal. In addition, guide apparatus is attachable to a surface area of biological tissue by an adhesive. Monfre et al. discloses steps attaching the disposable apparatus to a surface area of biological tissue using an adhesive, coupling the optical sensor (non-invasive glucose analyzer) to the disposable apparatus, taking a blood glucose reading using the optical sensor, removing the optical sensor from the disposable apparatus leaving the disposable apparatus on the surface area of biological tissue for later use, and placing an index matching medium between the disposable apparatus and the surface area of the biological tissue (Col.7 lines 33-58, Col.9 line 30-Col.10 line 18, Col.11 lines 15-67,Col.14 line 46-Col.15 line 24, Col.16 line 51-Col.17 line 5).
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 1-19 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-23 of U.S. Patent No. 8,219,172. 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
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