Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
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 1-5 is/are rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1-5 of prior U.S. Patent No. 11938710. This is a statutory double patenting rejection.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 6 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 6 recites “The microfluidic valve of claim 1”, however claim 1 is NOT a claim directed to the microfluidic valve therein. The typical “fix” for this would have been to suggest that the preamble be changed to “The method of claim 1”. Making this change, however, would lead to creation of another identical claim to a claim previously patented (see claim 6 of US Patent 11938710). Nevertheless, correction of the preamble of the claim to make it make sense is recommended when altering the claim in the future.
Allowable Subject Matter
Claims 7-12 are allowed.
None of the prior art of record taught or suggested the performing of an assay with a cartridge having an actuator made by performing repeated make and break contact protocol on the contacting faces of the actuator diaphragm and actuator seat as claimed.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JEFFRY H AFTERGUT whose telephone number is (571)272-1212. The examiner can normally be reached M,W,F 7:30-9, 10:30-5 pm T, Th 7:30-4.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael N Orlando can be reached on (571) 270-5038. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JEFFRY H AFTERGUT/ Primary Examiner, Art Unit 1746
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