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 Objections
Claim(s) 9-20 is/are objected to because of the following informalities:
Claim 9, Ln. 3 recites “a respirator fit test” which should read “the respirator fit test” following after Ln. 1-2
Claim 19, Ln. 6 recites “a respirator fit test” which should read “the respirator fit test” following after Ln. 1
Appropriate correction is required.
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(s) 1-21 is/are 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 pre-AIA the applicant regards as the invention.
Claim 1 recites the limitation “the fit testing device” in Ln. 4. There is insufficient antecedent basis for this limitation in the claim. For the purposes of examination the limitation will be interpreted as reading “a fit testing device”.
Claim 1 recites the limitation “the user” in Ln. 9. There is insufficient antecedent basis for this limitation in the claim. For the purposes of examination the limitation will be interpreted as reading “a user”.
Claim 9 recites the limitation “the fit testing device” in Ln. 4. There is insufficient antecedent basis for this limitation in the claim. For the purposes of examination the limitation will be interpreted as reading “a fit testing device”.
Claim 16 recites the limitation “the user” in Ln. 5. There is insufficient antecedent basis for this limitation in the claim. For the purposes of examination the limitation will be interpreted as reading “a user”.
Claim 17 recites the limitation “the graphical user interface” in Ln. 2. There is insufficient antecedent basis for this limitation in the claim. For the purposes of examination the limitation will be interpreted as reading “a graphical user interface”.
Claim 17 recites the limitation “the user” in Ln. 4. There is insufficient antecedent basis for this limitation in the claim. For the purposes of examination the limitation will be interpreted as reading “a user”.
Claim 19 recites the limitation “the fit testing device” in Ln. 7. There is insufficient antecedent basis for this limitation in the claim. For the purposes of examination the limitation will be interpreted as reading “a fit testing device”.
Claim 21 recites the limitation “the fit testing device” in Ln. 6. There is insufficient antecedent basis for this limitation in the claim. For the purposes of examination the limitation will be interpreted as reading “a fit testing device”.
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.
Claim(s) 1-21 is/are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8, 10-11, 13-14, 16-19 and 25 of U.S. Patent No. 12,023,529. Although the claims at issue are not identical, they are not patentably distinct from each other because all requirements of instant claim 1 are found within the overall requirements of patent claim 1, the instant claim merely being broader in scope. Similarly, all requirements of instant claim 9 are found within the overall requirements of patent claim 5, the instant claim merely being broader in scope. (Instant claim 9 is similarly anticipated by patent claim 1.) Additionally, all requirements of instant claim 19 are found within the overall requirements of patent claim 18, the instant claim merely being broader in scope, and all requirements of instant claim 21 are found within the overall requirements of patent claim 25, the instant claim merely being broader in scope. A further mapping of dependent claims is as follows:
Instant claims 2-4 vs. patent claims 2-4, respectively
Instant claims 5-7 vs. patent claim 1
Instant claim 8 as obvious in view of patent claim 1 – A “computer-implemented and software-controlled method” which instructs a user and prompts the user to begin the respirator fit test would obviously be expected to not require user input to begin the respirator fit test
Instant claims 10-12 vs. patent claims 6-8, respectively
Instant claims 13-14 vs. patent claims 10-11, respectively
Instant claims 15-16 vs. patent claims 13-14, respectively
Instant claims 17-18 vs. patent claims 16-17, respectively
Instant claim 20 vs. patent claim 19
Allowable Subject Matter
Claim(s) 1-21 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action. The claims are additionally subject to the above nonstatutory double patenting rejection.
The following is a statement of reasons for the indication of allowable subject matter:
Each of the independent claims is afforded full priority benefit dating to 24 May 2023.
Regarding claim 1, the prior art fails to teach or suggest a computer-implemented and software-controlled method to perform a respirator fit test, the method comprising: initiating the respirator fit test; detecting at a processor, a signal from a fit testing device; collecting at least one data point from the signal; analyzing the at least one data point of the respirator fit test on the processor; and troubleshooting in real time, without need for human intervention, at least one failure of the respirator fit test, comprising detecting the at least one failure, determining a cause of the at least one failure in real time, and prompting a user to perform a specific task to troubleshoot the cause of the at least one failure, wherein the troubleshooting is configured to detect failures both undetectable and detectable by a human during the analysis of the at least one data point.
The claim is found allowable for the same general reasons as discussed in regard to the independent claims in parent application U.S. 18/201,460 (see Pg. 2 of Notice of Allowance mailed 28 Mar 2024). Particular note is made of the claim’s recitation of “troubleshooting in real time … at least one failure of the respirator fit test.” That limitation indicates that the troubleshooting must occur during the failure and not as a later step only after a failure has already been recognized (applying a plain language meaning of the phrasing “real time” as “the actual time during which something takes place” as per Webster’s Dictionary).
The closest prior to the instant claim is Webb et al. (U.S. Pub. 2022/0134147), as cited in the parent application. While Webb includes meaningful discussion of a recommendation engine 323 which performs a troubleshooting function (e.g. ¶¶0057-0067) the recommendation engine 323 is only engaged after a failed fit test is determined (e.g. Fig. 14 step 1406 follows step 1404). Thus, Webb fails to teach or suggest the required troubleshooting of a failure in real time as there is no teaching or suggestion in Webb of actively troubleshooting a failure of the fit test as the failure is occurring.
It is thus found that one having ordinary skill in the art at the time of the effective filing of the invention would only have arrived at the instantly claimed invention by way of improper hindsight reasoning.
Regarding claim 9, the claim is found allowable over the prior art for the same reasons discussed above in regard to claim 1.
Regarding claim 19, the claim is found allowable over the prior art for the same reasons discussed above in regard to claim 1.
Regarding claim 21, the claim is found allowable over the prior art for the same reasons discussed above in regard to claim 1.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure, see PTO-892 for additional attached references.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSEPH D BOECKER whose telephone number is (571)270-0376. The examiner can normally be reached M-F 9:00 AM - 4:00 PM.
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/JOSEPH D. BOECKER/Primary Examiner, Art Unit 3785
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