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 .
DETAILED ACTION
This Office Action is in response to Application No. 18/670,904 filed 05/22/2024. Claims 1-20 are pending and have been examined.
The information disclosure statements (IDS) submitted on 07/31/2024 and 10/01/2024 were considered by the examiner.
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.
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Claims 1-18 and 20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 9, 10 and 12 of copending Application No. 18/654,374 in view of Wales et al. (US 2022/0096812), herein Wales.
This is a provisional nonstatutory double patenting rejection.
Application No. 18/670,904
Application No. 18/654,374
1. A container and tube set arranged and configured to couple to an endoscope for use in an endoscopic procedure, the container and tube set comprising:
1. A container and tube set arranged and configured to couple to an endoscope for use in an endoscopic procedure, the container and tube set comprising:
a first container, the first container configured to contain a fluid;
a first container configured to contain a fluid;
a sealing member;
a sealing member disposed about an outer surface of the hollow piercing member, the sealing member positioned between the first end and the second end of the hollow piercing member;
a compression member;
12. The container and tube set of claim 1, further comprising a compression member positioned adjacent to the sealing member.
a first fluid supply tube including a first end, a second end, and a third lumen extending therethrough, wherein the third lumen is in fluid communication with the first container, the first end is coupled to the second end of the compression member, and the second end of the first water supply tube is positioned external to the first container;
(claim 1) a first fluid supply tube including a first end, a second end, and a second lumen extending therethrough, wherein the second lumen is in fluid communication with the first container, the first end is coupled to the second end of the hollow piercing member, and the second end of the first fluid supply tube is positioned external to the first container;
a second container configured to contain a fluid, the second container having a second fluid inlet in selective fluid communication with the third lumen of the first fluid supply tube;
a second container configured to contain a fluid, the second container having a second fluid inlet in selective fluid communication with the second fluid outlet of the branched connector;
a second fluid supply tube including a first end, a second end, and a fourth lumen extending therethrough, wherein the fourth lumen is in selective fluid communication with a bottom portion of the second container and the second end of the second water supply tube is positioned external to the second container; and
a second fluid supply tube including a first end, a second end, and a third lumen extending therethrough, wherein the third lumen is in selective fluid communication with a bottom portion of the second container and the second end of the second fluid supply tube is positioned external to the second container; and
a first gas supply tube including a first end, a second end, and a fifth lumen extending therethrough, wherein the fifth lumen is in operative fluid communication with the second container and the second end of the first gas supply tube is positioned external to the second container.
a first gas supply tube including a first end, a second end, and a fourth lumen extending therethrough, wherein the fourth lumen is in operative fluid communication with the second container and the second end of the first gas supply tube is positioned external to the second container.
However, the copending claims do not explicitly teach a first container including a neck defining an opening and a body portion, the first container configured to contain a fluid; a sealing member including a first end, a second end, and a first lumen extending therethrough, the sealing member configured to be disposed adjacent to the opening of the neck of the first container; a compression member including a first end, a second end, and a second lumen extending therethrough, the compression member configured to selectively expand the sealing member.
In an analogous art, Wales, which discloses an endoscope system, clearly teaches:
a first container including a neck defining an opening and a body portion, the first container configured to contain a fluid; (Figs. 1, 6: Fluid container 116, 616 includes an opening at neck 124, 624, [0026], [0070].)
a sealing member including a first end, a second end, and a first lumen extending therethrough, the sealing member configured to be disposed adjacent to the opening of the neck of the first container; (Fig. 6: Outer member 654 includes a lumen and is positioned in neck 624, [0070].)
a compression member including a first end, a second end, and a second lumen extending therethrough, the compression member configured to selectively expand the sealing member; (Fig. 6: Inner member 652 expands outer member 654 against neck 624, [0070], [0072].)
Therefore, before the effective filing date of the claimed invention, it would have been obvious to one with ordinary skill in the art to modify the copending claims by a first container including a neck defining an opening and a body portion, the first container configured to contain a fluid; a sealing member including a first end, a second end, and a first lumen extending therethrough, the sealing member configured to be disposed adjacent to the opening of the neck of the first container; a compression member including a first end, a second end, and a second lumen extending therethrough, the compression member configured to selectively expand the sealing member, as taught by Wales, for the benefit of sealing a container including a neck.
Claim 2 of the application corresponds to claim 1 of the copending application.
Claim 3 of the application corresponds to claims 1, 12 of the copending application in view of Wales Fig. 6, paragraphs [0036], [0070].
Claim 4 of the application corresponds to claims 1, 12 of the copending application in view of Wales Fig. 6, paragraphs [0070].
Claim 5 of the application corresponds to claims 1, 12 of the copending application in view of Wales Fig. 6, paragraphs [0070], [0072].
Claim 6 of the application corresponds to claims 1, 12 of the copending application in view of Wales Fig. 6, paragraphs [0070], [0072].
Claim 7 of the application corresponds to claims 1, 12 of the copending application in view of Wales Fig. 6, paragraphs [0071].
Claim 8 of the application corresponds to claims 1, 12 of the copending application in view of Wales Fig. 6, paragraphs [0070].
Claim 9 of the application corresponds to claims 1, 12 of the copending application in view of Wales Fig. 6, paragraphs [0070], [0072].
Claim 10 of the application corresponds to claims 1, 12 of the copending application in view of Wales Fig. 6, paragraphs [0072].
Claim 11 of the application corresponds to claims 1, 12 of the copending application in view of Wales Fig. 6, paragraphs [0070], [0072].
Claim 12 of the application corresponds to claims 1, 12 of the copending application in view of Wales Fig. 6, paragraphs [0072].
Claim 13 of the application corresponds to claims 1, 12 of the copending application in view of Wales Fig. 6, paragraphs [0072].
Claim 14 of the application corresponds to claim 9 of the copending application.
Claim 15 of the application corresponds to claim 10 of the copending application.
Claim 16 of the application corresponds to claims 1, 12 of the copending application in view of Wales.
Claim 17 of the application corresponds to claims 1, 12 of the copending application in view of Wales Fig. 6, paragraphs [0072].
Claim 18 of the application corresponds to claims 1, 12 of the copending application in view of Wales Fig. 6, paragraphs [0070].
Claim 20 of the application corresponds to claims 1, 12 of the copending application in view of Wales.
Claim 19 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 12 of copending Application No. 18/654,374 in view of Wales et al. (US 2022/0096812) in view of Bush et al. (US 2007/0191711), herein Bush.
This is a provisional nonstatutory double patenting rejection.
Consider claim 19, the copending claim 9 combined with Wales clearly teaches a vent hole extending from the first end to the second end of the elastomeric sealing member.
However, the copending claims combined with Wales do not explicitly teach a hydrophobic filter disposed within the vent hole.
In an analogous art, Bush, which discloses a medical instrument system, clearly teaches a hydrophobic filter disposed within the vent hole. (Fig. 3: Hydrophobic vent filter 18, [0018])
Therefore, before the effective filing date of the claimed invention, it would have been obvious to one with ordinary skill in the art to modify the copending claims combined with Wales by a hydrophobic filter disposed within the vent hole, as taught by Bush, for the benefit of venting air while preventing liquid from leaking.
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 (i.e., changing from AIA to pre-AIA ) 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, 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 1 and 3-15 are rejected under 35 U.S.C. 103 as being unpatentable over Wales et al. (US 2022/0096812), herein Wales, in view of Akahori et al. (US 2011/0268611), herein Akahori.
Consider claim 1, Wales clearly teaches a container and tube set arranged and configured to couple to an endoscope for use in an endoscopic procedure, (Fig. 6) the container and tube set comprising:
a first container including a neck defining an opening and a body portion, the first container configured to contain a fluid; (Figs. 1, 6: Fluid container 116, 616 includes an opening at neck 124, 624, [0026], [0070].)
a sealing member including a first end, a second end, and a first lumen extending therethrough, the sealing member configured to be disposed adjacent to the opening of the neck of the first container; (Fig. 6: Outer member 654 includes a lumen and is positioned in neck 624, [0070].)
a compression member including a first end, a second end, and a second lumen extending therethrough, the compression member configured to selectively expand the sealing member; (Fig. 6: Inner member 652 expands outer member 654 against neck 624, [0070], [0072].)
a first fluid supply tube including a first end, a second end, and a third lumen extending therethrough, wherein the third lumen is in fluid communication with the first container, the first end is coupled to the second end of the compression member, and the second end of the first water supply tube is positioned external to the first container. (Fig. 6: Tube 606 passes through inner member 652 from outside fluid container 616 and is in fluid communication with the interior of fluid container 616, [0069], [0071].)
However, Wales does not explicitly teach a second container configured to contain a fluid, the second container having a second fluid inlet in selective fluid communication with the third lumen of the first fluid supply tube; a second fluid supply tube including a first end, a second end, and a fourth lumen extending therethrough, wherein the fourth lumen is in selective fluid communication with a bottom portion of the second container and the second end of the second water supply tube is positioned external to the second container; and a first gas supply tube including a first end, a second end, and a fifth lumen extending therethrough, wherein the fifth lumen is in operative fluid communication with the second container and the second end of the first gas supply tube is positioned external to the second container.
In an analogous art, Akahori, which discloses an endoscope system, clearly teaches:
a second container configured to contain a fluid, the second container having a second fluid inlet in selective fluid communication with the third lumen of the first fluid supply tube; (Fig. 1: The first tank 10 receives fluid at conduit end 62b via first liquid introduction conduit 62 from the first liquid supply section 61, [0041]-[0044].)
a second fluid supply tube including a first end, a second end, and a fourth lumen extending therethrough, wherein the fourth lumen is in selective fluid communication with a bottom portion of the second container and the second end of the second water supply tube is positioned external to the second container; (Fig. 1: Liquid transfer conduit 30 includes end 30a positioned below the first tank 10 and extends externally from first tank 10, [0060], [0061].) and
a first gas supply tube including a first end, a second end, and a fifth lumen extending therethrough, wherein the fifth lumen is in operative fluid communication with the second container and the second end of the first gas supply tube is positioned external to the second container. (Fig. 1: Gas transfer conduit 40 has end 40a positioned in first tank 10 and extends externally from first tank 10, [0064], [0065].)
Therefore, before the effective filing date of the claimed invention, it would have been obvious to one with ordinary skill in the art to modify the system of Wales by a second container configured to contain a fluid, the second container having a second fluid inlet in selective fluid communication with the third lumen of the first fluid supply tube; a second fluid supply tube including a first end, a second end, and a fourth lumen extending therethrough, wherein the fourth lumen is in selective fluid communication with a bottom portion of the second container and the second end of the second water supply tube is positioned external to the second container; and a first gas supply tube including a first end, a second end, and a fifth lumen extending therethrough, wherein the fifth lumen is in operative fluid communication with the second container and the second end of the first gas supply tube is positioned external to the second container, as taught by Akahori, for the benefit of mixing liquids at a predetermined ratio.
Consider claim 3, Wales combined with Akahori clearly teaches the sealing member comprises an elastomeric material. (Fig. 6: The outer member 654 may be semiflexible and conformable to the shape of an interior portion of the fluid container 616, [0036], [0070] Wales.)
Consider claim 4, Wales combined with Akahori clearly teaches the sealing member is disposed within the opening of the neck of the first container. (Fig. 6: Outer member 654 is positioned in neck 624, [0070] Wales.)
Consider claim 5, Wales combined with Akahori clearly teaches the sealing member is positioned against the opening of the neck of the first container. (Fig. 6: Inner member 652 expands outer member 654 against neck 624, [0070], [0072] Wales.)
Consider claim 6, Wales combined with Akahori clearly teaches the compression member is disposed within the first lumen of the sealing member. (Fig. 6: Inner member 652 fits into outer member 654, [0070], [0072] Wales.)
Consider claim 7, Wales combined with Akahori clearly teaches the compression member comprises a rigid material. (The inner member 652 may comprise a higher durometer material than the outer member 654, [0071] Wales.)
Consider claim 8, Wales combined with Akahori clearly teaches the compression member has an outer diameter that is greater than an inner diameter of the first lumen of the sealing member along at least a portion of a length of the compression member. (Fig. 6: The inner and outer members 652, 654 have the same shape (e.g., cone or plug) and/or taper, [0070] Wales.)
Consider claim 9, Wales combined with Akahori clearly teaches the first end of the compression member is positioned distal to the first end of the sealing member and the second end of the compression member is positioned proximal to the second end of the sealing member. (Fig. 6: Inner member 652 fits into outer member 654, [0070], [0072] Wales.)
Consider claim 10, Wales combined with Akahori clearly teaches the compression member comprises an actuatable member adjacent to the second end thereof. (Fig. 6: Inner member 652 is inserted into the outer member and turned, [0072] Wales.)
Consider claim 11, Wales combined with Akahori clearly teaches actuation of the actuatable member from a first position to a second position is configured to compress and radially expand the sealing member. (Fig. 6: Inner member 652 expands outer member 654 against neck 624, [0070], [0072] Wales.)
Consider claim 12, Wales combined with Akahori clearly teaches the actuatable member is rotated. (Fig. 6: Inner member 652 is inserted into the outer member and turned, [0072] Wales.)
Consider claim 13, Wales combined with Akahori clearly teaches the actuatable member is pivoted. (Fig. 6: Inner member 652 is inserted into the outer member and turned, [0072] Wales.)
Consider claim 14, Wales combined with Akahori clearly teaches a vent tube including a first end, a second end, and a fifth lumen, the vent tube extending through the third lumen of the first fluid supply tube. (Fig. 1: Tubes 106 include a vent tube and tubes may be coaxial, [0033], [0034] Wales.)
Consider claim 15, Wales combined with Akahori clearly teaches the first end of the vent tube is configured to extend above a fluid line of the first container. (Fig. 1: Tubes 106 include a vent tube which is proximate to top 105, [0033], [0034] Wales.)
Conclusion
In the case of amending the claimed invention, applicant is respectfully requested to indicate the portion(s) of the specification which dictate(s) the structure relied on for proper interpretation and also to verify and ascertain the metes and bounds of the claimed invention.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN R SCHNURR whose telephone number is (571)270-1458. The examiner can normally be reached M-F 6a-4p.
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/JOHN R SCHNURR/ Primary Examiner, Art Unit 2425