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 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.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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.
Claim(s) 1-8 and 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over WO2020198484A1 to Locke in view of US Pat Pub No 20180084956 to Childress
Regarding claim 1. Locke discloses a device comprising: a housing; a disinfecting light source coupled to the housing, wherein the disinfecting light source is configured to disinfect an object (abstract, para 0063, 0066, para 0084 “light source 118, UV device 119”; para 0096 “wound disclosure device 110; para 0133 “wound closure device as described herein (e.g., 110, 210, 310), a therapy device 610, a canister 612, a tube 614, a dressing 616, and a light source 618 (e.g., UV device)”; para 0155); an adhesive light source coupled to the housing, wherein the adhesive light source is configured to cause a light switchable adhesive to transition between an adhering state and a removal state based on the light switchable adhesive being exposed to light emitted by the adhesive light source (para 0066, 0071, 0084, 0170, 0177 etc. “[] light switchable adhesive (LSA). The light switchable adhesive can be activated to transition to a low tact and/or peel strength state to enable easier removal as compared to a peel strength of the light switchable adhesive when in use”); but fails to disclose an activation sensor coupled to the housing, wherein the activation sensor is electrically coupled to the disinfecting light source and the adhesive light source, and wherein the activation sensor is configured to cause the disinfecting light source and the adhesive light source to activate.
Childress, from a similar field of endeavor, teaches an activation sensor coupled to a housing, wherein the activation sensor is electrically coupled to a UV light source, and configured to cause the UV light source to activate, based on sensing the presence of a user’s hand, and configured to deactivate the UV light if the presence of the user is no longer sensed (para 0032 “activation sensor 126 []”, also see, para 0041, 0056-0057, etc.). It would have been obvious before the filing date of the claimed invention to one of ordinary skill in the art to modify the disclosed device/housing of Locke with the activation sensor as taught by Childress to provide the predictable result of controlling the light source to only be activated when the presence of user is detected, thus saving energy.
Regarding claim 2. Locke as modified by Childress renders obvious the device of claim 1, wherein the disinfecting light source and the adhesive light source are configured to be activated based on a predetermined sequence (Childress, para 0056, method of 300 teaches a sequence for operating the device at steps 300, 302, 304).
Regarding claim 3. Locke as modified by Childress renders obvious the device of claim 1, wherein the disinfecting light source or the adhesive light source is configured to be deactivated based on an expiration of a time interval (Childress, para 0032 “activation button that an individual presses to activate the hand drying system … for a predetermined period of time”, para 0041).
Regarding claim 4. Locke as modified by Childress renders obvious the device of claim 1, wherein the activation sensor is configured to: detect a presence of a body of a user; and provide a signal to activate the disinfecting light source, the adhesive light source, or a combination of the disinfecting light source and the adhesive light source based on detecting the presence of the body of the user (Childress, para 0032 “to detect presence of an object (such a hand of an individual) within a predetermined activation zone 129, the hand drying system 120 is activated”, 0041, 0056-0057).
Regarding claim 5. Locke as modified by Childress renders obvious the device of claim 4, wherein the activation sensor is configured to: provide a signal to deactivate the disinfecting light source, the adhesive light source, or a combination of the disinfecting light source and the adhesive light source based on failing to detect the presence of the body of the user (Childress, para 0032 “detect that no hand is within the activation zone, and the hand drying system 120 deactivates”, 0041, 0056-0057).
Regarding claim 6. Locke as modified by Childress renders obvious the device of claim 1, wherein the adhesive light source provides light having a wavelength in a range of 315-400 nm (Locke, para 0073, 0084- 0086 “UVA laser (315-400 nm),”).
Regarding claim 7. Locke as modified by Childress renders obvious the device of claim 1, wherein the disinfecting light source provides light having a wavelength in a range of 405-470 nm (Locke, para 0073, 0084- 10-500 nm). “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding claim 8. Locke as modified by Childress renders obvious the device of claim 1, wherein the disinfecting light source or the adhesive light source comprises at least one light emitting diode (LED) (Locke, para 0085 “UV torch may include one or more LEDs configured to generate incoherent light in the UV spectrum”; also, Childress para 0042 “light emitting diodes (LEDs)”).
Regarding claim 12. Locke as modified by Childress renders obvious the device of claim 1, wherein the housing comprises a base section and a plurality of support sections coupled to the base section, and wherein the base section and the plurality of support sections comprise a flexible material (para 0133, fig. 6, dressing 616, para 0141 details of the dressing 616 including drape 632, para 0088, 0151 “viewing member 650”; para 0069, 0079, 0083, 0143, etc. discuss using elastomeric material for various components including viewing member 650, dressing 616. Dressing 616 and connector 630 is viewed as the plurality of support sections).
Claim(s) 9-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Locke in view of Childress as applied to claims 1-8 and 12 above, and further in view of US Pat Pub No. 20200151410 to Wagner et al. (hereinafter “Wagner”).
Regarding claim 9. Locke as modified by Childress renders obvious the device of claim 1, but fails to disclose further comprising a plurality of edge detection sensors, wherein each edge detection sensor of the plurality of edge detection sensors is configured to detect an edge of an object.
Wagner teaches a system for processing a plurality of objects, which comprises a plurality of edge detection sensors, wherein each, is configured to detect an edge of an object (abstract, para 0095, 0098, 0099-100, figs 1, 5, 24, etc.). It would have been obvious before the filing date of the claimed invention to one of ordinary skill in the art to modify the disclosure of Locke in view of Childress with the teachings of Wagner, because doing so would allow for incorporating the edge detection sensors thus providing the predictable result of detecting an edge of an object, to provide a mechanism for object detection, such that the light sources are only activated in response to detecting a desired object, further enhancing energy saving benefits.
Regarding claim 10. Locke as modified by Childress and Wagner renders obvious the device of claim 9, wherein each edge detection sensor of the plurality of edge detection sensors is configured to provide an indication of a position of the object, and wherein the disinfecting light source and the adhesive light source are configured to be activated based on the position of the object (see rejection of claim 9, Wagner, para 0099-0100, fig. 6A-C).
Regarding claim 11. Locke as modified by Childress and Wagner renders obvious the device of claim 9, wherein each edge detection sensor is configured to detect the edge of the object based on color, texture, conductivity, and/or any combination thereof (see rejection of claim 9, Wagner, para 0098-0100, “detect edges of any objects in a bin, for example using data regarding any of intensity, shadow detection, or echo detection etc.,”, fig. 6A-C).
Claim(s) 13-15, 21-26 is/are rejected under 35 U.S.C. 103 as being unpatentable over Locke in view of Childress and Wagner.
Regarding claim 13. Locke discloses a device comprising: a housing; a disinfecting light source coupled to the housing, wherein the disinfecting light source is configured to disinfect an object (abstract, para 0063, 0066, para 0084 “light source 118, UV device 119”; para 0096 “wound disclosure device 110; para 0133 “wound closure device as described herein (e.g., 110, 210, 310), a therapy device 610, a canister 612, a tube 614, a dressing 616, and a light source 618 (e.g., UV device)”; para 0155); an adhesive light source coupled to the housing, wherein the adhesive light source is configured to cause a light switchable adhesive to transition between an adhering state and a removal state based on the light switchable adhesive being exposed to light emitted by the adhesive light source (para 0066, 0071, 0084, 0170, 0177 etc. “[] light switchable adhesive (LSA). The light switchable adhesive can be activated to transition to a low tact and/or peel strength state to enable easier removal as compared to a peel strength of the light switchable adhesive when in use”); but fails to disclose and an activation sensor coupled to the housing, wherein the activation sensor is electrically coupled to the disinfecting light source and the adhesive light source, and wherein the activation sensor is configured to cause the disinfecting light source and the adhesive light source to activate.
Childress, from a similar field of endeavor, teaches an activation sensor coupled to a housing, wherein the activation sensor is electrically coupled to a UV light source, and configured to cause the UV light source to activate, based on sensing the presence of a user’s hand, and configured to deactivate the UV light if the presence of the user is no longer sensed (para 0032 “activation sensor 126 []”, also see, para 0041, 0056-0057, etc.). It would have been obvious before the filing date of the claimed invention to one of ordinary skill in the art to modify the disclosed device/housing of Locke with the activation sensor as taught by Childress to provide the predictable result of controlling the light source to only be activated when the presence of user is detected, thus saving energy.
Locke as modified by Childress renders obvious the limitations above but fails to disclose a plurality of edge detection sensors, wherein each edge detection sensor of the plurality of edge detection sensors is configured to detect an edge of an object wherein the activation sensor is configured to: detect contact with a body of a user; and provide a signal to activate the disinfecting light source, the adhesive light source, or a combination of the disinfecting light source and the adhesive light source based on detecting contact the body of the user.
Wagner teaches a system for processing a plurality of objects, which comprises a plurality of edge detection sensors, wherein each, is configured to detect an edge of an object (abstract, para 0095, 0098, 0099-100, figs 1, 5, 24, etc.). It would have been obvious before the filing date of the claimed invention to one of ordinary skill in the art to modify the disclosure of Locke in view of Childress with the teachings of Wagner, because doing so would allow for incorporating the edge detection sensors thus providing the predictable result of detecting an edge of an object, to provide a mechanism for object detection, such that the light sources are only activated in response to detecting a desired object, further enhancing energy saving benefits.
Regarding claim 14. Locke as modified by Childress and Wagner renders obvious the device of claim 13, wherein each edge detection sensor of the plurality of edge detection sensors is configured to provide an indication of a position of the object (Wagner, para 0099-0100, fig. 6A-C), and wherein the disinfecting light source and the adhesive light source are configured to be activated based on the position of the object (Locke, para 0063, 0066, etc. see rejection of claim 13).
Regarding claim 15. Locke as modified by Childress and Wagner renders obvious the device of claim 13, wherein the disinfecting light source comprises at least one light emitting diode (LED) that provides light having a wavelength in a range of 405-470 nm and wherein the adhesive light source provides light having a wavelength in a range of 315-400 nm (Locke, para 0085 “UV torch may include one or more LEDs configured to generate incoherent light in the UV spectrum”; also, Childress para 0042 “light emitting diodes (LEDs), para 0073, 0084- 0086 “UVA laser (315-400 nm),”; 0073, 0084- 10-500 nm). “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)).
Regarding claim 21. Locke discloses a device comprising: a housing; a disinfecting light source coupled to the housing, wherein the disinfecting light source is configured to disinfect an object (abstract, para 0063, 0066, para 0084 “light source 118, UV device 119”; para 0096 “wound disclosure device 110; para 0133 “wound closure device as described herein (e.g., 110, 210, 310), a therapy device 610, a canister 612, a tube 614, a dressing 616, and a light source 618 (e.g., UV device)”; para 0155); but fails to disclose an activation sensor coupled to the housing, wherein the activation sensor is electrically coupled to the disinfecting light source, and wherein the activation sensor is configured to cause the disinfecting light source to activate;
Childress, from a similar field of endeavor, teaches an activation sensor coupled to a housing, wherein the activation sensor is electrically coupled to a UV light source, and configured to cause the UV light source to activate, based on sensing the presence of a user’s hand, and configured to deactivate the UV light if the presence of the user is no longer sensed (para 0032 “activation sensor 126 []”, also see, para 0041, 0056-0057, etc.). It would have been obvious before the filing date of the claimed invention to one of ordinary skill in the art to modify the disclosed device/housing of Locke with the activation sensor as taught by Childress to provide the predictable result of controlling the light source to only be activated when the presence of user is detected, thus saving energy.
Locke as modified by Childress renders obvious the limitations above but fails to disclose a plurality of edge detection sensors, wherein each edge detection sensor of the plurality of edge detection sensors is configured to detect an edge of an object wherein the activation sensor is configured to: detect contact with a body of a user; and provide a signal to activate the disinfecting light source, based on detecting contact the body of the user.
Wagner teaches a system for processing a plurality of objects, which comprises a plurality of edge detection sensors, wherein each, is configured to detect an edge of an object (abstract, para 0095, 0098, 0099-100, figs 1, 5, 24, etc.). It would have been obvious before the filing date of the claimed invention to one of ordinary skill in the art to modify the disclosure of Locke in view of Childress with the teachings of Wagner, because doing so would allow for incorporating the edge detection sensors thus providing the predictable result of detecting an edge of an object, to provide a mechanism for object detection, such that the light sources are only activated in response to detecting a desired object, further enhancing energy saving benefits.
Regarding claim 22. Locke as modified by Childress and Wagner renders obvious the device of claim 21, wherein each edge detection sensor of the plurality of edge detection sensors is configured to provide an indication of a position of the object, and wherein the disinfecting light source is configured to be activated based on the position of the object (Wagner, para 0099-0100, fig. 6A-C).
Regarding claim 23. Locke as modified by Childress and Wagner renders obvious the device of claim 21, wherein the disinfecting light source comprises at least one light emitting diode (LED) that provides light having a wavelength in a range of 405-470 nm (Locke, para 0085 “UV torch may include one or more LEDs configured to generate incoherent light in the UV spectrum”; also, Childress para 0042 “light emitting diodes (LEDs), para 0073, 0084- 0086 “UVA laser (315-400 nm),”; 0073, 0084- 10-500 nm). “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)).
Regarding claim 24. Locke discloses device comprising: a housing; an adhesive light source coupled to the housing, wherein the adhesive light source is configured to cause a light switchable adhesive to transition between an adhering state and a removal state based on the light switchable adhesive being exposed to light emitted by the adhesive light source (para 0066, 0071, 0084, 0170, 0177 etc. “[] light switchable adhesive (LSA). The light switchable adhesive can be activated to transition to a low tact and/or peel strength state to enable easier removal as compared to a peel strength of the light switchable adhesive when in use”); but fails to disclose an activation sensor coupled to the housing, wherein the activation sensor is electrically coupled to the adhesive light source, and wherein the activation sensor is configured to cause the adhesive light source to activate;
Childress, from a similar field of endeavor, teaches an activation sensor coupled to a housing, wherein the activation sensor is electrically coupled to a UV light source, and configured to cause the UV light source to activate, based on sensing the presence of a user’s hand, and configured to deactivate the UV light if the presence of the user is no longer sensed (para 0032 “activation sensor 126 []”, also see, para 0041, 0056-0057, etc.). It would have been obvious before the filing date of the claimed invention to one of ordinary skill in the art to modify the disclosed device/housing of Locke with the activation sensor as taught by Childress to provide the predictable result of controlling the light source to only be activated when the presence of user is detected, thus saving energy.
Locke as modified by Childress renders the limitations above obvious but fails to disclose having a plurality of edge detection sensors, wherein each edge detection sensor of the plurality of edge detection sensors is configured to detect an edge of an object wherein the activation sensor is configured to: detect contact with a body of a user; and provide a signal to activate the adhesive light source based on detecting contact the body of the user.
Wagner teaches a system for processing a plurality of objects, which comprises a plurality of edge detection sensors, wherein each, is configured to detect an edge of an object (abstract, para 0095, 0098, 0099-100, figs 1, 5, 24, etc.). It would have been obvious before the filing date of the claimed invention to one of ordinary skill in the art to modify the disclosure of Locke in view of Childress with the teachings of Wagner, because doing so would allow for incorporating the edge detection sensors thus providing the predictable result of detecting an edge of an object, to provide a mechanism for object detection, such that the light sources are only activated in response to detecting a desired object, further enhancing energy saving benefits.
Regarding claim 25. Locke as modified by Childress and Wagner renders obvious the device of claim 24, wherein each edge detection sensor of the plurality of edge detection sensors is configured to provide an indication of a position of the object, and wherein the adhesive light source is configured to be activated based on the position of the object (Wagner, para 0099-0100, fig. 6A-C).
Regarding claim 26. Locke as modified by Childress and Wagner renders obvious the device of claim 24, wherein the adhesive light source provides light having a wavelength in a range of 315-400 nm (Locke, para 0085 “UV torch may include one or more LEDs configured to generate incoherent light in the UV spectrum”; also, Childress para 0042 “light emitting diodes (LEDs), para 0073, 0084- 0086 “UVA laser (315-400 nm),”; 0073, 0084- 10-500 nm). “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)).
Claim(s) 16-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Locke in view of Childress and Shultz (US 6293281).
Regarding claim 16. Locke discloses an assembly comprising: a housing; a disinfecting light source coupled to the housing, wherein the disinfecting light source is configured to disinfect an object (abstract, para 0063, 0066, para 0084 “light source 118, UV device 119”; para 0096 “wound disclosure device 110; para 0133 “wound closure device as described herein (e.g., 110, 210, 310), a therapy device 610, a canister 612, a tube 614, a dressing 616, and a light source 618 (e.g., UV device)”; para 0155); an adhesive light source coupled to the housing, wherein the adhesive light source is configured to cause a light switchable adhesive to transition between an adhering state and a removal state based on the light switchable adhesive being exposed to light emitted by the adhesive light source (para 0066, 0071, 0084, 0170, 0177 etc. “[] light switchable adhesive (LSA). The light switchable adhesive can be activated to transition to a low tact and/or peel strength state to enable easier removal as compared to a peel strength of the light switchable adhesive when in use”); but fails to disclose an activation sensor coupled to the housing, wherein the activation sensor is electrically coupled to the disinfecting light source and the adhesive light source, and wherein the activation sensor is configured to cause the disinfecting light source and the adhesive light source to activate
Childress, from a similar field of endeavor, teaches an activation sensor coupled to a housing, wherein the activation sensor is electrically coupled to a UV light source, and configured to cause the UV light source to activate, based on sensing the presence of a user’s hand, and configured to deactivate the UV light if the presence of the user is no longer sensed (para 0032 “activation sensor 126 []”, also see, para 0041, 0056-0057, etc.). It would have been obvious before the filing date of the claimed invention to one of ordinary skill in the art to modify the disclosed device/housing of Locke with the activation sensor as taught by Childress to provide the predictable result of controlling the light source to only be activated when the presence of user is detected, thus saving energy.
Locke as modified by Childress renders obvious the limitations above but fails to disclose intravenous (IV) injection site processing device comprising having a securement device, wherein the IV injection site processing device is configured to be positioned to cover the securement device.
Shultz, from a similar field of endeavor, teaches an IV injection site processing device having a securement device wherein the IV injection site processing device is configured to be positioned to cover the securement device (abstract, fig. 8, Col. 10, lns 11-22, the adhesive layers of the device are interpreted as the securement device). It would have been obvious before the filing date of the claimed invention to one of ordinary skill in the art to modify the disclosure of Locke in view of Childress with the teachings of Shultz because doing so would allow for providing the predictable result of providing medical application for the wound closure device, specifically to cover and protect an IV injection site.
Regarding claim 17. Locke as modified by Childress and Schultz render obvious the assembly of claim 16, wherein the disinfecting light source comprises at least one light emitting diode (LED) that provides light having a wavelength in a range of 405-470 nm and wherein the adhesive light source comprises at least one light emitting diode (LED) that provides light having a wavelength in a range of 315-400 nm (Locke, para 0085 “UV torch may include one or more LEDs configured to generate incoherent light in the UV spectrum”; also, Childress para 0042 “light emitting diodes (LEDs), para 0073, 0084- 0086 “UVA laser (315-400 nm),”; 0073, 0084- 10-500 nm). “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). .
Regarding claim 18. Locke as modified by Childress and Schultz render obvious the assembly of claim 16, wherein the securement device comprises the light switchable adhesive (see rejection of claim 16, Locke para 0066, LSA 196, para 0071, LSA is included or disposed on polymer layer 194… configured to generate a bond between[]”; light switchable adhesive layer 196 is interpreted as the securement device).
Regarding claim 19. Locke as modified by Childress and Schultz render obvious the assembly of claim 16, wherein the light switchable adhesive is configured to transition between the adhering state and the removal state based on the light switchable adhesive being exposed to light provided by the adhesive light source (Locke para 0066, 0071, 0084, 0170, 0177 etc. “[] light switchable adhesive (LSA). The light switchable adhesive can be activated to transition to a low tact and/or peel strength state to enable easier removal as compared to a peel strength of the light switchable adhesive when in use”).
Regarding claim 20. Locke as modified by Childress and Schultz render obvious the assembly of claim 16, wherein the activation sensor is configured to: detect contact with a body of a user; and provide a signal to activate the disinfecting light source, the adhesive light source, or a combination of the disinfecting light source and the adhesive light source based on detecting contact the body of the user (Childress para 0032 “activation sensor 126 []”, para 0032 “to detect presence of an object (such a hand of an individual) within a predetermined activation zone 129, the hand drying system 120 is activated”, 0041, 0056-0057 etc.).
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 16, 18-19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4-5, 13, 15, 17 and 19 of copending Application No. 18/687,844 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the two applications are directed towards a similar device having similar functions, components and method of use.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
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