CTNF 18/735,360 CTNF 84615 DETAILED ACTION Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. Information Disclosure Statement 06-49-07 AIA The information disclosure statement filed June 6, 2024 fails to comply with 37 CFR 1.98(a)(2), which requires a legible copy of each cited foreign patent document; each non-patent literature publication or that portion which caused it to be listed; and all other information or that portion which caused it to be listed. It has been placed in the application file, but the information referred to therein has not been considered. 07-30-03-h AIA Claim Interpretation Content of Specification (k) CLAIM OR CLAIMS : See 37 CFR 1.75 and MPEP § 608.01(m). The claim or claims must commence on a separate sheet or electronic page (37 CFR 1.52(b)(3)). Where a claim sets forth a plurality of elements or steps, each element or step of the claim should be separated by a line indentation. There may be plural indentations to further segregate subcombinations or related steps. See 37 CFR 1.75 and MPEP 608.01(i)-(p). The claimed invention is defined by the positively claimed elements, the structural elements listed on separate indented lines listed in the body of the claim after the transitional phrase, “comprising”. For claims 3-5, the Examiner notes that the first liquid and liquid mixture are not structural elements of the chromogenic sensor, but instead represent the material worked upon by the chromogenic sensor. For claims 13 and 14, the Examiner notes that the first liquid and liquid mixture are not components of the kit, but instead represent the material worked upon by the chromogenic sensor in the kit. Claim Rejections - 35 USC § 112 07-30-02 AIA 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. 07-34-01 Claims 1-19 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. Claim 1 recites the limitation "the sensor" in 5. There is insufficient antecedent basis for this limitation in the claim. The Examiner notes that the phrase “the sensor” is inconsistent with “A chromogenic sensor” recited at line 1. Claims 2-10 depend directly or indirectly from claim 1, and are also indefinite. For claim 1, the phrase “the programmed state has a first color” is indefinite as it appears that the shape memory polymer structure changes color, and not the programmed state. Additionally, for claims 1 and 7, it is unclear if the “programmed state” is a structural element of the chromogenic sensor, or if “programmed state” refers to a condition of the sensor prior to exposure to an agent. 07-34-05 AIA Claim 3 recites the limitation " the input " in line 1 . There is insufficient antecedent basis for this limitation in the claim. 07-34-05 AIA Claim 5 recites the limitation " the liquid mixture " in line 1 . There is insufficient antecedent basis for this limitation in the claim. Claim 11 recites the limitation "the first liquid" in line 2. There is insufficient antecedent basis for this limitation in the claim. Claims 12-19 depend directly or indirectly from claim 11 and are also indefinite. Claim 11 recites the limitation "the sensor" in 7. There is insufficient antecedent basis for this limitation in the claim. The Examiner notes that the phrase “the sensor” is inconsistent with “A chromogenic sensor” recited at line 1. For claims 11 and 16, it is unclear if the “programmed state” is a structural element of the chromogenic sensor, or if “programmed state” refers to a condition of the sensor prior to exposure to an agent. 07-34-05 AIA Claim 12 recites the limitation " the indication " in line 1 . There is insufficient antecedent basis for this limitation in the claim. 07-34-05 AIA Claim 13 recites the limitation " the liquid mixture " in line 2 . There is insufficient antecedent basis for this limitation in the claim. Double Patenting 08-33 AIA 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. 08-34 AIA Claim s 1-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim s 1-9 of U.S. Patent No. 12,031,919 (US ‘919) . Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of US ‘919 teach all the limitations of the instant claims. Independent claim 1 of the instant claims recites a chromogenic sensor comprising a shape memory polymer structure having a waveform cross-section selected from a rectangle waveform cross-section, sawtooth waveform cross-section, and a pyramidal waveform cross-section wherein the shape memory polymer structure changes from a programmed state to an active state upon exposure to an agent wherein the shape memory polymer structure has a first color in a programmed state and a second color in an active state. Claim 6 of the instant application recites one or more dimensions of the waveform cross-section in the programmed state being different when the shape memory polymer structure is in an activated state. The instant claims also teach a color difference that is perceptible to a human eye, and ethanol being a suitable compound that generates the claimed changes in the shape memory polymer structure . Claim 1 of US ‘919 is directed to a chromogenic sensor comprising a shape memory polymer structure having a waveform cross-section selected from a rectangle waveform cross-section, a sawtooth waveform cross-section, and a pyramidal waveform cross-section wherein the shape memory polymer structure changes from a programmed state to an active state upon exposure to a first liquid, and wherein one or more dimensions of the waveform cross-section in a programmed state being different when the shape memory polymer structure is in an active state. US ‘919 also teaches the changes in dimension resulting a first color in a programmed state, and a second color in an activated state. Claims 2-9 of US ‘919 also teach a color change being susceptible to the human eye, and a kit comprising a chromogenic sensor having instructions for using the sensor. While the claims are not identical, the claims of the US ‘919 teach all the limitations of the instant claims, thus the instant claims are rejected under nonstatutory double patenting . Allowable Subject Matter Claims 1 and 11 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 and the obviousness type of double patenting set forth in this Office action. 13-03-01 AIA The following is a statement of reasons for the indication of allowable subject matter: the prior art of record does not teach a chromogenic sensor and a kit for testing the presence of a first liquid comprising a shape memory polymer structure in a programmed state wherein the shape memory polymer structure has a waveform cross-section selected from a rectangle waveform cross-section, a sawtooth waveform cross-section, and a pyramidal waveform cross-section wherein the shape memory polymer structure changes color in the presence of a first liquid . The closest prior art of record is the combination of Jiang et al., (US 2016/0326334) in view of Montes De Oca Balderas et al., (US 2010/0136648). Reference to Jiang et al., teach a chromogenic sensor comprising a shape memory polymer having an uncollapsed and collapsed state (programmed and active states). Reference to Balderas et al., teach a shape memory polymer wherein the shape memory polymer can be formed with square and triangular cross-sections (paragraphs 0066, 0067). Balderas et al., do not teach or suggest a shape memory polymer having a rectangle, sawtooth, or pyramidal waveform cross-section, and therefore does not teach or suggest the limitations of the instant claims. Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to DWAN A GERIDO whose telephone number is (571)270-3714. The examiner can normally be reached Mon-Fri 10-6. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Lyle Alexander can be reached at (571) 272-1254. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /DWAN A GERIDO/ Examiner, Art Unit 1797 /LYLE ALEXANDER/ Supervisory Patent Examiner, Art Unit 1797 Application/Control Number: 18/735,360 Page 2 Art Unit: 1797 Application/Control Number: 18/735,360 Page 3 Art Unit: 1797 Application/Control Number: 18/735,360 Page 4 Art Unit: 1797 Application/Control Number: 18/735,360 Page 5 Art Unit: 1797 Application/Control Number: 18/735,360 Page 6 Art Unit: 1797 Application/Control Number: 18/735,360 Page 7 Art Unit: 1797 Application/Control Number: 18/735,360 Page 8 Art Unit: 1797 Application/Control Number: 18/735,360 Page 9 Art Unit: 1797 Application/Control Number: 18/735,360 Page 10 Art Unit: 1797 Application/Control Number: 18/735,360 Page 11 Art Unit: 1797
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