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 .
This office action is in response to the Applicant’s communication filed on 07/27/2026. Claims 1 – 18 are currently pending in this application.
In view of applicant’s amendment and arguments regarding objection to the drawings set forth in the previous office action, the objection is hereby withdrawn.
In view of applicant’s amendment and arguments regarding statutory double patenting rejection of claim 1 set forth in the previous Office Action, the rejection is hereby withdrawn.
New grounds of rejections are presented in this office action necessitated by the applicant’s amendment.
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 1 – 9 and 11 – 17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 – 14 of U.S. Patent No. 11426101. Although the claims at issue are not identical, they are not patentably distinct from each other because claims of U.S. Patent No. 11426101 anticipate the claims of instant application according to the following table:
claims of U.S. Patent No. 11426101
claims of instant application
1 – 9
1 – 9, respectively; also claims 11 and 17
10
11, 12
11 – 14
13 – 16, respectively
Claims 10 and 18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 10 of US 11426101 (Biederman) in view of US 20140313052 (Yarger).
Regarding claims 10 and 18, Biederman does not claim “wherein the biosensor device is configured to activate the biosensor device using the first portion of the received EM energy.”
Yager teaches “wherein the biosensor device is configured to activate the biosensor device using the first portion of the received EM energy (par. 0023: the glucose sensor 110 remains idle in a low or zero power state until the glucose meter 105 is brought into close proximity to the sensor and the sensor is activated. The meter 105 is brought into close proximity to the sensor 110, and then the meter's inductive element 208 is energized. The energized inductive element 208 produces a magnetic field that induces a current in the sensor 105 [read 110] inductive element 308 due to their close proximity. The sensor is programmed to begin the pairing process when the appropriate current is induced in the inductive element 308 by the energized meter inductive element 208 (“activate the biosensor device using the first portion of the received EM energy”).).”
Therefore, it would have been obvious to a person of ordinary skill in the art at the effective filing date of the application to use disclosed by Yager activation of the biosensor by means of received electromagnetic energy, in the device of Biederman. Doing so would have allowed the biosensor to remain in a low or zero power state until activated, thus conserving battery power.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GENNADIY TSVEY whose telephone number is (571)270-3198. The examiner can normally be reached Mon-Fri 9-5:30.
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, Wesley Kim can be reached at 571-272-7867. 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.
/GENNADIY TSVEY/ Primary Examiner, Art Unit 2648
Prosecution Insights