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 .
Information Disclosure Statement
The information disclosure statement(s) filed on the record are in compliance with the content requirements of 37 CFR 1.97 and 37 CFR 1.98 and have been considered.
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 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,005,166 (hereinafter "the patent").
Although the claims at issue are not identical, they are not patentably distinct from each other for the following reasons:
Claim 1 of the instant application recites the elastic membrane includes a “flared portion”, whereas claim 1 of the patent recites "a funnel-shaped portion". These shapes do not appear to be patentably distinction in either structure or in function, and instant disclosure uses the terms interchangeably (i.e., the specification uses the word "funnel" while the claim uses the word "flared").
Claim 1 of the instant application recites the neck portion of the elastic membrane "leading to" an exit port, whereas claim 1 of the patent recites the neck portion of the elastic membrane "narrowing to" the exit port. Accordingly, this limitation of claim 1 of the instant application is broader than the corresponding limitation of claim 1 of the patent.
Claim 1 of the instant application recites:
wherein the suction source and the positive pressure source are each configured to control pressure in the hermetic chamber via the side port;
Claim 1 of the patent recites:
wherein the suction source is configured to control pressure in the hermetic chamber via the side port;
[…]
wherein a portion of the elastic membrane of the hermetic chamber is configured to expand radially inwardly when a positive pressure …. is introduced into the hermetic chamber from the positive pressure source via the side port; …
As shown, these limitations both cover the suction source and the positive
pressure source being configured to control pressure in the hermetic chamber via the side port.
Claims 2-8 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 2, 3, 6, 7, 9 and 10 of the patent.
With the exception of the unpatentable distinctions between claim 1 of the instant application and claim 1 of the patent, claims 2, 3, 4, 5, 6, 7 and 8 of the instant application are identical to respective claims 2, 3, 6, 7, 9 and 10 of the patent.
Claim 9 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 11 of the patent.
Although the claims at issue are not identical, they are not patentably distinct from each other for the following reasons:
Claim 9 of the instant application recites the elastic membrane includes a “flared portion”, whereas claim 11 of the patent recites "a funnel-shaped portion". These shapes do not appear to be patentably distinction in either structure or in function, and instant disclosure uses the terms interchangeably (i.e., the specification uses the word "funnel" while the claim uses the word "flared").
Claim 9 of the instant application recites the neck portion of the elastic membrane "leading to" an exit port, whereas claim 11 of the patent recites the neck portion of the elastic membrane "narrowing to" the exit port. Accordingly, this limitation of claim 9 of the instant application is broader than the corresponding limitation of claim 11 of the patent.
Claim 9 of the instant application recites:
wherein the elastic membrane is sealed to the external shell so as to form a hermetic chamber between the neck portion of the external shell and the neck portion of the elastic membrane;
Claim 11 of the patent recites:
Wherein the exterior of the elastic membrane is sealed to the interior of the external shell at proximal and distal ends of the neck portion of the external shell and of the elastic membrane so to form a hermetic chamber between the neck portion of the external shell and the neck portion of the elastic membrane;
This limitation of claim 9 of the instant application is broader than, encompassed by, the corresponding limitation of claim 11 of the patent.
Claim 9 of the instant application recites:
"…wherein the unoccupied volume between the nipple tip and the distal end of said elastic membrane is in operative communication, via the exit port, with a source of at least one of atmospheric pressure and negative pressure;
[…]
wherein said source of at least one of atmospheric pressure and negative pressure is operative to control pressure in the unoccupied volume via the exit port of the elastic membrane…"
Claim 11 of the patent recites:
"…wherein the unoccupied volume between the nipple tip and the distal end of said elastic membrane is in operative communication, via the exit port, with a source of at least one of positive pressure, atmospheric pressure and/or negative pressure;
[…]
wherein the source of at least one of positive pressure, atmospheric pressure and/or negative pressure is operative to control pressure in the unoccupied volume via the exit port of the elastic membrane…"
This limitation of claim 9 of the instant application is broader than, encompassed by, the corresponding limitation of claim 11 of the patent.
Claims 10-17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 2-10 of the patent.
With the exception of the unpatentable distinctions between claim 1 of the instant application and claim 1 of the patent, claims 10, 11, 12, 13 and 14, 15, 16, and 17 of the instant application are identical to respective claims 12, 13, 14, 15, 13, 14, and 11 of the patent.
Claim 18 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 17 of the patent.
Although the claims at issue are not identical, they are not patentably distinct from each other for the following reasons:
Claim 18 of the instant application recites the elastic membrane includes a “flared portion”, whereas claim 17 of the patent recites "a funnel-shaped portion". These shapes do not appear to be patentably distinction in either structure or in function, and instant disclosure uses the terms interchangeably (i.e., the specification uses the word "funnel" while the claim uses the word "flared").
Claim 18 of the instant application recites the neck portion of the elastic membrane "leading to" an exit port, whereas claim 17 of the patent recites the neck portion of the elastic membrane "narrowing …to" the exit port. Accordingly, this limitation of claim 18 of the instant application is broader than the corresponding limitation of claim 17 of the patent.
Claim 18 of the instant application recites that "the elastic membrane is sealed to the external shell", whereas claim 17 of the patent recites that "the exterior of the elastic membrane is sealed to the interior of the external shell". Accordingly, this limitation of claim 18 of the instant application is broader than the corresponding limitation of claim 17 of the patent.
Claim 19 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 20 of the patent.
With the exception of the unpatentable distinctions between claim 1 of the instant application and claim 1 of the patent, claim 19 of the instant application is identical to respective claim 20 of the patent.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SCOTT J MEDWAY whose telephone number is (571)270-3656. The examiner can normally be reached Monday through Friday, 8:30 AM to 5:00 PM.
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/SCOTT J MEDWAY/Primary Examiner, Art Unit 3783 06/25/2026
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