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 .
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 1-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18/375,373 (‘373) in view of U.S. Patent 11,896,084 to Howe (Howe).
In reference to claim 1, ‘373 claims an apparatus for enhancing physiological thermoregulation, the apparatus comprising a housing configured to contact a hand of a user, wherein the housing comprises a cooling element comprising a thermoelectric cooler, wherein the cooling element is configured to regulate a temperature of the hand of the user; and a plurality of sensors configured to receive a biometric datum and an initial exercise datum; at least a processor communicatively connected to the plurality of sensors; and a memory communicatively connected to the at least a processor, the memory containing instructions configuring the at least a processor to: receive the biometric datum and the initial exercise datum from the plurality of sensors; determine a biometric threshold using a machine-learning model and the biometric datum as an input to the machine-learning model; control the cooling element as a function of the biometric threshold; receive a subsequent exercise datum from the plurality of sensors; and generate an improvement datum based on the subsequent exercise datum (all claim 1), but does not claim that the cooling is used on a foot of a user. Howe teaches an article of footwear with cooling features (FIG. 1-12) wherein the cooling is used on a foot of a user (FIG. 1-12) in order to provide cooling to a foot of a user.
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the system of ‘373, to provide cooling to a foot of a user, as taught by Howe, in order to alleviate uncomfortableness due to high temperature within the shoe.
In reference to claim 2, ‘373 and Howe claim the system as explained in the rejection of claim 1 above, and Howe additionally teaches wherein the housing comprises a footwear (10, FIG. 1).
In reference to claim 3, ‘373 and Howe claim the system as explained in the rejection of claim 2 above, and Howe additionally teaches wherein the footwear comprises a footwear compatible structure (FIG. 1).
In reference to claim 4, ‘373 and Howe claim the system as explained in the rejection of claim 2 above, and Howe additionally teaches wherein the footwear (10, FIG. 1) comprises a standalone footwear (10, FIG. 1).
In reference to claim 5, ‘373 and Howe claim the system as explained in the rejection of claim 2 above, and Howe additionally teaches wherein the footwear comprises a contoured structure (120, FIG. 1) configured to adapt to a shape of the foot of a user.
In reference to claim 6, ‘373 and Howe claim the system as explained in the rejection of claim 1 above, and Howe additionally teaches wherein controlling the cooling element comprises directing cool air through one or more orifices (530, 540 and 550, FIG. 5).
In reference to claim 7, ‘373 and Howe claim the system as explained in the rejection of claim 1 above, and Howe additionally teaches wherein the cooling element is configured to regulate the temperature of the foot of a user via one or more orifices (530, 540 and 550, FIG. 5).
In reference to claim 8, ‘373 and Howe claim the system as explained in the rejection of claim 1 above, and Howe additionally teaches wherein the cooling element is configured to provide constant cooling to the foot of the user (col 11, lines 10-12).
In reference to claim 9, ‘373 and Howe claim the system as explained in the rejection of claim 1 above, and ‘373 additionally claims wherein the improvement datum comprises an improved biometric calculation based on the subsequent exercise datum (claim 9).
In reference to claim 10, ‘373 and Howe claim the system as explained in the rejection of claim 1 above, and ‘373 additionally claims wherein the subsequent exercise datum from the plurality of sensors comprises data related to the foot of the user (claim 8).
In reference to claims 11-20, they claim the method of providing and configuring the apparatus of claims 1-10, thus, they are rejected based on the rejection of apparatus as explained in the rejection of claims 1-10 above and the associated method steps, which follow directly from the use of the apparatus, are rejected accordingly.
This is a provisional nonstatutory double patenting rejection.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
See attached PTO-892 for relevant prior art.
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/FILIP ZEC/Primary Examiner, Art Unit 3763
2/7/2026