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 .
The Information Disclosure Statements
The prior art cited in the information disclosure statements filed on 7/16/2024, 10/4/2024, 1/28/2025, 2/26/2025, 5/28/2025, 9/16/2025, 10/21/2025 has 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.
Claims 1, 17, 27-31, 33, 37, 41 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 16, 19-23, 26 of copending Application No. 18/892,075 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the copending claims anticipate present claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Present claims correspond to the copending claims as follows:
18/774,723
18/892,075
1, 37, 41
1+16
27
21
28
23
29
19
30
22
31
26
33
20
Claims 1, 22, 28-30, 33, 40-41, are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 25, 29-30, 33-35, 37, 41 of copending Application No. 18/821,845 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the copending claims anticipate present claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Present claims correspond to the copending claims as follows:
18/774,723
18/821,845
1, 41
1+25
22
30
28
29
29
34
30
35
33
33
40
37, 25
Allowable Subject Matter
Claims 1-41 are allowable once the DP rejection is overcome.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant’s disclosure.
Min et al. (US 2021/0404958 A1) teaches a system, and method are described herein which can provide an excited fluorescence radiation. In accordance with certain exemplary embodiments of the present disclosure, an excited fluorescence radiation can be provided using a beam of a probe so as to excite a molecule to an excited state for a fluorescence emission to effectuate the excited fluorescence radiation. The molecule can be detected based on the fluorescence emission. For example, the beam of the probe can be either the near-infrared spectrum or the visible light spectrum (abstract, paragraph 0162, Fig.5).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ABDULLAHI NUR whose telephone number is (571)270-1298. The examiner can normally be reached on M-F, 9am to 6pm.
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, Kara Geisel, can be reached on (571) 272-2416. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ABDULLAHI NUR/Primary Examiner, Art Unit 2886