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 .
Claim Objections
Claims 1-10 and 17-20 are objected to because of the following informalities: Claims 1 and 17 are originally filed claims, but they appear to contain amendments. In claim 1, the “and” in line 12 has been deleted. In claim 17, the “and” in line 3 has been deleted. The Examiner assumes this was intentional, but as the claims do not state that they are currently amended, the claim identifiers are improper. Appropriate correction is required.
Claims 2-10 and 18-20 are objected to based on their dependency from the independent claims 1 and 17.
Claim Rejections - 35 USC § 112
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.
Claims 1-10, 12, and 15 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 refers to “a plurality of seal members” in line 5 and later references “the seal members” in line 12. This inconsistency creates ambiguity as to whether or not these are the same “plurality of seal members” or different seal members. The Examiner assumes they are the same, and recommends amending the claim to be consistent throughout. Appropriate correction is required. Claims 2-10 are rejected based on their dependency from claim 1.
Claim 12 refers to “the recess” without providing proper antecedent basis for the term. Claim 11 lacks any reference to a recess such that further limiting a recess in claim 12 is ambiguous. The Examiner assumes that there is a recess and that recess is an external annular recess. Appropriate correction is required.
Claim 15 states “wherein the based includes at least two extensions” where “an extension” was previously claimed in claim 11, from which claim 15 depends. The claim is indefinite because it is unclear how many extensions are required to read on the claim. Is it two in total or three, the two from claim 15 plus the one from claim 11? The Examiner assumes it is two in total with the extension from claim 11 comprising two extensions. Appropriate correction is required.
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 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,070,187 in view of Weldon et al. (US 2010/0087710). Patent ‘187 claims a biopsy cap, a plurality of seals, a base and extensions as set forth in this application. The difference is that the application requires the extension to be configured to assist the user as a handle for the user to remove the base from the port. Weldon teaches several embodiments where extensions act as handles or can be used as handles to help the user remove the base from the port (see Figs. 6A-7 showing the extensions). Therefore, it would have been obvious to a person having ordinary skill in the art to modify Patent ‘187 to include Weldon’s extensions. Such a modification provides a means to secure and then remove the base from the port.
Dependent claims 2-10, 12-16, and 18-20 map to Patent 187’s dependent claims. The only significant difference being claim 14, which claims the well-known feature of using a material allowing for a snap-fit. Weldon also discloses an embodiment with such a feature (see Paragraph 0060).
Allowable Subject Matter
Claims 11, 13-14, and 16 would be allowable if the Double Patenting Rejection were to be overcome.
Claims 1-10, 12, 15, and 17-20 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, set forth in this Office action.
As allowable subject matter has been indicated, applicant's reply must either comply with all formal requirements or specifically traverse each requirement not complied with. See 37 CFR 1.111(b) and MPEP § 707.07(a).
The following is a statement of reasons for the indication of allowable subject matter:
The primary reason the claims are allowable over the prior art is that the prior art fails to disclose or render obvious a seal assembly, device, and system as set forth in claims 1, 11, and 17. In particular a combination of a base and a biopsy cap. The claims require the extension to be configured to assist the user as a handle for the user to remove the base from the port. Yamane (US 2013/0304116) includes a base, a biopsy cap, and extensions (see Fig. 11). The problem is that the extensions (161) are internal elements not accessible to the user. To say that these can assist the user as a handle to remove the base from the port would be unreasonable. A handle is something designed to be gripped by the hand. Because the extensions are internal and not designed or intended to be gripped, they are not a “handle” as set forth in the claims. Taken with the other features, the claims overcome the prior art.
Conclusion
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/TIMOTHY J NEAL/ Primary Examiner, Art Unit 3795