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 non-statutory 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.
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Claims 1-20 are rejected on the ground of non-statutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,048,616. Although the claims at issue are not identical, they are not patentably distinct from each other because it would have been obvious in view of the patent claims to construct the apparatus claimed in the subject application for the purpose of providing a more economical apparatus and/or an apparatus that was more suitable to a specific medical treatment.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 1-17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Jaeger et al. (2012/0067768). Jaeger discloses most of the features of the claims, including a roll of tape as claimed. See Figs 1 and 3-5, for example. In another example, see [0013].
What Jaeger does not disclose relative to independent claims 1 and 13 is the claimed case. On the other hand it is conventional to enclose items such as those to be stored in the Jaeger tape spool (for example only, see the first aid accessory items disclosed in [0029]) within a case having the features of the claimed case. For example, when the items are first aid items as disclosed in [0029] it is well known in the art to store such items within some type of enclosure or case having compartments therein and that can be rolled up. For example, see Hernandez (2013/0299383), of record, in which a case (slim container 12) has compartments therein to store first aid items, and the case is constructed from materials and with dimensions such that it can be rolled up. It would have been obvious to store the first aid accessory items of Jaeger within a roll-up compartmented case prior to storing them in the Jaeger tape spool, in order to provide the items with additional protection from the environment (examples: dust and/or moisture) while ensuring that the items fit within the tape spool as intended by Jaeger.
Regarding independent claim 13 Jaeger is also missing the claimed enclosure. However, it would have been further obvious in view of Jaeger (this time note disclosure such as that in [0028], for example only) to provide the modified Jaeger kit within an enclosure, as claimed, in order to facilitate storing or transporting the kit, storing or transporting multiple ones of the kits in commerce or air-dropping the kits as disclosed in Jaeger.
Features of the dependent claims not disclosed in Jaeger appear to be conventional in the relevant art or well within the level of skill of one having ordinary skill in the relevant art to provide. Moreover, applicant does not indicate on the record that any of these features per se are the invention of the applicant. These features may include the patterns of bandages or field dressings of claim 2, the different sizes and/or styles of bandages of claim 3 and the composition of the adhesive as claimed in claim 4, etc. Accordingly, it would have been obvious in view of the Jaeger disclosure to provide the treatment apparatus of Jaeger with the missing features, for the purpose of providing an apparatus that was more suited for a particular application or a particular emergency or medical procedure.
Claims 18-20 are allowable over the prior art of record.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JACOB K ACKUN whose telephone number is (571)272-4418. The examiner can normally be reached Monday-Thursday 11am-7pm.
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/JACOB K ACKUN/Primary Examiner, Art Unit 3736