Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
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.
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Claims 1-10, 12-20, 22, 23, and 26 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 and 12-20 of U.S. Patent No. 12,083,239. Although the claims at issue are not identical, they are not patentably distinct from each other.
Instant claim 1 has the same limitations as claim 1 of 12,083,239. Instant claim 1 adds the limitation that the first receptacle is configured to be fluidly coupled to a proximal end of a hose. This limitation is found in claim 7 of ‘239.
As to the different dependencies, a person having ordinary skill in the art would have found it obvious to have configured the device of claim 1 of ‘239 to have receptacles couplable to a hose in order to achieve the desired flow of ozone as claimed.
The limitations of instant claims 2-10 are claimed in claims 2-10 of ‘239 respectively.
The limitations of instant claims 12-20 are claimed in claims 12-20 of ‘239 respectively.
Instant claim 22 has the same limitations as claim 1 of 12,083,239. Instant claim 22 adds the limitation that the second receptacle is configured to be fluidly coupled to a hose. This limitation is found in claim 7 of ‘239.
As to the different dependencies, a person having ordinary skill in the art would have found it obvious to have configured the device of claim 1 of ‘239 to have receptacles couplable to a hose in order to achieve the desired flow of ozone as claimed.
The limitations of instant claim 23 is claimed in claim 7 of ‘239.
The limitations of instant claim 26 is claimed in claim 8 of ‘239.
4. Claims 1, 3-10, 12-20, 22, 23, and 26 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 19, 21, and 15 of U.S. Patent No. 10,940,222. Although the claims at issue are not identical, they are not patentably distinct from each other.
The limitations of instant claim 1 are claimed in claim 19 of ‘222. The difference of the second receptacle being configured to receive at least a portion of the ozone gas from outside the base is obvious from the claimed flow paths in 13 and 18. Given the claimed desired flow path it would be obvious to have the second receptacle receive the ozone gas as claimed motivated by an expectation of successfully forming an ozone treatment system and carrying out the claimed ozone treatment.
The limitations of instant claim 3 is claimed in claim 19 of ‘222.
The limitations of instant claim 4 is claimed in claim 21 of ‘222.
The limitations of instant claims 5 and 6 are claimed in claim 15 of ‘222. It would have been obvious to use a distribution line as claimed in order to successfully provide ozone to the first receptacle.
With regards to instant claims 7-9, the modification of claim 19 of ‘222 above results in instant claims 7-9.
The limitations of instant claims 10 are claimed in claim 15 of ‘222. It would have been obvious to use a distribution line as claimed in order to successfully provide ozone to the first receptacle.
With regards to instant claims 12 and 13, the modification of claim 19 of ‘222 above results in instant claims 12 and 13 except for the direct connections claimed.
With regards to instant claims 14-16, the modification of claim 19 of ‘222 above results in instant claims 36-38 except for the direct connections claimed.
The limitations of instant claims 17 and 18 are claimed in claim 15 of ‘222. It would have been obvious to use a distribution line as claimed in order to successfully provide ozone to the first receptacle.
The limitations of instant claim 19 are in claim 19 of ‘222 as modified above.
The limitations of instant claim 20 are in claim 21 of ‘222.
The limitations of instant claim 22 are claimed in claim 19 of ‘222. The difference of the second receptacle being configured to receive at least a portion of the ozone gas from outside the base is obvious from the claimed flow paths in 13 and 18. Given the claimed desired flow path it would be obvious to have the second receptacle receive the ozone gas as claimed motivated by an expectation of successfully forming an ozone treatment system and carrying out the claimed ozone treatment.
With regards to instant claims 23 and 26, the modification of claim 19 of ‘222 above results in instant claims 23 and 26
Allowable Subject Matter
Claims 11, 21, 24, and 25 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Both independent claims 1 and 22 differentiate over the prior art. Specifically the prior art, including previously cited Dhaemers (US 6,134,806) does not teach a common base with the compartment and ozone operating system within the base where the operating system is configured to send ozone through a hose or CPAP line outside the base as claimed. The applicant’s remarks filed 8/24/2020 in the parent application 16/780,355 now US 10,840,222 clearly explain the difference and provide rationale for why one would not modify either of the main prior art configurations (ozone generator separate from the compartment with an ozone line between them or ozone generator and compartment in a common base but without being configured to send ozone outside the base) to arrive at the claimed invention. The prior art as a whole does not provide a teaching or suggestion that would have led a person having ordinary skill in the art to arrive at the claimed invention within the claim environment.
The prosecution history of 16/780,355 is also relevant for other relevant prior art such as Langford (US 5,207,237), Kasting et al. (US 5,520,893), and Burris et al. (US 4,019,986). Like Dhaemers above, they do not teach the claimed invention within the claim environment for at least similar reasons.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DONALD R SPAMER whose telephone number is (571)272-3197. The examiner can normally be reached Monday to Friday from 9-5.
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/DONALD R SPAMER/Primary Examiner, Art Unit 1799
Prosecution Insights