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 46-66 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of prior U.S. Patent No. US 11395870. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-13 of the reference patent contain the additional limitations of the cannister and dressing, and is thus more specific, in effect making the invention of the patent, a "species" of the "generic" invention of instant claims 46-66. It has been held that the generic invention is "anticipated" by the species. See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993).
Regarding instant claim 46-66, claims 1-13 of the reference patent discloses all the limitations of instant claims 46-66.
Allowable Subject Matter
Claims 46-66 are allowable if the ODP rejection above is overcome.
The following is a statement of reasons for the indication of allowable subject matter: The prior art fails to teach or reasonably suggest either alone or in combination a negative pressure wound therapy apparatus comprising a connector port with a plurality of switches disposed at the connector port and a controller configured to adjust negative pressure of negative pressure wound therapy based on determining the connector is connected to port. The closest prior art Eckstein (US 2012/0289913) while teaching a switch that detects whether the canister is connected fails to teach a plurality of switches disposed at the connector port and a controller configured to adjust negative pressure of negative pressure wound therapy based on determining the connector is connected. Tieck (US 2016/0015957) while teaching a switch disposed at a port for detecting the connection of a reservoir still fails to cure the deficiencies of Eckstein and does not teach a plurality of switches disposed at the connector port a controller configured to adjust negative pressure of negative pressure wound therapy based on determining the connector is connected. It is not reasonable to expect the device of Eckstein to perform as intended with the switch of Tieck since the modification to include switches in Eckstein would require many modifications that would fundamentally change the operation of Eckstein. Vischer (US 2011/0196291) while teaching magnetic indicators close to the port connector also fails to teach or reasonably suggest a plurality of switches disposed at the connector port and a controller configured to adjust negative pressure of negative pressure wound therapy based on determining the connector is connected. Similarly, Yodfat (US 9138531) also teaches ID tag and reader to detect connection but also does not teach the switches at the connector port. One of ordinary skill in the art would not know how to modify the prior art device of Eckstein with the switches of Vischer and Yodfat and arrive at the instant invention without destroying the intended operation of the device and detection mechanism. It is also unreasonable to expect that the detection would lead to a change in negative pressure wound therapy parameter changes. For these reasons, claims 46-66 are allowable.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KAI H WENG whose telephone number is (571)272-5852. The examiner can normally be reached M-F 9am-5pm.
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/KAI H WENG/Primary Examiner, Art Unit 3781
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