Detailed Action
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.
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 101, 103, 109 and 115-120 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 4-8 and 10 of U.S. Patent No. 10,654,715, hereinafter ‘715 in view of Yamagata et al. (U.S. Publication No. 2004/0121356, hereinafter Yamagata).
The listing of which instant claim match the previously allowed claims will be in the format of (instant claim; claim from U.S. Patent No. 10,654,715): (101; 2) (109;10) (115;1) (116;4) (117;5) (118;6) (119;7) and (120;8).
The only difference between claim 101 and ‘715’s claim 2 is that the instant claim has two or more ports in fluid communication with the primary fluidic channel and the environment exterior to the analysis device.
Yamagata shows a similar device that more explicitly shows the analysis device with an inlet and outlet in fluid communication with the primary fluidic channel and the environment exterior to the analysis device. See fig 3, ports 5 and 6.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to add two or more ports in fluid communication with the primary fluidic channel and the environment exterior to the analysis device to ‘715’s claim 2 because the analysis device isn’t a closed system, and being able to have an inlet and outlet allows the sample to flow through the analysis device.
Instant claim 103 states that the ports comprise inlet and outlet ports. It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to add two or more ports in fluid communication with the primary fluidic channel and the environment exterior to the analysis device to ‘715’s claim 2 because the analysis device isn’t a closed system, and being able to have an inlet and outlet allows the sample to flow through the analysis device.
Allowable Subject Matter
Claims 102, 104-108 and 110-114 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 or if the Double patenting rejection is overcome.
The following is a statement of reasons for the indication of allowable subject matter:
With respect to Claim 101, the closest prior art is the combination of Fuchs et al. (U.S. Publication No. 2005/0112606) in view of Wang et al. (U.S. Publication No. 2006/0275911) which teach all the limitations except for “wherein the total widths of the narrowest additional fluidic channels are approximately equal to the width of the primary fluidic channel”. This feature can be seen in Chan et al. (U.S. Publication No. 2002/0039737) paragraph 77. However, it would not be obvious to modify Fuchs’ to incorporate this feature.
The reasons for allowance in parent Patent 10,654,715 are that the applicant successfully argued that that adding this feature to Fuchs would destroy the functionality of Fuchs, because Fuchs requires acceleration of the fluid through the analysis region. Once the double patenting issues are resolved the instant claims will have the same reasons for allowance.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEX T DEVITO whose telephone number is (571)270-7551. The examiner can normally be reached 12pm- 8 pm EST M-S.
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/ALEX T DEVITO/Examiner, Art Unit 2855
/JOHN E BREENE/Supervisory Patent Examiner, Art Unit 2855
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