DETAILED ACTION
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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 8/26/2024 was filed. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 of U.S. Patent No. 12,072,309. Please see charts below for comparison between independent claims 1, 10, and 18 of the instant application and independent claim 1 of the US Patent.
Instant Patent Application
US Patent No. 12,072,309
Notes
1. A submersible device for measuring a light characteristic comprising:
1. A submersible device for measuring a light characteristic comprising:
<same>
a sealed case configured to be submerged into a liquid; wherein the case comprises and/or is attached to:
a sealed case configured to be submerged into a liquid; wherein the case at least partially contains and/or is attached to:
<basically the same>
a battery;
a battery
<same>
a magnet for stabilizing the case;
<US Patent includes magnet for stabilizing the case while instant application does not>
an optics board;
an optics board;
<same>
an LED emitter configured to emit an output light:
an LED emitter configured to emit an output light;
<same>
a first lens configured for the output light to pass through after being emitted by the LED ernitter;
a first lens configured for the output light to pass through after being emitted by the LED emitter;
<same>
a second lens configured for the output light to pass through after passing through the first lens;
a second lens configured for the output light to pass
through after passing through the first lens;
<same>
a photodiode configured to detect a magnitude of light and determine an absorbance of the output light by a test substance; and
a photodiode configured to detect a magnitude of light and determine an absorbance of the output light by a test substance; and
<same>
a wireless transmitter configured to transmit output relating to the absorbance.
a wireless transmitter configured to transmit output relating to the absorbance.
<same>
Instant Patent Application
US Patent No. 12,072,309
Notes
10. A submersible device for measuring a light characteristic comprising:
1. A submersible device for measuring a light characteristic comprising:
<same>
a sealed case configured to be submerged into a liquid; wherein the case at least partially contains and/or is attached to:
a sealed case configured to be submerged into a liquid; wherein the case at least partially contains and/or is
attached to:
<same>
a battery
<US Patent includes a battery while instant application does not>
a magnet;
a magnet for stabilizing the case;
<US Patent specifically states that the magnet is for stabilizing the case while instant application does not>
an optics board;
an optics board;
<same>
an LED emitter configured to emit an output light:
an LED emitter configured to emit an output light;
<same>
a first lens configured for the output light to pass through after being emitted by the LED emitter;
<US Patent includes a first lens to output light to pass through while instant application does not>
a second lens configured for the output light to pass
through after passing through the first lens;
<US Patent includes a second lens to output light to pass through while instant application does not>
a photodiode configured to detect a magnitude of light and determine an absorbance of the output light by a test substance; and
a photodiode configured to detect a magnitude of light and determine an absorbance of the output light by a test substance; and
<same>
a wireless transmitter configured to transmit output relating to the absorbance.
a wireless transmitter configured to transmit output relating to the absorbance.
<same>
Instant Patent Application
US Patent No. 12,072,309
Notes
18. A submersible device for measuring a light characteristic comprising:
1. A submersible device for measuring a light characteristic comprising:
<same>
a sealed case configured to be submerged into a liquid; wherein the case at least partially contains and/or is attached to:
a sealed case configured to be submerged into a liquid; wherein the case at least partially contains and/or is attached to:
<same>
a battery
<US Patent includes a battery while instant application does not>
a magnet;
a magnet for stabilizing the case;
<US Patent specifically states that the magnet is for stabilizing the case while instant application does not>
an optics board;
an optics board;
<same>
an LED emitter configured to emit an output light:
an LED emitter configured to emit an output light;
<same>
a first lens configured for the output light to pass through after being emitted by the LED emitter;
<US Patent includes a first lens to output light to pass through while instant application does not>
a second lens configured for the output light to pass
through after passing through the first lens;
<US Patent includes a second lens to output light to pass through while instant application does not>
a photodiode configured to detect a magnitude of light and determine an absorbance of the output light by a test substance;
a photodiode configured to detect a magnitude of light and determine an absorbance of the output light by a test substance; and
<same>
a linear variable filter configured to filter light after it passes through a lens; and
<Instant patent application includes linear variable filter to filter and pass light through a lens while US Patent does not specifically claim a linear variable filter>
<However, US Patents firsts and second lenses teaches this aspect>
a wireless transmitter configured to transmit output relating to the absorbance.
a wireless transmitter configured to transmit output relating to the absorbance.
<same>
Although the claims at issue are not identical, they are not patentably distinct from each other. Both the instant patent application and US Patent No. 12,072,309 teach a submersible device for measuring a light characteristic and transmitting output relating to absorbance of the output light. However, neither iteration (independent claims 1, 10, or 18) of the instant patent application are patentably distinct from independent claim 1 of the US Patent (see Notes columns above).
Allowable Subject Matter
Claims 1-20 are allowable over the prior art and would be in condition for allowance with resolution to the above Double Patenting rejection.
The following is a statement of reasons for the indication of allowable subject matter: Prior art fails to specifically teach a submersible device for measuring a light characteristic comprising:
a sealed case configured to be submerged into a liquid; wherein the case at least partially contains and/or is attached to:
a photodiode configured to detect a magnitude of light and determine an absorbance of the output light by a test substance; and
a wireless transmitter configured to transmit output relating to the absorbance.
Accordingly, independent claims 1, 10, and 18 would be allowed (along with the claims in which depend upon them) with resolution to the above Double Patenting rejection.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Michael J. Brown whose telephone number is (571)272-5932. The examiner can normally be reached Monday-Thursday from 5:30am-4:00pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Kamini Shah can be reached at (571)272-2279. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Michael J Brown/
Primary Examiner, Art Unit 2115
Prosecution Insights