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 .
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by van den Honert et al. U.S. Patent No. (5,024,612).
With respect to claim 1, van den Honert discloses a method for external ear canal pressure regulation to alleviate a disorder symptom or treat a disorder (Abstract, method of alleviating tinnitus) and ([(Col.3], lines 3-6) and (figs.7-9), comprising:
providing a fluid transfer device (68) which generates a fluid flow of a fluid through an earplug (120, fig.8) and ([Col.10], lines 51-54), the earplug (120) having an earplug external surface configured to sealably engage an external ear canal wall (14) as a barrier between an external ear canal pressure and an ambient pressure (fig.7) and (Col.10], lines 42-51);
sealably engaging the earplug (120) of the fluid transfer device (68) with the external ear canal wall (14) as the barrier between the external ear canal pressure and the ambient pressure ([(Col.11, lines 3-18); and
operating the fluid transfer device (68) to generate the fluid flow of the fluid through the earplug (120) to achieve an external ear canal pressure differential between the external ear canal pressure and the ambient pressure ([Col.11, lines 8-12 and 14-18) effective to alleviate a disorder symptom or treat a disorder ([Col.11, lines 19-24).
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.
Claim 1 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. (12, 396,892 B2). Although the claims at issue are not identical, they are not patentably distinct from each other because the application claims are a broader recitation of the invention than that of the patent application.
Claim 1 of the instant application recites: a method for external ear canal pressure regulation to alleviate a disorder symptom or treat a disorder, comprising: providing a fluid transfer device which generates a fluid flow of a fluid through an earplug, said earplug having an earplug external surface configured to sealably engage an external ear canal wall as a barrier between an external ear canal pressure and an ambient pressure; sealably engaging said earplug of said fluid transfer device with said external ear canal wall as said barrier between said external ear canal pressure and said ambient pressure; and operating said fluid transfer device to generate said fluid flow of said fluid through said earplug to achieve an external ear canal pressure differential between said external ear canal pressure and said ambient pressure effective to alleviate a disorder symptom or treat a disorder.
Claim 1 of U.S. Patent No. (12,396, 892 B2) recites: a method for alleviating a user's headache pain, the method comprising: sealably engaging an earpiece of a fluid transfer device with an ear of the user as a barrier between an external ear canal pressure of an external ear canal of the user and an ambient pressure outside the external ear canal; and operating a fluid flow generator of the fluid transfer device to generate a fluid flow between the earpiece and the external ear canal, operating the fluid flow generator comprises at least one of: operating the fluid flow generator in a first configuration to increase the external ear canal pressure relative to the ambient pressure so as to generate a positive external ear canal pressure differential between the external ear canal pressure and the ambient pressure, or operating the fluid flow generator in a second configuration to decrease the external ear canal pressure relative to the ambient pressure so as to generate a negative external ear canal pressure differential between the external ear canal pressure and the ambient pressure, wherein at least one of the positive external ear canal pressure differential or the negative external ear canal pressure differential causes a physiological response that alleviates the headache pain.
Although the conflicting claims are not identical, they are not patentably distinct from each other because the difference between claim 1 of the current application and claim 1 of U.S. Patent No. (12,396, 892 B2) lies in the fact that the patented claims includes many more elements and is thus much more specific. Thus the invention of claim 1 of U.S. Patent No. (12,396, 892 B2) is in effect a “species” of the “generic” invention of current application claim 1. It has been held that the generic invention is “anticipated” by the “species". See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Since claim 1 of the current application is anticipated by claim 1 of U.S. Patent No. (12,396, 892 B2), it is not patentably distinct from claim 1 of U.S. Patent No. (12,396, 892 B2).
Conclusion
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/OPHELIA A HAWTHORNE/ Primary Examiner, Art Unit 3786
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