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 .
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 §§ 706.02(l)(1) - 706.02(l)(3) 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 9,922,508. Although the claims at issue are not identical, they are not patentably distinct from each other because
Present Application
18/823564 (Claim 1)
Conflicting Patent
9,922,508 (Claim 1)
Comments
A handheld device for monitoring the sobriety of a user, the handheld device comprising:
a mouth piece for receiving a user's mouth;
a conductive area positioned on said mouthpiece; a user identification device positioned on a case of the handheld device; and a conductive area positioned on said user identification device.
A handheld device for monitoring the sobriety of a user, the handheld device comprising:
a mouth piece for receiving a user's mouth;
a conductive area positioned on said mouthpiece; a user identification device positioned on a case of the handheld device; and a conductive area positioned on said user identification device, wherein the handheld device is configured to obtain a resistance measurement at the conductive area positioned on said mouthpiece and a resistance measurement at the conductive area positioned on said user identification device.
The patent claims include all of the limitations of the instant application claims, respectively. The patent claims also include additional limitations. Hence, the instant application claims are generic to the species of invention covered by the respective patent claims. As such, the instant application claims are anticipated by the patent claims and are therefore not patentably distinct therefrom. (See Eli Lilly and Co. v. Barr Laboratories Inc., 58 USPQ2D 1869, "a later genus claim limitation is anticipated by, and therefore not patentably distinct from, an earlier species claim", In re Goodman, 29 USPQ2d 2010, "Thus, the generic invention is 'anticipated' by the species of the patented invention" and the instant “application claims are generic to species of invention covered by the patent claim, and since without terminal disclaimer, extant species claims preclude issuance of generic application claims”). ”
Dependent claims are rejected as follows:
2
1
3
2
4
3
5
4
6
5
7
6
8
7
9
8
10
9
11
10
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11
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7
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19
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 8-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention. Claim 8 recites “a conductive area positioned on said mouthpiece for receiving a first resistance measurement” and “a conductive area positioned on said user identification device for receiving a second resistance measurement”. The instant specification discloses the resistance measurements are taken at the conductive areas. The conductive areas are placed on the mouthpiece and user identification device in the invention for the purpose of taking a resistance reading at the conductive areas. The recitations that the conductive areas "receiv[e] a . . . resistance measurement" require that a resistance measurement is taken at another location and sent to the conductive areas and that the conductive areas are capable of receiving such a measurement. This is not what is described in the instant specification. Therefore, the claim is rejected as failing to meet the written description requirement. Claim 14 includes similar recitations and is also rejected as failing to meet the written description requirement.
Claims 9-13 and 15-20 are rejected as depending from claims 8 and 14.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 3, 9, 11, and 15 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
Claims 3, 9, 11, and 15 recite the limitation “the resistance measurement between”. There is insufficient antecedent basis for this limitation in the claims.
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 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.
Claims 1 and 4-7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Boult et al. (U.S. Pub. No. 2011/0304465).
As of claim 1, Boult discloses a handheld device for monitoring the sobriety of a user, the handheld device comprising:
a mouth piece for receiving a user's mouth (Boult discloses mouth piece as recited, see Fig. 8, element 807 and paragraph [0044], FIG. 8 illustrates an operator blowing into the mouth piece 807 connected to the first device 802);
a conductive area positioned on said mouthpiece (Boult discloses a mesh that conducts an electrical signal and covers the mouth piece, which constitutes a conductive area on the mouth piece, see Fig. 8 which illustrates mesh over mouth piece and description in paragraph [0044]);
a user identification device positioned on a case of the handheld device (Boult discloses multiple user identification methods on the device, see paragraph [0044], The camera 801 is a connected to a biometric unit (biometric sensor) for facial recognition, and iris or ocular biometric recognition, which determines the identity of the operator comparing the measurements to a matrix of distance measures away from the baseline recognition system housed in memory in 802. The fingers of the operator set forth on the first device 805 creates a fingerprint metric (biometric sensor) that is sent to a finger-print recognition methodology housed in memory and processed by the processor in the first system 805); and
a conductive area positioned on said user identification device (Boult discloses a mesh that conducts an electrical signal and covers the user identification where fingerprints are captured, which constitutes a conductive area on the user identification area, see Fig. 8 which illustrates mesh and description in paragraph [0044]).
Regarding claim 4, Boult discloses a wireless transceiver (Boult discloses a Bluetooth transceiver, see paragraph [0044], FIG. 8 illustrates an operator blowing into the mouth piece 807 connected to the first device 802 comprising a blue tooth device housed at the rear of the second device 802 that transmits a signal to a plurality of sensors
904-906).
Regarding claim 5, Boult discloses transmit[ting] one or more substance content signals (Boult discloses transmitting alcohol or narcotic substance levels, see paragraph [0044], Secondly it transmits both the level or non-level of narcotics and alcohol in the gas blown in to the tube 808 together with the summation of confidence to the aforementioned summation of confidence to the first system which in turn adds this new data to the original biometric data set forth in the first set of tests.).
Regarding claim 6, Boult discloses the one or more substance content signals include a user identification (Boult discloses user identification signals are transmitted, see paragraph [0044], The fingers of the operator set forth on the first device 805 creates a fingerprint metric (biometric sensor) that is sent to a finger-print recognition methodology housed in memory and processed by the processor in the first system 805).
Regarding claim 7, Boult discloses the user identification is a fingerprint (Boult discloses a fingerprint metric is taken from a biometric sensor, see paragraph [0044], The fingers of the operator set forth on the first device 805 creates a fingerprint metric (biometric sensor) that is sent to a finger-print recognition methodology housed in memory and processed by the processor in the first system 805).
Allowable Subject Matter
Claim 2 is 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.
Claim 3 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NABIL H SYED whose telephone number is (571)270-3028. The examiner can normally be reached on 8:00-5:00 M-F.
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/NABIL H SYED/Primary Examiner, Art Unit 2683