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 § 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 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 18/862,052 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding claim 1, Tanaka teaches a fluid sterilization device comprising:
A cylindrical flow path pipe having a side peripheral wall; and
A light source unit including a light emitting element disposed on the side peripheral wall (placed in through-hole on side wall of pipe) and a substrate on which the light emitting element is mounted, wherein
A notched region (recess and hole) along a longitudinal direction of the flow path pipe is formed in the side peripheral wall of the flow path pipe, and
The light source unit is housed in the notched region.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Rejections - 35 USC § 112
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 4 and 6 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 4 and 6 recite “the light emitting element includes a plurality of light emitting elements” and “the reflector includes a plurality of reflectors”. It is not clear how a single light emitting element or reflector can include a plurality of light emitting elements or reflectors (in the specification the light emitting elements 21 and reflectors 30 are separate elements from each other). Amending the claim to state “the system includes a plurality of light emitting elements and a plurality of reflectors” would overcome the rejection.
Claim Rejections - 35 USC § 102
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 1-3 and 5 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Zhang (US 20190142986 A1).
Regarding claim 1, Zhang teaches a fluid sterilization device (fig. 1B) comprising:
A cylindrical flow pipe path (formed by pipe 110 and 112 and elbow 114) having a peripheral wall; and
A light source unit (UV LED package 216) including a light emitting element (UV LED 215, fig. 2C) disposed on the side peripheral wall and a substrate (PCB 217) on which the light emitting element is mounted, wherein
A notched region (formed in elbow 114, fig. 1B) along a longitudinal direction of the flow path pipe is formed in the side peripheral wall of the flow path pipe, and
The light source unit is housed in the notched region.
Regarding claim 2, Zhang teaches a heat sink (208, fig. 2C) that is disposed at a radially outward position (outer part surrounds PCB 217, fig. 2C) relative to the substrate of the light source unit and that is in contact with an outer surface of the substrate, and
A housing (flange nut 206) that houses the heat sink.
Regarding claims 3 and 5, Zhang teaches that the flow path pipe has a through hole at a position in the notched region where the light-emitting element faces the notched region (fig. 1B); and
The fluid sterilization device further comprises:
An ultraviolet light-transmitting window (UV window 212) portion provided in the through hole; and
An annular reflector (214) that is housed in the notched region to surround the light-emitting element.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 4 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Zhang in view of Blechschmidt (US 20130236353 A1).
Regarding claims 4 and 6, Zhang teaches all the limitations of claims 3 and 5 as described above.
Zhang teaches that the light emitting element includes a plurality of light emitting elements, the reflector includes a plurality of reflectors, and the ultraviolet light-transmitting window portion includes a plurality of ultraviolet light-transmitting windows (i.e. there are multiple modules disinfection devices 134, fig. 1D, that each presumably include a light emitting element, reflector and window);
The flow path pipe includes a plurality of through-holes (multiple modules 134 pass through pipe, fig. 1D);
A first through hole among the through holes is provided at a first position of the side peripheral wall of the flow path pipe;
In the side peripheral wall, a second through hole among the through holes is provided at a second position a predetermined distance away from the first position;
At least one light emitting element among the plurality of light emitting elements, at least one reflector among the plurality of reflectors, and at least one light-transmitting window portion among the plurality of light-transmitting window portions face the first through hole; and
Other light emitting elements among the plurality of light emitting elements, other reflectors among the plurality of reflectors, and other ultraviolet light-transmitting window portions among the plurality of light-transmitting window portions face the second through hole (i.e. there are separate light-emitting assemblies in each separate position, fig. 1D).
Zhang does not teach that the distance is in a circumferential direction.
Blechschmidt teaches a UV treatment device having light sources (20a-d) separated in a circumferential direction (in notches 25a-c).
It would have been obvious to one of ordinary skill in the art on or before the effective filing date of the invention to arrange the light sources of Zhang so that they are separated in a circumferential direction as taught by Blechschmidt, as a matter of simply rearranging the light sources of Zhang in order to provide greater illumination of a section of a pipe and avoidance of non-illuminated sections ([0030]) with no unexpected result.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID E SMITH whose telephone number is (571)270-7096. The examiner can normally be reached M to F 8:30 AM-5:00 PM.
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/DAVID E SMITH/ Examiner, Art Unit 2881
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