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 § 112
Claims 10, 11, 16 and 17 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 10 and 16 each recite limitations which duplicative of limitations already recited in claim 1, from which claims 10 and 16 depend. It does not appear that applicant is attempting to recite an additional first flange portion, an additional second flange portion, etc., as such an embodiment is not described in the specification. Claims 11 and 17 are rejected as depending from indefinite claims 10 and 16.
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 and 3-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of U.S. Patent No. 12,148,319. Although the claims at issue are not identical, they are not patentably distinct from each other because the claim limitations are recited in the claims of the ‘319 patent, as follows:
Claim 1
Claim 1 of ‘319 patent
A human body simulation device comprising:
A human body simulation device comprising:
a biological model simulating a part of a human body, and comprising a partial blood vessel model simulating a part of blood vessels; and
a biological model simulating a part of a human body, and comprising a partial blood vessel model simulating a part of blood vessels; and
an aorta model simulating an aorta, and comprising:
an aorta model simulating an aorta, and comprising:
a biological model connecting portion configured to attachably/detachably connect the biological model to the aorta model in a state where an inner cavity of the aorta model and an inner cavity of the partial blood vessel model are in communication with each other; and
a biological model connecting portion configured to attachably/detachably connect the biological model to the aorta model in a state where an inner cavity of the aorta model and an inner cavity of the partial blood vessel model are in communication with each other; and
a fluid feeding portion connecting portion configured to connect to a fluid feeding pump system that is configured to feed a fluid into the inner cavities,
a fluid feeding portion connecting portion configured to connect to a fluid feeding pump system that is configured to feed a fluid into the inner cavities,
wherein the biological model connecting portion comprises a first flange portion formed on an outer periphery of an opening leading to the inner cavity of the aorta model,
Claim 9: The human body simulation device according to claim 1, wherein: the biological model connecting portion comprises a first flange portion formed on an outer periphery of an opening leading to the inner cavity of the aorta model,
the partial blood vessel model comprises a second flange portion formed on an outer periphery of an opening leading to the inner cavity of the partial blood vessel model, and
the partial blood vessel model comprises a second flange portion formed on an outer periphery of an opening leading to the inner cavity of the partial blood vessel model, and
the biological model is connectable to the aorta model by fixing the first flange portion and the second flange portion to each other so as to be abutted against each other.
the biological model is connectable to the aorta model by fixing the first flange portion and the second flange portion to each other so as to be abutted against each other.
The limitations of claim 3 are recited in claim 2 of the ‘319 patent.
The limitations of claim 4 are recited in claim 8 of the ‘319 patent.
The limitations of claims 5, 11 and 17 are recited in claim 5 of the ‘319 patent.
The limitations of claims 6, 12 and 18 are recited in claim 6 of the ‘319 patent.
The limitations of claims 7, 13 and 19 are recited in claim 12 of the ‘319 patent.
The limitations of claims 8 and 14 are recited in claim 13 of the ‘319 patent.
The limitations of claims 9 and 15 are recited in claim 3 of the ‘319 patent.
The limitations of claims 10 and 16 are recited in claim 9 of the ‘319 patent.
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claim 2 is rejected under 35 U.S.C. 101 as claiming the same invention as that of claim 9 of prior U.S. Patent No. 12,148,319. This is a statutory double patenting rejection.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KURT FERNSTROM whose telephone number is (571)272-4422. The examiner can normally be reached M-F 10-6.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Peter Vasat can be reached at 571-270-7625. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KURT FERNSTROM/Primary Examiner, Art Unit 3715
June 9, 2026
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