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.
Claims 1 – 8 and 10 - 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 – 20 of U.S. Patent No. 12,150,759. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the instant application are broader than those of the patent. Thus, any invention meeting the limitations of the patent claims would necessarily meet those of the instant application as well.
Claims 1 – 3, 5 – 7, 9 – 12, 14 – 16, and 18 – 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 - 29 of U.S. Patent No. 11,660,027. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the instant application are broader than those of the patent. Thus, any invention meeting the limitations of the patent claims would necessarily meet those of the instant application as well.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Applicant cites several references related to optical measurement of solutes in body fluids. Of particular relevance, Barbato (USPN 6,728,571) teach an optical measurement arrangement (Figure 5; column 9, line 41 - column 11, line 28) that produces two beams of light for interferometric measurement of a subject, with one beam including plural pathlength portions to determine depth-resolved information. In the arrangement of Barbato the reference beam includes the plural, depth-resolved beams, but only a single (non-resolved) beam is provided to the subject as the measurement beam. The collected response of the measurement beam is combined interferometrically with the plural depth reference beam, and the resulting response is analyzed for the depth related information. Hogan (USPN 7,526,329) teach an alternate optical measurement arrangement that may use a depth resolved beam as part of the interferometry measurement (Figures 1 - 2 and the descriptions thereof) and particularly indicates that a MEMS array (Figure 2B; column 13, line 26 - 36) is a suitable element for implementing the system. Baker, Jr. et al. (USPN 8,175,665) teach a spectroscopic tissue analyte measurement arrangement and method (as generally shown in Figures 2, 3 and described in column 4, line 59 - column 5, line 29). As discussed in those sections, an emitter - detector arrangement and a near-infrared spectral measurement (column 6, lines 58 - 62) is obtained from the patient’s tissue. The measured signal is processed (Figure 4, column 5, line 30 - column 9, line 21 with particular attention to the description of Blocks 54/Pre-process; 56/Tissue Absorbance Spectrum; 64/Constituent Concentrations) for obtaining the constituent concentration, wherein the processing includes converting the measured spectrum into Absorbance values (Block 56), removing noise effects (Block 54) and determining the concentration from the Absorbance information (Block 64). However, the prior art does not teach or suggest, output of light by an interferometer for detection by a photodetector after the light is received following interaction with a person’s tissue, generation of a spectrum data set from the detector data with generation of an absorbance spectrum data set therefrom, and with background noise correction of the absorbance spectrum data set prior to calculation of a concentration value, in combination with the other claimed elements or steps.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ERIC FRANK WINAKUR whose telephone number is (571)272-4736. The examiner can normally be reached Mon-Fri 9 am - 6 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Chuck Marmor, II can be reached at 571-272-4730. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ERIC F WINAKUR/Primary Examiner, Art Unit 3791
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