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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 8-9, and 11-18 of U.S. Patent No. 12,150,916. Although the claims at issue are not identical, they are not patentably distinct from each other because the scope of the claims in the present application overlaps with the scope of the claims in the parent patent in such a way as to be an obvious variant. The scope of claims 1-3, 8, and 14-16 in the present application correspond to the scope of claim 1 in the parent patent. The scope of claim 4 in the present application corresponds to the scope of claim 8 in the parent patent. The scope of claim 5 in the present application corresponds to the scope of claim 11 in the parent patent. The scope of claim 6 in the present application corresponds to the scope of claim 12 in the parent patent. The scope of claim 7 in the present application corresponds to the scope of claims 13-14 in the parent patent. The scope of claim 9 in the present application corresponds to the scope of claim 9 in the parent patent. The scope of claims 10 and 17 in the present application correspond to the scope of claim 15 in the parent patent. The scope of claims 11 and 18 in the present application correspond to the scope of claim 16 in the parent patent. The scope of claims 12 and 19 in the present application correspond to the scope of claim 17 in the parent patent. The scope of claims 13 and 20 in the present application correspond to the scope of claim 18 in the parent patent.
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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 14-20 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Feng et al. (USPGPUB 2017/0354574).
Regarding claim 14, Feng et al. disclose a method for late dispensing a medication for a system, the method comprising:
(a) providing an automated pill dispensing system, the automated pill dispensing system comprising:
a base (320);
a lid (350) configured to mechanically engage with the base;
a carousel (360) configured to be arranged between the base and the lid when the base and the lid are mechanically engaged (see Figures 21-23), the carousel defining a plurality of bins (364);
(b) receiving a prompt (4212) to enter a late dispense mode (see Figure 42);
(c) dispensing the medication (4256) associated with a particular bin of the plurality of bins after an associated dispensing time has occurred (see Figure 42); and
(d) automatically, in the late dispense mode (4226), applying a software lock (see “verify an identity of the user prior to commencing the pill dispersal procedure” in claim 2) to prevent (see paragraphs [0049] and [0114]) dispensing a subsequent medication before its associated dispensing time (see Figure 42).
Regarding claim 15, Feng et al. disclose the method of claim 14, wherein the late dispense mode can be activated for a period of time (4213) after the associated dispensing time has occurred (see Figure 42).
Regarding claim 16, Feng et al. disclose the method of claim 15, wherein the period of time comprises up to two hours (see “In X Mins” in Figure 42) after the associated dispensing time has occurred.
Regarding claim 17, Feng et al. disclose the method of claim 14, wherein the automated pill dispensing system further comprises a microprocessor, a memory, or both the microprocessor and the memory (see paragraph [0040]).
Regarding claim 18, Feng et al. disclose the method of claim 14, wherein the automated pill dispensing system is communicatively coupled to a user account (see paragraphs [0038] and [0112]).
Regarding claim 19, Feng et al. disclose the method of claim 18, wherein the user account stores data associated with one or more automated pill dispensing systems (see paragraph [0038]).
Regarding claim 20, Feng et al. disclose the method of claim 19, wherein the data comprises one or more of a status of each of the plurality of bins, a medication dispensing schedule, a connection status of the one or more automated pill dispensing systems, and an adherence rate (see paragraph [0038]).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL COLLINS whose telephone number is (571)272-8970. The examiner can normally be reached Monday-Friday.
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, Jacob Scott can be reached at (571) 270-3415. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
M.K.C.
8/5/2026
/MICHAEL COLLINS/Primary Examiner, Art Unit 3655
Prosecution Insights