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.
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Claims 23, 30-32 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-22 of U.S. Patent No. 12128168. Although the claims at issue are not identical, they are not patentably distinct from each other because the reference patent contain the function of the inlet/outlet valves and is thus more specific, in effect making the invention of copending claims 23, 30-32 a "species" of the "generic" invention of instant claims 1-5 and 7-11. It has been held that the generic invention is "anticipated" by the species. See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993).
Instant App: 18/923338
Patent 12128168
Claim 23
Claim 1
Claim 30
Claim 11
Claim 31
Claim 12
Claim 32
Claim 10
Allowable Subject Matter
Claims 24-29 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.
The following is a statement of reasons for the indication of allowable subject matter: The prior art fails to teach or reasonably suggest either alone or in combination an apparatus for applying negative pressure therapy comprising determine a first pressure in the fluid flow path from pressure being monitored by the pressure sensor asynchronously with operation of the source of negative pressure responsive to an activity level of the source of negative pressure being below a first activity threshold associated with the source of negative pressure being active and being above a second activity threshold associated with the source of negative pressure being inactive, and operate the source of negative pressure using the first pressure. Karpowicz (US 2011/0077605) while teaching the negative pressure therapy device, fails to teach determine a first pressure in the fluid flow path from pressure being monitored by the pressure sensor asynchronously with operation of the source of negative pressure responsive to an activity level of the source of negative pressure being below a first activity threshold associated with the source of negative pressure being active and being above a second activity threshold associated with the source of negative pressure being inactive, and operate the source of negative pressure using the first pressure. Buan (US 2012/0302977) fails to cure the deficiencies of Karpowicz and does not teach determine a first pressure in the fluid flow path from pressure being monitored by the pressure sensor asynchronously with operation of the source of negative pressure responsive to an activity level of the source of negative pressure being below a first activity threshold associated with the source of negative pressure being active and being above a second activity threshold associated with the source of negative pressure being inactive, and operate the source of negative pressure using the first pressure. Examiner was unable to identify other prior art that would reasonably read on the claimed limitations, thus claims 24-29 would be allowable if rewritten in independent form.
Claims 33-42 are allowed.
The following is an examiner’s statement of reasons for allowance: The prior art fails to teach or reasonably suggest either alone or in combination a method of operating an apparatus of applying negative pressure comprising determining that an activity level of a source of negative pressure is below a first activity threshold associated with the source of negative pressure being active and above a second activity threshold associated with the source of negative pressure being inactive; in response to determining that the activity level of the source of negative pressure is below the first activity threshold and above the second activity threshold, determining a first pressure in a fluid flow path connecting the source of negative pressure to a wound covered by a wound dressing asynchronously with operation of the source of negative pressure; and operating the source of negative pressure using the first pressure. Karpowicz (US 2011/0077605) while teaching the negative pressure therapy method fails to teach determining that an activity level of a source of negative pressure is below a first activity threshold associated with the source of negative pressure being active and above a second activity threshold associated with the source of negative pressure being inactive; in response to determining that the activity level of the source of negative pressure is below the first activity threshold and above the second activity threshold, determining a first pressure in a fluid flow path connecting the source of negative pressure to a wound covered by a wound dressing asynchronously with operation of the source of negative pressure; and operating the source of negative pressure using the first pressure. Buan (US 2012/0302977) fails to cure the deficiencies of Karpowicz and does not teach determine a first pressure in the fluid flow path from pressure being monitored by the pressure sensor asynchronously with operation of the source of negative pressure responsive to an activity level of the source of negative pressure being below a first activity threshold associated with the source of negative pressure being active and being above a second activity threshold associated with the source of negative pressure being inactive, and operate the source of negative pressure using the first pressure. Examiner was unable to identify other prior art that would reasonably read on the claimed limitations, thus claims 32-42 are allowable.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KAI H WENG whose telephone number is (571)272-5852. The examiner can normally be reached M-F 9am-5pm.
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/KAI H WENG/Primary Examiner, Art Unit 3781
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