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 .
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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, 3, 5, 6, 8, 9, 13, 15-21, 24, 25, 28, 32, 34, 35, 40, 43, 44, and 47-51 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-42 of U.S. Patent No. 8,671,871. Although the claims at issue are not identical, they are not patentably distinct from each other because the only difference between the claimed invention and the previously patented device is the ratio of the different materials used in the indicator material in order to achieve different levels of performance under different temperatures an conditions; even if the exact ratio of ingredients was not expressly disclosed, it would have been obvious to the ordinary practioner to find the exact ratio by weight of the indicator material for optimum performance for the intended end use by routine trial and error, and the reference indicates that this was a results effective parameter (Col. 26, ll. 17-33)
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1, 3, 5, 6, 8, 9, 13, 15-21, 24, 25, 28, 32, 34, 35, 40, 43, 44, and 47-51 are rejected under 35 U.S.C. 103 as being unpatentable over Huffman et al (US # 8,671,871). The Huffman reference discloses an ascending time-temperature exposure indicator apparatus (Col. 1, ll. 19-30), comprising:
a substrate (20);
a transport element (17) supported by the substrate (Fig. 3); and
a thermally sensitive indicator element (18) supported by the substrate (20), the indicator element comprising a solid indicator material, the indicator material further comprising a mixture of a synthetic polymeric material and a wax material, the indicator material configured to move along the transport element when melted (Col. 3, ll. 5-39; Col. 11, ll. 43-67), wherein
the indicator material is configured to melt in response to exposure to temperatures at or above a predetermined threshold temperature (Col. 3, ll. 5-17; Col. 9. ll. 31-42),
the transport element (17) and the indicator element (18) are configured so that exposure to at least the predetermined threshold temperature for at least a predetermined exposure time, the predetermined exposure time being at least 1 hour (Col. 11, ll. 20-25), results in at least a predetermined amount of movement of the indicator material along the transport element that produces an end point signal (Col. 12, ll. 24-30; Col. 14, ll. 13-57),
wherein the synthetic polymeric material comprises a polymer comprising acrylate, or methacryalate and having side chain crystallinity (Col. 55, ll. 4-42).
It is unclear if the indicator material was proportioned such that each of the polymeric and wax material made up at least 10% of the indicator material by weight. However, our reviewing court has held that, "where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). Therefore, even if the exact ratio of ingredients was not expressly disclosed, it would have been obvious to the ordinary practioner to find the exact ratio by weight of the polymetric and wax material for optimum performance for the intended end use by routine trial and error, and the reference indicates that this was a results effective parameter(Col. 26, ll. 17-33).1
With respect to claims 3 & 5, once again, even if the exact ratio of ingredients was not expressly disclosed, it would have been obvious to the ordinary practioner to find the exact ratio by weight of the indicator material for optimum performance for the intended end use by routine trial and error, and the reference indicates that this was a results effective parameter (Col. 26, ll. 17-33).
With respect to claims 6 & 8, the Huffman reference discloses the use of an alkane wax.
With respect to claims 9 & 13, once again, even if the exact ratio of ingredients was not expressly disclosed, it would have been obvious to the ordinary practioner to find the exact ratio by weight of the indicator material for optimum performance for the intended end use by routine trial and error, and the reference indicates that this was a results effective parameter (Col. 26, ll. 17-33).
With respect to claims 15-18, the target threshold temperature range, and the target time exposure range, would have been an obvious parameter to set based on the intended use of the temperature exposure history sensor, and what kind of item that it was intended to protect (Col. 28, ll. 3-46).
With respect to claim 19, the Huffman reference discloses that the indicator material be optically distinctive (Col. 25, ll. 54-67).
With respect to claim 20, this list in the claim covers every possible optically distinctive dye available, and it would have been obvious to the ordinary practioner to choose a known material based on its known suitability for its intended use2.
With respect to claim 21, the Huffman reference discloses “stop” temperatures (Col. 42, ll. 49-52); the exact stop temperature would have depended on the intended end use of the temperature history recorder, and would have been an obvious parameter to optimize through trial and error.
With respect to claim 24, obviously the indicator material would have to have been a homogeneous mixture in order to provide consistent results, and the exact melting point of the mixture would have depended on the intended end use of the temperature history recorder, and would have been an obvious parameter to optimize through trial and error.
With respect to claim 25, this is a mere truism, as obviously the indicator material mixture is mixable.
With respect to claim 28, the exact melting point of the mixture would have depended on the intended end use of the temperature history recorder, and would have been an obvious parameter to optimize through trial and error.
With respect to claims 32 & 34, the target threshold temperature range, and the target time exposure range, would have been an obvious parameter to set based on the intended use of the temperature exposure history sensor, and what kind of item that it was intended to protect (Col. 28, ll. 3-46).
With respect to claim 35, Huffman discloses that the transport material can be wick material (Col. 10, ll. 9-15).
Claims 40, 43, 44, and 47-51 simply repeat the limitations already addressed, above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RANDY W GIBSON whose telephone number is (571)272-2103. The examiner can normally be reached Tue-Friday 10AM-6PM.
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 Macchiarolo can be reached at 571-272-2375. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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RANDY W. GIBSON
Primary Examiner
Art Unit 2856
/RANDY W GIBSON/Primary Examiner, Art Unit 2855
1 See MPEP § 2144.05, subsection II.
2 The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) (Claims to a printing ink comprising a solvent having the vapor pressure characteristics of butyl carbitol so that the ink would not dry at room temperature but would dry quickly upon heating were held invalid over a reference teaching a printing ink made with a different solvent that was nonvolatile at room temperature but highly volatile when heated in view of an article which taught the desired boiling point and vapor pressure characteristics of a solvent for printing inks and a catalog teaching the boiling point and vapor pressure characteristics of butyl carbitol.)
See also In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960) (selection of a known plastic to make a container of a type made of plastics prior to the invention was held to be obvious).
