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 21-29 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 11-14 of U.S. Patent No. 11,249,101 B2 in view of U.S. 4,210,809 A to Pelavin. Instant independent claim 21 is a broader and/or obvious variation of independent claim 11 of the ‘101 patent, wherein claim 11 of the ‘101 patent includes valve than directs the liquid segment for analysis or waste, more specifically, the liquid segment is directed to the analysis system when no void is registered by the identical steps of registering a first state with both a first and second detector in first and second locations, wherein the first stat of the second detector corresponds to a presence of the liquid segment at the second location; and monitoring whether the second detector registered the first state prior to the first detector registering a second state, the second state corresponding to a void in the liquid segment at the first location. As such, instant independent claim 21 is simply a broader recitation of claim 11 of the ‘101 patent, since it does not recite limitations of the valve and additional aspects of directing the liquid segment to waste. Instant dependent claims 22 and 23 identically match the limitations recited in dependent claims 12 and 13, respectively, of the ‘101 patent. As to instant dependent claims 27-29, these claims are also simply broader recitations of the limitations recited in dependent claim 14 of the ‘101 patent, and that instant dependent claims 28 and 29 simply recite obvious limitations of a plurality of analysis devices and specific analysis devices, which it would have been obvious to one of ordinary skill in the art as of the effective filing date to employ any specific analysis device, based on the properties of the liquid segments to be analyzed, as each of the analysis devices recited in instant dependent claim 29 are well known in the art, or employ a plurality of the devices for comparative analysis of the liquid segment sample. Instant dependent claims 24-26, all recite the same limitations of dependent claims 12 and/or 13 of the ‘101 patent, being automatically sending/generating an alert, wherein the alert can be sent to an origin location of the liquid segment when the continuous liquid segment is determined to include a chemical component that exceeds an element-specific contamination limit (instant dependent claim 24 identically matching the limitations of dependent claim 13 of the ‘101 patent). However, although the ‘101 patent recites an alert is determined, it does not recite limitations in instant dependent claims 25 and 26, wherein liquid segment contains an insufficient volume for processing by the analysis system when the void is registered in the liquid segment and generating an alert when this insufficient volume is determined, respectively. One of ordinary skill in the art as of the effective filing date is well aware that, depending on the analysis device, a requisite amount/volume of sample is requited for complete analysis of the sample, and that insufficient volume/amount would result in inaccurate analysis results, and thus the determination of the volume of the liquid segment would be required for the particular/chosen analysis device. Pelavin (see entire reference) discloses a system and method of determining precise volumes of liquid segments as well as voids employ two detectors and two locations, operating identically as recited in instant independent claim 21, for subsequent passage of the precisely measured volume of the liquid segment samples required by a blood analysis device (see col. 2, lines 5-10 of Pelavin). As such, it would have been obvious to one having ordinary skill in the as of the effective filing date of the instant invention to further provide alerts regarding insufficient volumes of the liquid segments when the void is registered, since the analysis system requires a precise amount/volume to process the sample, and would not be able to process the sample due to insufficient volume.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure includes U.S. 5,960,129 to Kleinschmitt and U.S. 6,872,571 to Adolfsen et al., both of which disclose determining volumes of liquid segments, spaced by voids. Applicant is invited to review PTO form 892 accompanying this Office Action listing Prior Art relevant to the instant invention cited by the Examiner.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Primary Examiner John Fitzgerald whose telephone number is (571) 272-2843. The examiner can normally be reached on Monday-Friday from 7:00 AM to 3:30 PM E.S.T. If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor John Breene, can be reached at telephone number (571) 272-4107. 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. The central 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.
/JOHN FITZGERALD/Primary Examiner, Art Unit 2855
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