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 .
Claim(s) Status
Claim 1 is currently pending.
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.
Claim(s) 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim(s) of U.S. Patent No. 10674761. Although the claims at issue are not identical, they are not patentably distinct from each other because the patent inventive scope is narrow than the inventive scope of the instant application. Thus, the broader inventive scope of the instant application is encompassed within the inventive scope of the patent.
Claim Rejections - 35 USC § 103
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.
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.
Claim(s) 1 is rejected under 35 U.S.C. 103 as being unpatentable over Smith et al. (“Smith”, US 20030149372 A1, IDS) in view of Utley et al. (“Utley”, US 20110263947 A1).
1) Regarding claim 1, Smith discloses a method of quantifying an individual’s smoking behavior, the method comprising: obtaining a plurality of samples of exhaled air from the individual over a period of time (¶¶10, 22) and measuring an amount of exhaled carbon monoxide for each of the samples of exhaled air (¶¶10-12, 22-23); quantifying an exposure of exhaled carbon monoxide over an interval of time within the period of time (¶¶10-12, 22-23); and displaying the exhaled carbon monoxide load (¶¶10-12, 22-23). As per the limitation recording a collection time associated with each sample of exhaled air; compiling a dataset comprising the amount of exhaled carbon monoxide and the collection time for each sample of exhaled air; and assigning an exhaled carbon monoxide load to the interval of time using the dataset. In an analogous art, Utley discloses a methods for facilitating cessation of undesired behaviors in which the detector unit 12 includes at least one test element that is capable of detecting a substance in a biological input from the patient that is indicative of recent targeted behavior. The detector analyzes the biological input from the patient, such as expired gas from the lungs or saliva, and logs the date and time of day, quantifies the presence of the targeted substance(s), and then stores the data for future analysis and/or sends the data to a remote location for analysis. The detector may include a processor, memory and user interface 14 as appropriate for its specific functions. The user interface may include data inputs such as a touch screen, keyboard or pointer (¶31). The processor and memory in the detector unit will associate the identification with the specific biological input, for example by time reference, and may store that information along with other information regarding that specific biological input for later analysis (¶35). Signaling unit 16 may communicate with detector unit 12 through an appropriate communication link 20 (e.g., wired, WI-FI, Bluetooth, RF, or other means) as may be devised by a person of ordinary skill in the art based on the particular application. Signaling unit 16 may be integrated with detector unit 12 in patient device 10 or may separate from the detector unit, but the units are synchronized and able to communicate real-time or at various intervals in order to correlate signaling and detector results. Thus, when physically separate from detector unit 12, signaling unit 16 may include its own processor, memory and graphical user interface 18, but when integrated with detector unit 12 both units may share one of more of those subcomponents. Utilizing graphical user interface 18, signaling unit 16 prompts the patient to blow into the detector unit at various times of the day, and/or prompts the patient to test their saliva or other body fluid as appropriate for the specific detector unit input (¶37). In the example of a combined unit or wirelessly (or wired) connected units, either the detector or the signaling unit could act as the storage entity for the data utilizing its own internal memory. Alternatively, either could act as the sending unit to upload the data to a remote source for live tracking of patient data as escribed in more detail below. Data could be uploaded immediately, intermittently or not at all. The data could also be downloaded from the storage media either by the patient or health care professional (¶42).
At the time of filing, it would have been obvious to a person of ordinary skill in the art to incorporate the concept of modifying the exhaled-air sampling system of Smith with recording/storage and transmission of collected data for multiple samples of exhaled air as taught by Utley, with the motivation to facilitate cessation of undesired behavior (see Utley ¶¶2, 8).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US 5826577 A, system quantifying and displaying carbon monoxide load related to individual’s smoking behaviors.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHICO A FOXX whose telephone number is (571)272-5530. The examiner can normally be reached 9:00 - 6:00 M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Quan-Zhen Wang can be reached at 571-272-3114. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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CHICO A. FOXX
Primary Examiner
Art Unit 2684
/CHICO A FOXX/Examiner, Art Unit 2685