DETAILED CORRESPONDENCE
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 .
Information Disclosure Statement
Applicant is reminded of the duty to disclose, as recited in MPEP §609: “In nonprovisional applications, applicants and other individuals substantively involved with the preparation and/or prosecution of the application have a duty to submit to the Office information which is material to patentability as defined in 37 CFR 1.56."
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 61/893393 as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed application, Application No. 61/893393, fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application.
The disclosure of the prior-filed application, Application No. 62/013019, provides adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application.
The instant application is given priority to Application No. 62/013019 with a filing date of 17 Jun. 2014.
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 20-22 arerejected on the ground of nonstatutory double patenting as being unpatentable over claims 20-22 of U.S. Patent No. US 12,150,826. Although the claims at issue are not identical, they are not patentably distinct from each other because the bottom portion of the solids collection canister having an outer circumference that is greater than the outer circumference of the top potion is an obvious change in size/shape/proportion. See MPEP 2144.04 IV A-B.
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 20-22 are rejected under 35 U.S.C. 103 as being unpatentable over Cannon et al WO 2001/030707 published 3 May. 2001 (hereafter Cannon) and further in view of Friedmann et al. US 4,599,170 (hereafter Friedmann).
Regarding claim 20, Cannon teaches a solids collection canister (58) that is capable of being removably secured to a dental amalgam separation apparatus for collecting amalgam from dental effluent, said dental effluent originating from at least one dental suction wand (page 1 lines 5-11; where the canister is fully capable of being removably secured to apparatus comprising opening 60 and chamber 50 and where the fluids are fully capable of being as claimed; see MPEP 2114, 2115, 2173.05(g)), the solids collection canister comprising a top portion (top portion of 58) and a bottom portion (bottom portion of 58), wherein the top portion and the bottom portion together form an interior volume (volume within chamber 58); the top portion is provided with a first opening (opening of 62) and a second opening (opening through which fluid 80 flows); said first opening communicates with a drain (60) in order to receive dental effluent containing liquids and solids from the dental amalgam separation apparatus (page 8 line 10 – page 9 line 8); said first opening further being in communication with a riser (62) that conveys said dental effluent containing liquids and solids originating from said at least one dental suction wand drain through said first opening to the bottom portion of the solids collection container, whereupon solids (61) in the dental effluent will settle and accumulate in the bottom portion of the solids collection canister (page 8 line 23 – page 9 line 8); the second opening communicates with a flow restrictor (10) disposed in the solids collection canister interior volume, said flow restrictor being adapted to allow liquid and gases in the dental effluent to exit the solids collection container, but to prohibit solids of the dental office effluent from exiting the solids collection container interior volume (page 8 lines 4-9).
Cannon does not teach wherein the bottom portion of the solids collection canister has an outer circumference that is greater than the outer circumference of the top portion.
Friedmann teaches a solids collection canister (12) that is capable of being removably secured to a dental amalgam separation apparatus for collecting amalgam from dental effluent, said dental effluent originating from at least one dental suction wand (where the canister is fully capable of being removably secured to apparatus 15 and where the fluids are fully capable of being as claimed; see MPEP 2114, 2115, 2173.05(g)), the solids collection canister comprising a top portion (top portion of 12) and a bottom portion (bottom portion of 12), wherein the top portion and the bottom portion together form an interior volume (volume within receptacle portion 21), and wherein the bottom portion of the solids collection canister has an outer circumference that is greater than the outer circumference of the top portion (as shown in Figs 1-2) in order to provide a base portion (22) which couples with a coupling element and secures the canister (col 5 lines 18-25).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the canister (58) of Cannon by incorporating the base portion (22) of Friedmann in order to couple with a coupling element and secure the canister (col 5 lines 18-25).
The modification would have resulted in wherein the bottom portion of the solids collection canister has an outer circumference that is greater than the outer circumference of the top portion
Regarding claims 21-22, Cannon in view of Friedmann teaches all the limitations of claim 20. Cannon further teaches wherein the solids collection canister is defined by a flange (flange at top rim of 58, labeled below) located on the top portion of the solids collection canister; wherein the flange is capable of removably securing said solids collection canister to a dental amalgam separation apparatus (as shown in Fig 5).
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Claim 26 is rejected under 35 U.S.C. 103 as being unpatentable over Cannon et al WO 2001/030707 published 3 May. 2001 (hereafter Cannon) in view of Friedmann et al. US 4,599,170 (hereafter Friedmann) as applied to claim 20 above and further in view of Heinrich et al. WO2012140160 published 18 Oct. 2012 as translated by EPO (hereafter Heinrich).
Regarding claim 26, Cannon in view of Friedmann teaches all the limitations of claim 20.
Cannon does not teach wherein the solids collection canister comprises an outer ribbing.
Heinrich teaches a solids collection canister (20) wherein the solids collection canister comprises an outer ribbing (28) in order to improve handling (¶32).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the canister (58) of Cannon by incorporating the outer ribbing of Heinrich in order to improve handling (¶32).
Claims 20 and 23 are rejected under 35 U.S.C. 103 as being unpatentable over Bruno et al. AT502882 published 15 Jun. 2007 as translated by EPO (hereafter Bruno) and further in view of Cannon et al WO 2001/030707 published 3 May. 2001 (hereafter Cannon) and Friedmann et al. US 4,599,170 (hereafter Friedmann).
Regarding claims 20 and 23, Bruno teaches a solids collection canister (2) that is capable of being removably secured to a dental amalgam separation apparatus for collecting amalgam from dental effluent, said dental effluent originating from at least one dental suction wand (page 1; where the canister is fully capable of being removably secured to apparatus comprising 16 and where the fluids are fully capable of being as claimed; see MPEP 2114, 2115, 2173.05(g)), the solids collection canister comprising a top portion (top portion of 2) and a bottom portion (bottom portion of 2), wherein the top portion and the bottom portion together form an interior volume (volume within chamber 2); the top portion is provided with a first opening (top opening); wherein an inner wall (inner wall of 2) of the bottom portion of the solids collection canister comprises a plurality of upwardly extending flutes (as shown in Figs 2, 5).
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Bruno does not teach the top portion is provided with a first opening and a second opening; said first opening communicates with a drain in order to receive dental effluent containing liquids and solids from the dental amalgam separation apparatus; said first opening further being in communication with a riser that conveys said dental effluent containing liquids and solids originating from said at least one dental suction wand drain through said first opening to the bottom portion of the solids collection container, whereupon solids in the dental effluent will settle and accumulate in the bottom portion of the solids collection canister; the second opening communicates with a flow restrictor disposed in the solids collection canister interior volume, said flow restrictor being adapted to allow liquid and gases in the dental effluent to exit the solids collection container, but to prohibit solids of the dental office effluent from exiting the solids collection container interior volume.
Bruno does not teach wherein the bottom portion of the solids collection canister has an outer circumference that is greater than the outer circumference of the top portion.
Friedmann teaches a solids collection canister (12) that is capable of being removably secured to a dental amalgam separation apparatus for collecting amalgam from dental effluent, said dental effluent originating from at least one dental suction wand (where the canister is fully capable of being removably secured to apparatus 15 and where the fluids are fully capable of being as claimed; see MPEP 2114, 2115, 2173.05(g)), the solids collection canister comprising a top portion (top portion of 12) and a bottom portion (bottom portion of 12), wherein the top portion and the bottom portion together form an interior volume (volume within receptacle portion 21), and wherein the bottom portion of the solids collection canister has an outer circumference that is greater than the outer circumference of the top portion (as shown in Figs 1-2) in order to provide a base portion (22) which couples with a coupling element and secures the canister (col 5 lines 18-25).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the canister (2) of Bruno by incorporating the base portion (22) of Friedmann in order to couple with a coupling element and secure the canister (col 5 lines 18-25).
The modification would have resulted in wherein the bottom portion of the solids collection canister has an outer circumference that is greater than the outer circumference of the top portion
Cannon teaches a solids collection canister (58) that is capable of being removably secured to a dental amalgam separation apparatus for collecting amalgam from dental effluent, said dental effluent originating from at least one dental suction wand (page 1 lines 5-11; where the canister is fully capable of being removably secured to apparatus comprising opening 60 and chamber 50 and where the fluids are fully capable of being as claimed; see MPEP 2114, 2115, 2173.05(g)), the solids collection canister comprising a top portion (top portion of 58) and a bottom portion (bottom portion of 58), wherein the top portion and the bottom portion together form an interior volume (volume within chamber 58); the top portion is provided with a first opening (opening of 62) and a second opening (opening through which fluid 80 flows); said first opening communicates with a drain (60) in order to receive dental effluent containing liquids and solids from the dental amalgam separation apparatus (page 8 line 10 – page 9 line 8); said first opening further being in communication with a riser (62) that conveys said dental effluent containing liquids and solids originating from said at least one dental suction wand drain through said first opening to the bottom portion of the solids collection container, whereupon solids (61) in the dental effluent will settle and accumulate in the bottom portion of the solids collection canister (page 8 line 23 – page 9 line 8); the second opening communicates with a flow restrictor (10) disposed in the solids collection canister interior volume, said flow restrictor being adapted to allow liquid and gases in the dental effluent to exit the solids collection container, but to prohibit solids of the dental office effluent from exiting the solids collection container interior volume (page 8 lines 4-9).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the canister (2) of Bruno by incorporating the first opening, second opening, and riser of Cannon in order to effectively settle solids in the chamber (page 8 line 10 – page 10 line 7).
The modification would have resulted in the top portion is provided with a first opening and a second opening; said first opening communicates with a drain in order to receive dental effluent containing liquids and solids from the dental amalgam separation apparatus; said first opening further being in communication with a riser that conveys said dental effluent containing liquids and solids originating from said at least one dental suction wand drain through said first opening to the bottom portion of the solids collection container, whereupon solids in the dental effluent will settle and accumulate in the bottom portion of the solids collection canister; the second opening communicates with a flow restrictor disposed in the solids collection canister interior volume, said flow restrictor being adapted to allow liquid and gases in the dental effluent to exit the solids collection container, but to prohibit solids of the dental office effluent from exiting the solids collection container interior volume.
Allowable Subject Matter
Claims 24-25 are 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.
Regarding claim 24, the closest prior art is Bruno et al. AT502882 which teaches a solids collection canister comprising a plurality of upwardly extending flutes. The prior art does not teach the flutes additionally on the bottom wall as claimed.
Claim 25 depends upon claim 24.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEPHEN HOBSON whose telephone number is (571)272-9914. The examiner can normally be reached 9am-5pm.
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/STEPHEN HOBSON/Examiner, Art Unit 1776
