DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Claim Objections
Claims 3, 4, 10, 11, 15 and 16 objected to because of the following informalities:
Claims 3, 4, 15 and 16 recite “EM radiation absorbing layer” with no preceding article, where the parent claims 1 and 13 recite “an EM radiation absorbing layer.” In the absence of a preceding article, this limitation lacks proper antecedent basis in the claims.
Claim 10 recites the limitation “wherein the EM radiation absorbing layer comprises an EM absorbing layer being parallel to a surface....” It is unclear how many EM (radiation absorbing/absorbing) layers are present in the claimed probe – i.e. is there a single EM radiation absorbing layer which is parallel to a surface, or is there an EM radiation absorbing layer that contains a second EM absorbing layer, where the second EM absorbing layer is parallel to the surface?
Claim 11 recites the limitation “wherein said absorbing layer has a star shaped cutout in said plurality of concentric regions...wherein...the star shaped cutout….” It is unclear if “a star shaped cutout in said plurality of concentric regions” means that each region of the plurality of concentric regions has a corresponding star shaped cutout, or if one region in the plurality of concentric regions has a star shaped cutout. In addition, “said absorbing layer” is inconsistent with the previously recited “EM radiation absorbing layer” and therefore lacks proper antecedent basis in the claims.
Appropriate correction is required.
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 1-18 is/are rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1-18 of prior U.S. Patent No. 10,898,102. This is a statutory double patenting rejection.
Claims 13-18 is/are rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 13-18 of prior U.S. Patent No. 12,161,453 B2. This is a statutory double patenting rejection.
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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 of U.S. Patent No. 10,231,641. Although the claims at issue are not identical, they are not patentably distinct from each other because the conflicting claims teach every limitation of the instant claims.
Claims 13-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 of U.S. Patent No. 10,231,641 in view of US PG Pub. No. US 2003/0036674 A1, hereinafter “Bouton”.
Regarding claims 13-18: The conflicting patent teaches the limitations of the individual antennas making up the antenna array (see claims 1-6). The conflicting claims do not set forth an array of these antennas.
Bouton, in the same field of endeavors, teaches using an array of antennas to surround an area to be measured, which allows scanning (figure 5, [0083]).
It would have been prima facie obvious for one having ordinary skill in the art prior to the time of invention to modify the antennas of the conflicting claims by including them in an array in order to measure a region of tissue and allow for scanning as taught by Bouton.
Conclusion
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/CAROLYN A PEHLKE/Primary Examiner, Art Unit 3799