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 Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1, 3, and 7-9 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Walker (3,800,795).
With respect to claim 1, Walker discloses a urinary bag comprising a urinary bag body 11, as shown in figure 1, having a through bore on an upper side in communication with an interior of the bag, as shown in figure 2. A catheter 15 is connected and in communication with the bag 11, as shown in figure 1, having a first connection part 36 to be connected with a urethra of a user, and a second connection part 24, as shown in figure 2, passing through the through bore into the inside of the bag. A bend preventing tube 20 is connected and in communication between the bag 11 and the catheter 15, as shown in figure 1, having an insertion part 23 and a supporting part 21,22, as shown in figure 2, with a flow bore passing through and in communication with the catheter. The supporting part 21,22 is located inside the bag 11 and an outer diameter is larger than the outer diameter of the insertion part 23, as shown in figure 2. The supporting part 21,22 supports the interior of the bag, as shown in figures 2 and 3 (the bag is held open wider by the supporting part 21,22 than in an area without the supporting part).
With respect to claim 3, the through bore of the bag body 11 is sealed to fix the catheter 15 to the bag body 11, as disclosed in column 2, lines 28-39.
With respect to claim 7, a plastic sheet 25 is disposed between the second connection part 24 of the catheter 15 and the bag body 11, as shown in figure 2.
With respect to claim 8, the bed preventing tube 20 is formed of a rigid plastic, as disclosed in column 3, lines 17-21.
With respect to claim 9, the insertion part has a first portion formed in a cone shape and a second portion formed in a column shape wherein the largest outer diameter of the first portion is larger than the outer diameter of the second portion, as shown in the annotated figure 1 below.
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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.
Claim(s) 4-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Walker (3,800,795) in view of Lowthian (4,634,437).
With respect to claim 4, Walker discloses all aspects of the claimed invention with the exception of the processing method being high-frequency or ultrasonic welding. Lowthian discloses a catheter connected to a urine bag, as shown in figure 1, and teaches sealing the catheter to the urine bag by welding, as disclosed in column 3, lines 49-52. Ultrasonic welding and high-frequency welding are well-known in the art at processing methods for sealing urine bags. It would therefore have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to seal the catheter and urine bag of Walker by the processing method of high-frequency or ultrasonic welding, as taught by Lowthian, to use known methods on known devices to achieve the predictable result of a secure, water-tight seal between the catheter and the urine bag.
With respect to claim 5, Walker discloses all aspects of the claimed invention with the exception of two fixing bores and two positioning bands. Lowthian discloses a urine bag, as shown in figure 1, comprising two fixing bored 4 passing through the upper side of the bag wherein the through bore 7 is arranged between the two fixing bores 4. Two positioning bands (straps; not shown) are disposed in the two fixing bores 4, as disclosed in column 2, lines 41-44, to allow the bag to be held in place around the leg of a user. It would therefore have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to provide the urine bag of Walker with two fixing bores and two positioning bands, as taught by Lowthian, to allow the bag to be held in place against a user.
With respect to claim 6, Walker discloses all aspects of the claimed invention with the exception of a urine discharge tube connected to a lower middle side of the urine bag and a valve disposed on the discharge tube. Lowthian discloses a urine bag, as shown in figure 1, comprising a urine discharge tube 8 connected to a lower middle side of the urine bag, and a valve 9 disposed on the discharge tube. Lowthian teaches providing the discharge tube and valve to allow for urine to easily be drained from the bag, as disclosed in column 2, lines 49-51. It would therefore have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to provide the urine bag of Walker with a discharge tube and valve, as taught by Lowthian, to allow a user to easily drain the urine bag.
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 1-10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 and 10 of copending Application No. 18/402,089 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the copending claims disclose all limitations of the present claims and therefore anticipate the present claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Present Claims
Copending Claims
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Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. U.S. Patents and Publications 4,029,099; 6,129,714; 12,458,525; and 2012/0184944 disclose urine bags.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LYNNE ANDERSON whose telephone number is (571)272-4932. The examiner can normally be reached Monday-Friday 10-6.
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, Sarah Al-Hashimi can be reached at 571-272-7159. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CATHARINE L ANDERSON/Primary Examiner, Art Unit 3781
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