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 .
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.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 1, 18 and 20 recite “a pumping orifice, provided on a projection portion of the bucket lid…the projection portion comprising one or more pumping orifices….a first end of the first guide tube being connected to the pumping orifice…” and it is unclear if the one or more pumping orifices include the previously recited pumping orifice or if they are in addition to the previously recited pumping orifice. Additionally, it is unclear if the pumping orifice that the first guide tube is connected to is the first recited pumping orifice or one of the one or more pumping orifices. It is suggested that this limitation be amended to --one or more pumping orifices, provided on a projecting portion…a first end of the first guide tube being connected to one of the one or more pumping orifices-- and has been interpreted as such for the purpose of the application of prior art.
Claims 2-17 and 19 are necessarily rejected as being dependent on a rejected claim above.
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.
Claim(s) 1, 2 and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 2004/0068309 A1 to Edelman (Edelman) in view of US 6,551,348 to Blalock et al. (Blalock).
Regarding claim 1, Edelman teaches a cold therapy system (Fig. 1), comprising a bucket body (cold reservoir 12 which may include a container 24) configured to store cold therapy fluid ([0018] which states in part “Cold reservoir 12 is designed to hold a relatively cold fluid….cold reservoir 12 may include a container 24…”) and a bucket lid (lid 28), wherein the bucket lid comprises a first water circuit configured to input the cold therapy liquid from the bucket body to a cold therapy pad (Figs. 2 and 3), a second water circuit configured to output the cold therapy liquid from the cold therapy pad to the bucket body (Figs. 2 and 3), and a water pump (pump 18) configured to drive the cold therapy liquid to flow in a loop including the first water circuit, the second water circuit, and the bucket body ([0030] which states in part “a pump for circulating fluid through the system”), wherein the first water circuit comprises a pumping orifice (opening in intake 32 through which fluid is drawn), provided on a projection portion (intake 32) of the bucket lid projecting into the bucket body, and immersed in the cold therapy liquid in the bucket body ([0021] which states in part “an intake 32 for drawing fluid from the cold reservoir”), the projecting portion comprising one or more pumping orifices (opening in intake 32 through which fluid is drawn), a first guide tube (34 in combination with 44), a first end of the first guide tube being connected to the pumping orifice and a second end of the first guide tube being connected to an inlet port of the water pump (Fig. 2), a second guide tube (tubing between pump 18 and bulkhead output 46), a first end of the second guide tube being connected to an outlet port of the water pump and a second end of the second guide tube being connected to an inlet pipe of the cold therapy pad (Fig. 2), and wherein the second water circuit comprises at least one return orifice (opening of 52 that return the fluid to the cold reservoir) with an opening facing in a direction of the bucket body (Figs. 1-3), provided on a side of the bucket lid away from the projecting portion (Figs. 1 and 3), and provided at a predetermined distance from the pumping orifice (Figs. 1 and 3), and a third guide tube, a first end of the third guide tube being connected to an outlet pipe of the cold therapy pad and a second end of the third guide tube being connected to the at least one return orifice (Fig. 2 and [0025]).
Edelman does not teach wherein the bucket lid further comprises a temperature detection circuit provided on the second water circuit, configured to detect a temperature of the cold therapy liquid output from the cold therapy pad and output a temperature voltage, a control circuit configured to generate a first control signal based on the temperature voltage, wherein the water pump is configured to drive the cold therapy liquid to flow in the loop according to the first control signal, wherein the control circuit comprises a first controller, connected to the temperature detection circuit, and configured to generate the first control signal when the temperature of the cold therapy liquid detected by the temperature detection circuit is greater than or equal to a preset temperature and a first driver, connected to the first controller, and configured to generate a first switching signal according to the first control signal to turn on or turn off the water pump, so that the water pump, when turned on, drives the cold therapy liquid to flow in the loop including the first water circuit, the second water circuit, and the bucket body.
Blalock teaches an analogous system to that of Edelman including a temperature detection circuit (20 and 22) configured to detect a temperature of the cold therapy liquid and output a temperature voltage (Fig. 10), and a control circuit (Fig. 10) configured to generate a first control signal based on a temperature voltage (Col. 9, line 60-Col. 10, line 4) and wherein the water pump is configured to drive the cold therapy liquid to flow in the loop according to the first control signal (Col. 9, line 60-Col. 10, line 4), wherein the control circuit comprises a first controller (129), connected to the temperature detection circuit (Fig. 10), and configured to generate the first control signal when the temperature of the cold therapy liquid detected by the temperature detection circuit is greater than or equal to a preset temperature (Col. 9, line 44-Col. 10, line 39), and a first driver (130), connected to the first controller (Fig. 10), and configured to generate a first switching signal according to the first control signal to turn on or turn off the water pump, so that the water pump, when turned on, drives the cold therapy liquid to flow in the loop (Col. 10, lines 15-39). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified Edelman to include the temperature detection and control circuit of Blalock to allow for the control of the temperature at the desired site of application as taught by Blalock. While, Blalock does not specifically teach that the temperature detection circuit is provided on the second water circuit, it is asserted that it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified Edelman in view of Blalock to located the temperature detection circuit as claimed, since it has been held that rearranging the parts of an invention involves only routine skill in the art.
Regarding claim 2, the combination teaches the system of claim 1 as well as Blalock teaching wherein the temperature detector comprises a thermistor (Col. 7, lines 51-64), a first end of the thermistor being connected to the control circuit (Fig. 10) and a second end of the thermistor being grounded (Fig. 10), and a resistance value of the thermistor decreases as the temperature of the cold therapy liquid increases (Col. 7, lines 51-64). However, the combination is silent with respect to the temperature detector being provided within the third guide tube. It is asserted that it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified Edelman in view of Blalock to located the temperature detector as claimed, since it has been held that rearranging the parts of an invention involves only routine skill in the art.
Regarding claim 20, Edelman teaches a cold therapy device (Fig. 1), comprising a cold therapy system (30) and a cold therapy pad (10) connected to the cold therapy system (Fig. 1) and configured to fit a cold therapy area for cold therapy, wherein the cold therapy system comprises a bucket body (cold reservoir 12 which may include a container 24) configured to store cold therapy fluid ([0018] which states in part “Cold reservoir 12 is designed to hold a relatively cold fluid….cold reservoir 12 may include a container 24…”) and a bucket lid (lid 28), wherein the bucket lid comprises a first water circuit configured to input the cold therapy liquid from the bucket body to a cold therapy pad (Figs. 2 and 3), a second water circuit configured to output the cold therapy liquid from the cold therapy pad to the bucket body (Figs. 2 and 3), and a water pump (pump 18) configured to drive the cold therapy liquid to flow in a loop including the first water circuit, the second water circuit, and the bucket body ([0030] which states in part “a pump for circulating fluid through the system”), wherein the first water circuit comprises a pumping orifice (opening in intake 32 through which fluid is drawn), provided on a projection portion (intake 32) of the bucket lid projecting into the bucket body, and immersed in the cold therapy liquid in the bucket body ([0021] which states in part “an intake 32 for drawing fluid from the cold reservoir”), the projecting portion comprising one or more pumping orifices (opening in intake 32 through which fluid is drawn), a first guide tube (34 in combination with 44), a first end of the first guide tube being connected to the pumping orifice and a second end of the first guide tube being connected to an inlet port of the water pump (Fig. 2), a second guide tube (tubing between pump 18 and bulkhead output 46), a first end of the second guide tube being connected to an outlet port of the water pump and a second end of the second guide tube being connected to an inlet pipe of the cold therapy pad (Fig. 2), and wherein the second water circuit comprises at least one return orifice (opening of 52 that return the fluid to the cold reservoir) with an opening facing in a direction of the bucket body (Figs. 1-3), provided on a side of the bucket lid away from the projecting portion (Figs. 1 and 3), and provided at a predetermined distance from the pumping orifice (Figs. 1 and 3), and a third guide tube, a first end of the third guide tube being connected to an outlet pipe of the cold therapy pad and a second end of the third guide tube being connected to the at least one return orifice (Fig. 2 and [0025]).
Edelman does not teach wherein the bucket lid further comprises a temperature detection circuit provided on the second water circuit, configured to detect a temperature of the cold therapy liquid output from the cold therapy pad and output a temperature voltage, and a control circuit configured to generate a first control signal based on the temperature voltage, and wherein the water pump is configured to drive the cold therapy liquid to flow in the loop according to the First control signal.
Blalock teaches an analogous system to that of Edelman including a temperature detection circuit (20 and 22) configured to detect a temperature of the cold therapy liquid and output a temperature voltage (Fig. 10), and a control circuit (Fig. 10) configured to generate a first control signal based on a temperature voltage (Col. 9, line 60-Col. 10, line 4) and wherein the water pump is configured to drive the cold therapy liquid to flow in the loop according to the first control signal (Col. 9, line 60-Col. 10, line 4), wherein the control circuit comprises a first controller (129), connected to the temperature detection circuit (Fig. 10), and configured to generate the first control signal when the temperature of the cold therapy liquid detected by the temperature detection circuit is greater than or equal to a preset temperature (Col. 9, line 44-Col. 10, line 39), and a first driver (130), connected to the first controller (Fig. 10), and configured to generate a first switching signal according to the first control signal to turn on or turn off the water pump, so that the water pump, when turned on, drives the cold therapy liquid to flow in the loop (Col. 10, lines 15-39). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified Edelman to include the temperature detection and control circuit of Blalock to allow for the control of the temperature at the desired site of application as taught by Blalock. While, Blalock does not specifically teach that the temperature detection circuit is provided on the second water circuit, it is asserted that it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified Edelman in view of Blalock to located the temperature detection circuit as claimed, since it has been held that rearranging the parts of an invention involves only routine skill in the art.
Claim(s) 9 and 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Edelman and Blalock as applied to claim 1, and further in view of US 2014/0303551 A1 to Germain et al. (Germain).
Regarding claim 9, Edelman in view of Blalock teaches the system of claim 1, but not a pipeline detection circuit, connected to the water pump, configured to detect a drive current of the water pump and output a pipeline voltage according to the drive current, wherein the control circuit is further configured to generate a second control signal based on the pipeline voltage, wherein the water pump is further configured to continue to drive the cold therapy liquid to flow or close in the loop according to the second control signal, and wherein the drive current of the water pump is elevated in response to clogging of a pipeline. Germain teaches an analogous system to that of Edelman including a pump operated by a controller and configured to provide fluid inflow through a flow path and an outflow pump operated by the controller and configured to provide fluid outflow through a flow path where the pumps are activated in response to various signals and various algorithms to provide malfunction warnings and assure safe operation (abstract). Germain teaches that as pressure in the inflow tubing increases as a result of a kink or clog there is an increase in the current which is required to drive the pump motor at the targeted speed ([0109, 0111]). The power value is measured by a controller algorithm, and at the predetermined limit, the algorithm can display a warning of a blocked fluid flow path which can relate to kinked tubing or a clog in the flow paths and can further deactivate the pumps (546A/546B) ([0109, 0111]). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have further modified Edelman to include the pipeline detection circuit of Germain to provide malfunction warnings and assure safe operation as taught by Germain (abstract).
Regarding claim 10, the combination teaches the system according to claim 9 as well as Germain teaching a controller (155), connected to the pipeline detection circuit, and configured to generate the control signal when the pipeline detection circuit detects that the current of the water pump is greater than or equal to a preset current ([0109, 0111]), and a driver, connected to the controller, and configured to generate a switching signal according to the control signal to continue to switch on or off the water pump, so that the water pump continues to be switched on when the pipeline is clear and switched off when the pipeline is clogged ([0109, 0111]). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have further modified Edelman to include a controller and driver to control the pump so as to provide malfunction warnings and assure safe operation as taught by Germain (abstract).
Claim(s) 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Edelman and Blalock as applied to claim 1 above, and further in view of US 9,877,864 B2 to Parish et al. (Parish).
Regarding claim 11, Edelman in view of Blalock teaches the system of claim 1, but not wherein the bucket lid is further provided with an air guide tube and an air pump, one end of the air guide tube being connected to the air pump, the other end of the air guide tube being connected to an intake tube of the cold therapy pad, and the air pump inflating the cold therapy pad through the air guide tube. Parish teaches an analogous system to that of Edelman including a gas, for compression, which flows into the pad (8) from an air inlet hose (504). The gas is pumped by the control unit to the pad to provide compression therapy. It is asserted that it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have further modified Edelman to include the air guide tube and air pump of Parish to Provide compression therapy in addition to thermal therapy as taught by Parish. While, Parish does not specifically discuss the location of the air pump as being in the lid, it is asserted that it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have located the air pump as claimed, since it has been held that rearranging the parts of an invention involves only routine skill in the art.
Claim(s) 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Edelman and Blalock as applied to claim 1 above, and further in view of US 7,640,764 B2 to Gammons et al. (Gammons).
Regarding claim 12, Edelman in view of Blalock teaches the system of claim 1, but not wherein the bucket lid comprises a timer for setting the working time of the pump. Gammons teaches an analogous device to that of Edelman as well as a timer feature for shutting down the system after a predetermined time (abstract). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have further modified Edelman to include the timer of Gammons to allow for the system to be shut down after a predetermined time as taught by Gammons. While Gammons is silent with respect to the location of the timer being on the bucket lid, it is asserted that it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have located the timer as claimed, since it has been held that rearranging the parts of an invention involves only routine skill in the art.
Claim(s) 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Edelman and Blalock as applied to claim 1 above, and further in view of US 5,226,553 to Fiore (Fiore).
Regarding claim 13, Edelman in view of Blalock teaches the system of claim 1 as well as Edelman teaching wherein the cold therapy system further comprises a lifting handle (Fig. 1) and a bucket lid closing on the bucket body ([0018]). However, Edelman is silent with respect to the ends of the lifting handle being rotationally connected to both side of the bucket body respectively, the lifting handle being provided with a locking structure configured to precent the bucket lid from falling off, and the locking structure comprising a first stop plate and a second stop plate, the first stop plate being disposed on the lifting handle and the first stop plate being configured to rotate to stop on a top of the second stop plate so that the bucket lid is locked to the bucket body. Fiore teaches an analogous bucket and lid configuration to that of Edelman including where the handle has a substantially vertical carrying position in which lugs on the handle arms engage over corresponding projections on opposite sides of the lid, effective to latch the lid in place (Col. 1, lines 43-45). It is asserted that it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have further modified Edelman to include the locking structure of Fiore to effectively latch the lid in place while carrying as taught by Fiore.
Claim(s) 18 and 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Edelman in view of US 2014/0303551 A1 to Germain et al. (Germain).
Regarding claim 18, Edelman teaches a cold therapy system (Fig. 1), comprising a bucket body (cold reservoir 12 which may include a container 24) configured to store cold therapy fluid ([0018] which states in part “Cold reservoir 12 is designed to hold a relatively cold fluid….cold reservoir 12 may include a container 24…”) and a bucket lid (lid 28), wherein the bucket lid comprises a first water circuit configured to input the cold therapy liquid from the bucket body to a cold therapy pad (Figs. 2 and 3), a second water circuit configured to output the cold therapy liquid from the cold therapy pad to the bucket body (Figs. 2 and 3), and a water pump (pump 18) configured to drive the cold therapy liquid to flow in a loop including the first water circuit, the second water circuit, and the bucket body ([0030] which states in part “a pump for circulating fluid through the system”), wherein the first water circuit comprises a pumping orifice (opening in intake 32 through which fluid is drawn), provided on a projection portion (intake 32) of the bucket lid projecting into the bucket body, and immersed in the cold therapy liquid in the bucket body ([0021] which states in part “an intake 32 for drawing fluid from the cold reservoir”), the projecting portion comprising one or more pumping orifices (opening in intake 32 through which fluid is drawn), a first guide tube (34 in combination with 44), a first end of the first guide tube being connected to the pumping orifice and a second end of the first guide tube being connected to an inlet port of the water pump (Fig. 2), a second guide tube (tubing between pump 18 and bulkhead output 46), a first end of the second guide tube being connected to an outlet port of the water pump and a second end of the second guide tube being connected to an inlet pipe of the cold therapy pad (Fig. 2), and wherein the second water circuit comprises at least one return orifice (opening of 52 that return the fluid to the cold reservoir) with an opening facing in a direction of the bucket body (Figs. 1-3), provided on a side of the bucket lid away from the projecting portion (Figs. 1 and 3), and provided at a predetermined distance from the pumping orifice (Figs. 1 and 3), and a third guide tube, a first end of the third guide tube being connected to an outlet pipe of the cold therapy pad and a second end of the third guide tube being connected to the at least one return orifice (Fig. 2 and [0025]).
However, Edelman does not teach a pipeline detection circuit, connected to the water pump, configured to detect a drive current of the water pump and output a pipeline voltage according to the drive current, wherein the control circuit is further configured to generate a second control signal based on the pipeline voltage, wherein the water pump is further configured to continue to drive the cold therapy liquid to flow or close in the loop according to the second control signal, and wherein the drive current of the water pump is elevated in response to clogging of a pipeline.
Germain teaches an analogous system to that of Edelman including a pump operated by a controller and configured to provide fluid inflow through a flow path and an outflow pump operated by the controller and configured to provide fluid outflow through a flow path where the pumps are activated in response to various signals and various algorithms to provide malfunction warnings and assure safe operation (abstract). Germain teaches that as pressure in the inflow tubing increases as a result of a kink or clog there is an increase in the current which is required to drive the pump motor at the targeted speed ([0109, 0111]). The power value is measured by a controller algorithm, and at the predetermined limit, the algorithm can display a warning of a blocked fluid flow path which can relate to kinked tubing or a clog in the flow paths and can further deactivate the pumps (546A/546B) ([0109, 0111]). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have further modified Edelman to include the pipeline detection circuit of Germain to provide malfunction warnings and assure safe operation as taught by Germain (abstract). While, Germain does not specifically teach that the pipeline detection circuit is provided on the second water circuit, it is asserted that it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified Edelman in view of Blalock to located the temperature detection circuit as claimed, since it has been held that rearranging the parts of an invention involves only routine skill in the art.
Regarding claim 19, the combination teaches the system according to claim 18 as well as Germain teaching a controller (155), connected to the pipeline detection circuit, and configured to generate the control signal when the pipeline detection circuit detects that the current of the water pump is greater than or equal to a preset current ([0109, 0111]), and a driver, connected to the controller, and configured to generate a switching signal according to the control signal to continue to switch on or off the water pump, so that the water pump continues to be switched on when the pipeline is clear and switched off when the pipeline is clogged ([0109, 0111]). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have further modified Edelman to include a controller and driver to control the pump so as to provide malfunction warnings and assure safe operation as taught by Germain (abstract).
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.
Claim 14 is/are rejected under 35 U.S.C. 101 as claiming the same invention as that of claim 4 of prior U.S. Patent No. 12,213,910 B1. 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 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 1-8, 13 and 18-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 4-10 of U.S. Patent No. 12,213,910 B1. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the patent anticipate the claims of the application. Accordingly, the application claims are not patentably distinct from the patent claims. Here, the more specific patent claims encompass the broader application claims. Following the rationale in In re Goodman cited in the preceding paragraph, where applicant has once been granted a patent containing a claim for the specific narrow invention, applicant may not obtain a second patent with a claim for the generic or broader invention without first submitting an appropriate terminal disclaimer.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KAITLYN E SMITH whose telephone number is (571)270-5845. The examiner can normally be reached Monday-Friday 9am-5pm.
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/KAITLYN E SMITH/Primary Examiner, Art Unit 3794
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