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 .
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 1-13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-6 of U.S. Patent No. US 12,193,974. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of US 12,193,974 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.
19/009,292
US 12,193,974
1. A method of disrupting debris within a structure within an eyelid comprising: providing a device with an eye contacting portion with a surface, the surface having a first electrode and a second electrode; contacting an eyelid margin with the first electrode; contacting a surface of an eyelid adjacent to but spaced apart from the eyelid margin with a second electrode; and supplying electrical energy to one of the first or second electrodes in an amount sufficient to disrupt debris within a structure within the eyelid while not harming the underlying the eyelid margin, the eyelid, or the structure within the eyelid.
10. A method disrupting debris on an eyelid margin comprising: providing a device with an eve contacting portion with a surface, the surface having a first electrode and a second electrode, contacting debris on an eyelid margin with the first electrode, contacting a surface of an eyelid adjacent to but spaced apart from the debris with the second electrode, and supplying electrical energy to one of the first or second electrodes in an amount sufficient to disrupt the debris while not harming the underlying eyelid margin or eyelid.
2. The method of claim 1, wherein the structure within the eyelid is at least one meibomian gland.
3. The method of claim 1, wherein the structure within the eyelid is at least one eyelash follicle.
4. The method of claim 1, wherein the structure within the eyelid is at least one lacrimal gland.
5. The method of claim 1, further comprising: expressing the debris out of the structure within the eyelid; and supplying a wash solution to remove debris disrupted by the electrical energy and expressed from the structure within the eyelid.
6. The method of claim 1, wherein the electrical energy has a voltage between about 0.1 volts and 20 volts.
12. The method of claim 10, wherein the electrical energy has a voltage between about 0.1 volts and 20 volts.
7. The method of claim 1, wherein the electrical energy has a current of less than about 3 milliamps.
13. The method of claim 10, wherein the electrical energy has a current of less than about 3 milliamps
8. The method of claim 1, further comprising contacting the eye with an eye contacting portion and applying ultrasonic energy to the eyelid via eye contacting portion.
14. The method of claim 10, further comprising contacting the eye with eye contacting portion and applying ultrasonic energy to the eyelid via the eye contacting portion.
9. A method of disrupting debris within a structure within an eyelid comprising :providing a device with an eye contacting portion with a surface, the surface having a first electrode and a second electrode; contacting a portion of an eyelid across at least fifty percent of the width of the eyelid with the eyelid contacting portion; applying ultrasonic energy to the portion of the eyelid via the eyelid contacting portion, and disrupting, with the ultrasonic energy, debris within a structure within the eyelid.
21. A method of disrupting debris on an eyelid margin comprising; providing a device with an eve contacting portion with a surface, the surface having a first electrode and a second electrode, contacting a portion of an eyelid across at least fifty percent of the width of the eyelid with an eyelid contacting portion, and applying ultrasonic energy to the portion of the eyelid via the eyelid contacting portion, wherein the portion of an eyelid is selected from the group consisting of external portion of an upper eyelid, [[a]] an external portion of a lower eyelid, a upper eyelid margin between the external surface of the upper eyelid and an internal surface of the upper eyelid, a lower eyelid margin between the external surface of the lower eyelid and an internal surface of the lower eyelid, the internal surface of the upper eyelid, the internal surface of the lower eyelid, or combinations thereof.
10. The method of claim 9, wherein the structure within the eyelid is at least one meibomian gland.
11. The method of claim 9, wherein the structure within the eyelid is at least one eyelash follicle.
12. The method of claim 9, wherein the structure within the eyelid is at least one lacrimal gland.
13. The method of claim 9, wherein the portion of the eyelid is selected from the group consisting of external portion of an upper eyelid, an external portion of a lower eyelid, a upper eyelid margin between the external surface of the upper eyelid and an internal surface of the upper eyelid, a lower eyelid margin between the external surface of the lower eyelid and an internal surface of the lower eyelid, the internal surface of the upper eyelid, the internal surface of the lower eyelid, or combinations thereof.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TIGIST S DEMIE whose telephone number is (571)270-5345. The examiner can normally be reached Monday-Friday 8am-5Pm.
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/TIGIST S DEMIE/Primary Examiner, Art Unit 3794
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