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 .
Status of the Claims
Claims 1-25 are pending in the application.
Allowable Subject Matter
Claims 1-25 are considered allowable over the prior art of record, subject to the two Obviousness Type Double Patenting rejections presented below.
The following is a statement of reasons for the indication of allowable subject matter:
The closest prior art of record is Burkhart (US 6537308 A1) and Cargill (US 2005/0118383 A1)
As to independent claims 1, 10, and 18, Burkhart discloses non-self-heating heatable eye mask for delivering thermal therapy to an eye region of a human subject (as eye mask 11 Fig.2 Col.3,ll.48-49, where eye mask 11, with bags 31/33 containing therapeutic and/or heatable materials for the eye region as a treated body portion of a subject Col.2,ll.66, to Col.3,ll.2 and heatable (not self-heating) elements Col.4,ll.11-13, 27; where holding bags 31/33 provided with heated material to apply heat by eye mask Col.3,ll.44-45),
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the non-self-heating eye mask 11 comprising: a therapy compress 15/17/19/20/27/29 comprising at least one, or first and second, eye coverage portions 15/17-27/29;31/33 (Fig.2) [as combination of: eye patch regions 15, 17 Fig.1,2 Col.3,ll.50; having pocket means 27,29 Fig.2 Col.3,ll.63-64 holding bags 31,33 [Fig.2] having antimicrobial essential oils in Fig.2 Col.4,ll.65 for detachable placement within the at least one receiver 27,29 Fig.2 Col.4,ll.65-66, the at bag 31, 33 configured for delivery of treatment to the eye as placed against the eye Col.4,ll.65, to Col.5,ll.1; Col.2,ll.66, to Col.3,ll.2], each eye coverage portion configured for application to a respective eye region of a human subject (where fill materials provided as:within bags 31,33 Fig.2 Col.4,ll.36-51,65 and allowing egress and permeability of moisture and/or vapor Col.3,ll.21-24; the fill material including woven material, such as silk, nylon, satin, fabric, and/or cotton Col.3,ll.31-34; and antimicrobial material comprising antimicrobial essential oils as: bay, cinnamon, clove, and/or thyme oils Col.4,ll.40, 42-43, 51) ([therapy compress as combination of: eye patch regions 15, 17 Fig.1,2 Col.3,ll.50; having pocket means 27,29 Fig.2 Col.3,ll.63-64; and head strap 19/21 with strap sides 19,21 forming a continuous loop Fig.2 Col.4,ll.17-18, 22-24 for securing to the patient Col.4,ll.23-25; comprising an elastic material Col.4,ll.22, and is adjustable Col.4,ll.20); and at least one, or first and second, externally heatable elements 31/33 contained within the eye covering portions of the therapy compress, configured for engagement with the therapy compress to deliver heat to release moisture from the hydrophilic fill material and effect delivery of moist heat therapy to the treated body part (heatable element as holding bags 31,33 [Fig.2] having heatable portion as antimicrobial essential oils in Fig.2 Col.4,ll.65 for detachable placement within the at least one receiver 27,29 Fig.2 Col.4,ll.65-66, the at bag 31, 33 configured for delivery of heat treatment to the eye as heated and placed against the eye Col.4,ll.65, to Col.5,ll.1; Col.2,ll.66, to Col.3,ll.2]).
As to dependent claims 4, 13, and 20, Cargill teaches a multi-layer structure for use in eye masks [0052],ll.7 that are capable of being used as an eye compress (according to broadest reasonable interpretation), the eye mask as the treatment device comprising a skin-facing fabric inner layer 12 and a non-skin-facing fabric outer layer 26; Fig. 1; [0042] comprising fabric as treated yarns to add other antimicrobial properties [0054],ll.4-6; wherein: (as per claims 4, 13, and 20) the fill material comprises a hydrophilic zeolite [0054],ll.5 comprising particulate material as granules loosely contained within the moisture permeable anti-microbial material (as provided as zeolite as a hydrophobic and granular material provided in the treated yarns/fabric [0054],ll.5.
However, as to independent claim(s) 1, 10, and 18, Burkhart and/or Cargill fail(s) to teach or fairly suggest the combination of: a self-heating eye mask, wherein the eye mask comprises at least one self-heating element contained within the at least one eye-covering portion of the therapy compress, comprising at least one reactant material reactive with air to generate and release heat for therapeutic treatment of the eye region of the human subject.
It would not have been obvious to one of ordinary skill in the art at the time of the invention to modify the externally heatable fill material of Burkhart and/or Cargill to provide the above combination of self-heating elements and features, and one of skill would not have been motivated to do so, where Burkhart and/or Cargill fail to teach or fairly suggest providing these elements and features, and do not provide any motivation to do so, where Burkart teaches away from self-heating, where Cargill teaches that the fill material must be heated from an external source to provide heat and moisture release.
Non Statutory Obviousness Type 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 §§ 706.02(l)(1) - 706.02(l)(3) 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 1-25 are rejected on the ground of nonstatutory double patenting over claims 1-20 of US Patent No. 11,998,480 B2 (‘480).
As to Claims 1-25, claims 1-20 of ‘480 teach or suggest the claimed delivery and fluid storage bridge, as follows:
Claim
1
2
3
4
5
6
7
8
9
10
11
12
13
‘480
1-5,7
8
1
2
4,1
6
6
6
1,3,
4,7
9-12, 14
15
1,7,
9
17
Claim
14
15
16
17
18
19
20
21
22
23
24
25
‘480
13
13
9-11
9-11
16,
18
20
17
19
19
16,18,
19
16,18,
19
16,18,
19
The differences between present claims and the claims of ‘480 claims do not identically recite each element of current claims (e.g., using substantially similar but not identical terms; different elements are in different claims; and/or different combinations of elements).
However, the ‘480 claims teach or suggest each element of the current claims, as listed above, such that the present claims would have been obvious over the ‘480 claims to one of ordinary skill in the art at the time of the present invention. A two-way test is not to be applied in the present cases as Applicant could have filed the claims in a single application and there was no administrative delay. In re Berg, 46 USPQ2d 1226 (Fed. Cir. 1998) (“The two-way exception can only apply when the applicant could not avoid separate filings, and even then, only if the PTO controlled the rates of prosecution to cause the later filed species claims to issue before the claims for a genus in an earlier application . . . In Berg’s case, the two applications could have been filed as one, so it is irrelevant to our disposition who actually controlled the respective rates of prosecution.”). In the absence of administrative delay, a one-way test is appropriate. In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993). Unless the record clearly shows administrative delay by the Office and that applicant could not have avoided filing separate applications, the examiner may use the one-way obviousness determination and shift the burden to applicant to show why a two-way obviousness determination is required.
One would be motivated to provide each element of the present claims from the ‘480 claims, as they both relate to the same type of device with the same elements for the same purpose and function in the same field of endeavor.
Claims 1-25 are rejected on the ground of nonstatutory double patenting over claims 1-25 of US Patent No. 12,245,970 B2 (‘970).
As to Claims 1-25, claims 1-25 of ‘970 teach or suggest the claimed delivery and fluid storage bridge, as follows:
Claim
1
2
3
4
5
6
7
8
9
10
11
12
13
‘970
1
2
3
4
5
6
7
8
9
10
11
12
13
Claim
14
15
16
17
18
19
20
21
22
23
24
25
‘970
14
15
16
17
18
19
20
21
22
23
24
25
The differences between present claims and the claims of ‘970 claims do not identically recite each element of current claims (e.g., using substantially similar but not identical terms; different elements are in different claims; and/or different combinations of elements).
However, the ‘970 claims teach or suggest each element of the current claims, as listed above, such that the present claims would have been obvious over the ‘970 claims to one of ordinary skill in the art at the time of the present invention. A two-way test is not to be applied in the present cases as Applicant could have filed the claims in a single application and there was no administrative delay. In re Berg, 46 USPQ2d 1226 (Fed. Cir. 1998) (“The two-way exception can only apply when the applicant could not avoid separate filings, and even then, only if the PTO controlled the rates of prosecution to cause the later filed species claims to issue before the claims for a genus in an earlier application . . . In Berg’s case, the two applications could have been filed as one, so it is irrelevant to our disposition who actually controlled the respective rates of prosecution.”). In the absence of administrative delay, a one-way test is appropriate. In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993). Unless the record clearly shows administrative delay by the Office and that applicant could not have avoided filing separate applications, the examiner may use the one-way obviousness determination and shift the burden to applicant to show why a two-way obviousness determination is required.
One would be motivated to provide each element of the present claims from the ‘970 claims, as they both relate to the same type of device with the same elements for the same purpose and function in the same field of endeavor.
No Obviousness Type Double Patenting
It is noted that the claims of parent/related US patents 12,156,831 and 12,202,681; and pending application: 16/202879, fail to teach or fairly suggest the present claims of applicants, where the claims fail to teach or fairly suggest the combination of elements, e.g., as presented above for the prior art. Thus, the claims of these patent applications do not render obvious the present claims under Obviousness-Type Double Patenting.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant’s disclosure. The references provided on the attached PTO Form 892 are considered relevant to Applicants’ disclosure and are cited to show further the general state of the art.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to: GUY K. TOWNSEND whose telephone number is (571) 270-3689. The examiner can normally be reached Mon. - Fri., 11 am to 6 pm Eastern Time. The direct fax number is (571) 270-4689.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, REBECCA EISENBERG, can be reached on 571-270-5879. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/GUY K TOWNSEND/Primary Examiner, Art Unit 3781
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