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 .
Response to Amendment
The preliminary amendment filed 29 January 2025 has been entered. Claims 21-40 are pending.
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.
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Claims 21-23 and 31-33 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2 and 10-11 of U.S. Patent No. 12257183. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims are anticipated by, or would have been obvious over, the reference claims.
Claims 21-40 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3, 7-8, 13-14, 16-17 and 19 of U.S. Patent No. 11872156. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims are anticipated by, or would have been obvious over, the reference claims. In particular, claims 1, 3, 7-8, 13-14, and 16-17 of the reference patent disclose the particular limitations of the reference claim alongside other limitations which do not preclude the reference claims from anticipating the instant claims. Claims 18-19 of the reference patent are broader and more generic than the instant claims and encompass the limitations of the instant claims with note that claims 18-19 of the reference patent describes “at least two” temperature monitoring devices at individual locations, each having a thermal block of “a plurality of materials” between two temperature measuring devices, thus encompassing the limitations of each independent instant claim and additionally the limitations of the dependent instant claims which reference a fourth material that is not otherwise disclosed by the claims of the reference patent.
Conclusion
The claims are not currently rejected under 35 U.S.C. 102/103. The prior art of the record fails to teach and/or fairly suggest, in combination with all other recited limitations, “a first material positioned between the first temperature sensor and the user's skin, the first material having a first thermal conductivity; a second material positioned between the first temperature sensor and the user's skin, the second material having a second thermal conductivity different than the first thermal conductivity, wherein a total thermal conductivity of the first material and the second material is based on at least the first thermal conductivity and the second thermal conductivity” of claim 21 and the similar limitation of claim 31.
The most pertinent prior art, Kuroda (US 20060056487 A1) teaches the adjustment of heat flux via altering the materials of the thermal blocks, it only discusses using different materials for each total thermal block not using two different materials in a single thermal block.
Similarly, Matsunga (US 20210186337 A1) uses different thermal resistance materials in each thermal block, but not a combination of different materials in a single block and Mensch (US 20200390336 A1) teaches that differences other than height can be used to realize a difference in thermal resistance and specifically discusses “use of different materials with different thermal resistances, using different thermal paths, adding a resistive layer with a known thermal resistance to one of the assemblies” but refers to these differences between two temperature measuring devices, instead of between thermal blocks in a single temperature measuring device.
While Prachar (US 10750951 B1) utilizes two thermal blocks having different insulation materials in combination with an isothermal plate which is connected to both of the materials, such that it could conceivably be argued that the combination of insulation material and plate makes up each of the blocks, the description refers to measuring heat conduction through the material to the plate rather than through the plate, such that the device of Prachar fails to perform the same functions as the elements of the claimed invention and similarly fails to motivate any combination which would prompt a person having ordinary skill in the art at the time of filing to arrive at the claimed invention.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANNA ROBERTS whose telephone number is (571)272-7912. The examiner can normally be reached M-F 8:30-4:30 EST.
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/ANNA ROBERTS/Examiner, Art Unit 3791
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