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 .
Response to Amendment
The status of the claim(s) is as follows:
Claims 1, 3-4 and 10 have been amended,
Claims 2, 5-9 and 11-16 were previously presented, and
Therefore, claims 1-16 are currently pending in this application.
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 1-16 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of U.S. Patent No. 12,233,220 in view of Murray et al (7,380,658).
Underline portion shows the difference in claims.
Claim 1 of Present application
Claim 1 of Patent application 12,233,220
where the first WVTR is between 1 g/(m2-24h) and 6 g/(m2-24h) when measured at 90% relative humidity and a temperature of 38 degrees Celsius according to ASTM F 1249;wherein with the film is sealed along a distal end to a connector and sealed along proximal end to a handle with a distal-most end of the connector and a proximal-most end of the handle disposed outside of the user package and disposed inside the product package; wherein the first WVTR of the product package allows water vapor from the water-based liquid that exits the user package during storage to pass through the product package to adapt the user package to be dry to touch when a user opens the product package.
where the first WVTR is between 1 g/(m2·24h) and 6 g/(m2·24h) when measured at 90% relative humidity and a temperature of 38 degrees Celsius according to ASTM F1249; wherein the first WVTR of the product package allows water vapor from the water-based liquid that exits the user package during storage to pass through the product package to adapt the user package to be dry to touch when a user opens the product package
Claim 10 of Present application
Claim 10 of Patent application 12,233,220
the user package comprises a film connected to and extending between a connector and a handle, with the film sealed along a distal end to the connector and sealed along a proximal end to the handle with a distal-most end of the connector and a proximal-most end of the handle disposed outside of the user package and disposed inside the product package, with the connector removably attached to the handle to form an enclosure, with a water-based liquid and a hydrophilically coated urinary catheter disposed in the enclosure
the user package comprises a film connected to and extending between a connector and a handle, with the film sealed along a distal end to the connector and sealed along a proximal end to the handle, with the connector removably attached to the handle to form an enclosure, with a water-based liquid and a hydrophilically coated urinary catheter disposed in the enclosure
The limitation not being taught by the parent application are “wherein with the film is sealed along a distal end to a connector and sealed along proximal end to a handle with a distal-most end of the connector and a proximal-most end of the handle disposed outside of the user package and disposed inside the product package”. However, Murray discloses a catheter product (14) having a user package (sleeve 20) sealed inside a product package (12), the user package comprises a film (the sleeve 20, column 5, lines 49-55) wherein with the film is sealed along a distal end to a connector and sealed along proximal end to a handle (Figure 1 shows the film is sealed to tip 16 and the other end is sealed to the connector (22) with a distal-most end of the connector and a proximal-most end of the handle disposed outside of the user package and disposed inside the product package (as shown in Figure 1). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the catheter of the patent application with the sleeve made of film material to cover the needle portion of the catheter between the connector and the handle as taught by Murrey to control the humidity of the hydrophilic catheter inside the user package film overtime.
Response to Arguments
Applicant’s arguments with respect to claims 1-16 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHUN HOI CHEUNG whose telephone number is (571)270-5702. The examiner can normally be reached Monday to Friday 9AM-5:30PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Orlando E Aviles can be reached at (571)270-5531. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHUN HOI CHEUNG/Primary Examiner, Art Unit 3736
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