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 21-40 are pending in the application.
Allowable Subject Matter
Claims 21-40 are considered allowable over the prior art of record, subject to the following FIVE (5) Obviousness Type Double Patenting rejections, as presented below. The following is an examiner’s statement of reasons for allowable subject matter: The prior art of record fails to teach or fairly suggest the present claims of Applicant. The closest prior art of record is: Campbell (US 4490145 A); and Dallas (US 7655070 B1). Campbell and/or Dallas teach (a system of) an ostomy filter assembl(y)ies comprising: enclosure and opposite sides, a first layer, an adsorbent layer, and a welded peripheral seal between the ostomy bag and filter.
However, as to independent claims 21 and 36, Campbell and/or Dallas fail to teach or fairly suggest that the filter assembly includes a combination of: a gas permeable first layer; an adsorbent layer comprising adsorbent particles; wherein the bag side of the filter assembly comprises: an adhesive zone with an adhesive and having an outer adhesive perimeter; and a weld area surrounding at least a portion of the adhesive zone, where the filter assembly is heat sealable to the enclosure at the weld area.
However, as to independent claim 40, Campbell and/or Dallas fail to teach or fairly suggest that the filter assembly includes a combination of: a system of filter assemblies located on a release liner, or a filter assembly, each filter assembly comprising an adsorbent layer comprising adsorbent particles; wherein the enclosure side of the filter assembly comprises: an adhesive zone with an adhesive and having an outer adhesive perimeter; and a weld area surrounding at least a portion of the adhesive zone, where the filter assembly is heat sealable to the enclosure at the weld area.
As presented on pages 5-10 of the 2/27/19 Applicant’s Appeal Brief in grandparent application 14/624202, it would not have been obvious to one of ordinary skill in the art at the time of the invention to modify the teachings of Campbell and/or Dallas, and one of skill would have not been motivated to, provide the above combinations of elements and features for each of independent claims 21, 36, and 40, as presented above. While Campbell teaches that the outer periphery of the enclosure/ostomy pouch can be sealed at its periphery by a weld or by an adhesive, Campbell and/or Dallas fail to teach or suggest that the filter assembly includes both: an adhesive zone with an outer adhesive perimeter; and a weld area completely surrounding at least a portion of the adhesive zone. Thus, it would not have been obvious to one ordinary skill in the art at the time of the invention, and one of skill would not have been motivated, to modify the teachings of Campbell and/or Dallas to provide the filter assembly with a weld area completely surrounding a portion of an adhesive zone. Campbell and/or Dallas do not teach or suggest modifying the pouch peripheral weld to include a weld area surrounding an adhesive layer. Based on the teachings of Campbell and/or Dallas there would be no motivation to modify the alternative of a weld or adhesive attachment, since Campbell is limited to using alternatively a weld or an adhesive for the same purpose and function of attaching and sealing the filter assembly enclosure to the ostomy pouch wall, and there is no suggestion of any advantage or purpose in providing the recited weld area completely surrounding a portion of an adhesive zone.
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 21-40 are rejected on the ground of nonstatutory double patenting over claims 1-6 and 8-20 of US Patent No. 12,233,001 B2 (‘001) (issued from parent application 18/599,903). As to Claims 1-20, claims 1-6 and 8-20 of ‘001 teach or suggest the claimed delivery and fluid storage bridge, as follows (with claim dependencies shown in paratheses, e.g., 3(/2/1) as claim 3 incorporating claims 1 and 2):
Claim
21
22
23
24
25
26
27
28
29
30
‘001
1
2
3
4
5
6
1
8
9
10
Claim
31
32
33
34
35
36
37
38
39
40
‘001
11
12
13
14
15
16,1
17
18
19
20
The differences between present claims and the claims of ‘001 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 ‘001 claims teach or suggest each element of the current claims, as listed above, such that the present claims would have been obvious over the ‘001 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 ‘001 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 21-40 are rejected on the ground of nonstatutory double patenting over claims 1-20 of US Patent No. 11,925,573 B2 (‘573) (issued from parent application 18/087394). As to Claims 21-40, claims 1-20 of ‘573 teach or suggest the claimed delivery and fluid storage bridge, as follows (with claim dependencies shown in paratheses, e.g., 3(/2/1) as claim 3 incorporating claims 1 and 2):
Claim
21
22
23
24
25
26
27
28
29
30
‘573
1;7 (/1)
2 (/1)
3 (/1)
4 (/1)
5 (/1)
6 (/1)
8 (/1)
9 (/1)
10 (/1)
11 (/1)
Claim
31
32
33
34
35
36
37
38
39
40
‘573
12 (/11)
13 (/1)
14 (/1)
15 (/1)
16 (/1)
1; 8 (/1)
2 (/1)
13 (/1)
16 (/1)
20; 7 (/1)
The differences between present claims and the claims of ‘573 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 ‘573 claims teach or suggest each element of the current claims, as listed above, such that the present claims would have been obvious over the ‘573 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 ‘573 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 21-31, 34-37, and 39-40 are rejected on the ground of nonstatutory double patenting over claims 1-20 of US Patent No. 11,534,324 B2 (‘324) (issued from parent application 16/870578). As to Claims 21-31, 34-37, and 39-40, claims 1-20 of ‘324 teach or suggest the claimed delivery and fluid storage bridge, as follows (with claim dependencies shown in paratheses, e.g., 3(/2/1) as claim 3 incorporating claims 1 and 2):
Claim
21
22
23
24
25
26
27
28
29
30
‘324
1;13 (/12 /1)
4 (/1)
5 (/4 /1)
6 (/4 /1)
7 (/4 /1)
17 (/1)
14 (/12 /1)
12 (/1)
16 (/12 /1)
13 (/12 /1)
Claim
31
34
35
36
37
39
40
‘324
15 (/12 /1)
11 (/1)
2 (/1)
1; 14 (/12 /1)
4 (/1)
2 (/1)
19; 13 (/12 /1)
The differences between present claims and the claims of ‘324 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 ‘324 claims teach or suggest each element of the current claims, as listed above, such that the present claims would have been obvious over the ‘324 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 ‘324 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 21-23, 31, and 35 are rejected on the ground of nonstatutory double patenting over claims 1-3, 7, and 9-11 of US Patent No. 10,646,370 B2 (‘370) (issued from parent application 12/414951). As to Claims 21-23, 31, and 35, claims 1-3, 7, and 9-11 of ‘370 teach or suggest the claimed delivery and fluid storage bridge, as follows (with claim dependencies shown in paratheses, e.g., 3(/2/1) as claim 3 incorporating claims 1 and 2):
Claim
21
22
23
‘370
1;9 (/1)
3 (/2 /1)
7 (/3 /2 /1)
Claim
31
35
‘370
10 (/1)
11 (/1)
The differences between present claims and the claims of ‘370 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 ‘370 claims teach or suggest each element of the current claims, as listed above, such that the present claims would have been obvious over the ‘370 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 ‘370 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 21-26, 28, 31, 34, 35, and 40 are rejected on the ground of nonstatutory double patenting over claims 8-11, 14-16, 19-23 of US Patent No. 8,979,811 B2 (‘811) (issued from parent application 14/624202). As to Claims 21-26, 28, 31, 34, 35, and 40, claims 8-11, 14-16, 19-23 of ‘811 teach or suggest the claimed delivery and fluid storage bridge, as follows (with claim dependencies shown in paratheses, e.g., 3(/2/1) as claim 3 incorporating claims 1 and 2):
Claim
21
22
23
24
25
26
28
‘811
9;19 (/9)
11 (/10 /9)
14 (/11 /10 /9)
15 (/11 /10 /9)
16 (/4 /9)
14 (/11 /10 /9)
9
Claim
31
34
35
40
‘811
20 (/9)
22 (/21 /9)
23 (/9)
8; 19 (/9)
The differences between present claims and the claims of ‘811 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 ‘811 claims teach or suggest each element of the current claims, as listed above, such that the present claims would have been obvious over the ‘811 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 ‘811 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.
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.
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/GUY K TOWNSEND/Primary Examiner, Art Unit 3781
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