DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Claim Rejections - 35 USC § 103
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negated by the manner in which the invention was made.
This application currently names joint inventors. In considering patentability of the claims under pre-AIA 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of pre-AIA 35 U.S.C. 103(c) and potential pre-AIA 35 U.S.C. 102(e), (f) or (g) prior art under pre-AIA 35 U.S.C. 103(a).
Claim 1 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over U.S. Patent No. 5,417,673 to Gordon in view of U.S. Patent Application Publication No. 2010/0249723 to Fangrow, Jr. (hereinafter “Fangrow”).
For claim 1, Gordon discloses a multi-port branched medical connector adapted for flushing a connector on one port of the branched medical connector (Abstract), the branched medical connector comprising:
a body (72) (Fig. 3) (col. 4, lines 49-55) comprising a first port (76) (Fig. 3) (col. 4, lines 49-55) and a second port (78) (Fig. 3) (col. 4, lines 49-55);
a fluid diverter (110) (Fig. 3) (col. 5, lines 19-23) comprising a first end (first end of 110) and a second end (second end of 110), wherein the first end of the fluid diverter is positioned closer to the first port than the second end of the fluid diverter (as can be seen in Fig. 3); and
the connector (Examiner’s Note: the connector made up of the element(s) it comprises), wherein the connector is positioned proximate the first port and at least partially surrounds the fluid diverter (see Fig. 3), the connector comprising:
a housing (82) (Fig. 3) (col. 4, lines 49-55) comprising a first end (first end of 82) and a second end opposite the first end (second end of 82).
Gordon does not expressly disclose a seal member positioned at least partially within a housing and configured to impede flow through the first end of the housing when in a first position; and an internal projection member positioned at least partially within the seal member, the internal projection member comprising: a first end and a second end opposite the first end, the first end of the internal projection member positioned closer to the first port than the second end of the internal projection member; a wall defining an internal cavity that at least partially encompasses a fluid diverter; a first opening at the first end of the internal projection member; and a second opening, the second opening extending through the wall of the internal projection member, wherein a first axis extending through a center of the first opening is non-parallel to a second axis extending through a center of the second opening; wherein the fluid diverter extends at least partially into the internal cavity defined by the wall of the internal projection member to effect flushing of the second end of the internal projection member.
However, Fangrow teaches a seal member (26) (Fig. 3) (para [0127]) positioned at least partially within a housing (22) (as can be seen in Figs. 13 and 14) and configured to (Examiner’s Note: functional language, i.e., capable of) impede flow through the first end of the housing when in a first position (as can be seen in Fig. 3, 26 impeding any fluid that would flow through 22) (also see para [0141]); and an internal projection member (28) (Fig. 3) (para [0127]) positioned at least partially within the seal member (as can be seen in Figs. 13 and 14), the internal projection member comprising: a first end (first end of 28) and a second end opposite the first end (second end of 28); the first end of the internal projection member positioned closer to a first port (i.e. 144) (Figs. 13-14) (para [0183]) than the second end of the internal projection member (as can be seen in Figs. 13-14); a wall defining an internal cavity that at least partially encompasses a fluid diverter (65’’’) (Fig. 26B) (para [0236]); a first opening (66) (Fig. 9) (para [0144]) at the first end of the internal projection member (as can be seen in Fig. 9); and a second opening (68) (Fig. 9) (para [0144]), the second opening extending through the wall of the internal projection member (as can be seen in Fig. 9), wherein a first axis extending through a center of the first opening is non-parallel to a second axis extending through a center of the second opening (as can be seen in Fig. 9); wherein the fluid diverter extends at least partially into the internal cavity defined by the wall of the internal projection member to effect flushing (Examiner’s Note: functional language, i.e., capable of) of the second end of the internal projection member (as can be seen in Fig. 9).
It would have been obvious to a skilled artisan to modify Gordon to include a seal member positioned at least partially within a housing and configured to impede flow through the first end of the housing when in a first position; and an internal projection member positioned at least partially within the seal member, the internal projection member comprising: a first end and a second end opposite the first end, the first end of the internal projection member positioned closer to the first port than the second end of the internal projection member; a wall defining an internal cavity that at least partially encompasses a fluid diverter; a first opening at the first end of the internal projection member; and a second opening, the second opening extending through the wall of the internal projection member, wherein a first axis extending through a center of the first opening is non-parallel to a second axis extending through a center of the second opening; wherein the fluid diverter extends at least partially into the internal cavity defined by the wall of the internal projection member to effect flushing of the second end of the internal projection member, in view of the teachings of Fangrow, for the obvious advantage of preventing backflow (see para [0007] and [0115] of Fangrow).
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 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11,786,716 (hereinafter “the ‘716 application”). Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 of the instant application is broader than claim 1 the ‘716 application and any differences (including functional language differences) are anticipated by claim 1 of the ‘716 application.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIEL LEE CERIONI whose telephone number is (313) 446-4818. The examiner can normally be reached M - F 8:00 AM - 5:00 PM PT.
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/DANIEL L CERIONI/Primary Examiner, Art Unit 3791
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