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 .
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.
Claims 1, 4, 5, 6, 8, 9, 10 and 13 are finally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 4 or 11 of U.S. Patent No. 12,247,697. Although the claims at issue are not identical, they are not patentably distinct from each other because the new recitation of “the fluid reservoir inner body is configured to expand beyond the open bottom end of the fluid reservoir outer body” is already encompassed by the claimed recitation of claims 4 or 11 of “the fluid reservoir inner body is configured to expand to a length that is twice a fluid reservoir outer body length” as the fluid reservoir inner body is further limited by disclosure at column 6, lines 38-57 of the previous patent.
As to claim 4, the previously patented claims 4 and 11 recite “the fluid reservoir inner body is configured to expand…” which by the original disclosure includes unfolding of the fluid reservoir inner body”.
As to claim 5, the previously patented claims 1 and 9 from which claims 4 and 11 depend recite “the rigid closed end is configured to move upwards longitudinally towards the attachment when the fluid is dispensed from the fluid reservoir inner body” which provides for the now claimed “the rigid closed end is configured to push the fluid to dispense the fluid from the fluid reservoir inner body”.
As to claim 6, the previously patented claims 1 and 9 from which claims 4 and 11 depend recite essentially the same limitations in claim 1, lines 21-23 and claim 9, lines 19-21.
As to claim 8, the previously patented claims 1 and 9 from which claims 4 and 11 depend recite essentially the same limitations in claim 1, lines 12-13 and claim 9, lines 12-13.
As to claim 9, the previously patented claims 1 and 9 from which claims 4 and 11 depend recite essentially the same limitations in claim 1, lines 3-5 and claim 9, lines 3-5.
As to claim 10, the previously patented claims 1 and 9 from which claims 4 and 11 depend define essentially the same limitations in claim 1, lines 21-23 and claim 9, lines 19-21.
As to claim 13, the previously patented claims 4 and 11 recite essentially the same limitations.
Claims 2 and 7 are finally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 4 and 6, or 11 and 13 of U.S. Patent No. 12,247,697. Although the claims at issue are not identical, they are not patentably distinct from each other because the recitation of “the flexible sidewall is configured to fold onto itself when the fluid is dispensed from the fluid reservoir inner body” is recited in the previously patented claims 6 and 13, which were allowed with patented claims 4 and 11.
Claim 11 is finally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 2 and 4, or 11 and 14 of U.S. Patent No. 12,247,697. Although the claims at issue are not identical, they are not patentably distinct from each other because the recitation of “the fluid reservoir outer body is a rigid body” is recited in the previously patented claims 4 and 14, which were allowed with patented claims 4 and 11.
Claim 12 is finally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 3 or 13 of U.S. Patent No. 12,247,697. Although the claims at issue are not identical, they are not patentably distinct from each other because the recitation of “the fluid reservoir outer body does not expand or collapse when the fluid reservoir expands or collapses” is recited in the previously patented claims 3 and 13, which were allowed with patented claims 4 and 11.
Claim 14 is finally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 4 and 5, or 11 and 12 of U.S. Patent No. 12,247,697. Although the claims at issue are not identical, they are not patentably distinct from each other because the recitation of “the fluid reservoir inner body is configured to expand to a length that is equivalent to a fluid reservoir outer body length” is recited in the previously patented claims 5 and 12, which were allowed with patented claims 4 and 11.
Claim 15 is finally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 4 and 7 of U.S. Patent No. 12,247,697. Although the claims at issue are not identical, they are not patentably distinct from each other because the recitation of “the fluid reservoir inner body has circular cross-section, and wherein a rigid closed end diameter is equivalent to a fluid reservoir inner body diameter” is recited in the previously patented claim 7, which was allowed with patented claim 4.
Claims 16 and 17 are finally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 4 and 8 of U.S. Patent No. 12,247,697. Although the claims at issue are not identical, they are not patentably distinct from each other because the recitation of “the fluid reservoir outer body and the fluid reservoir inner body are made of plastic” is recited in the previously patented claim 8, which was allowed with patented claim 4. The above recitation encompasses the disclosed fluid reservoir outer body and the fluid reservoir inner body being plastic and transparent (see column 9, lines 51-61).
Claims 18-20 are finally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 4 or 11 of U.S. Patent No. 12,247,697. Although the claims at issue are not identical, they are not patentably distinct from each other because the new recitation of “the fluid reservoir outer body comprises an open bottom end” and “the fluid reservoir inner body is configured to expand beyond the open bottom end of the fluid reservoir outer body” is already encompassed by the claimed recitation of claims 4 or 11 of “the fluid reservoir inner body is configured to expand to a length that is twice a fluid reservoir outer body length” as the fluid reservoir inner body is further limited by disclosure at column 6, lines 38-57 of the previous patent.
Applicant's arguments filed June 18, 2026 have been fully considered and the cancellation of claim 3 obviates all but the double patenting rejection. The presently filed Terminal Disclaimer is considered incomplete by OPLC and is not accepted. Contact Trina Steptoe of OPLC at 571-272-2577 for precise information relative to the Terminal Disclaimer.
Submission of a proper Terminal Disclaimer will overcome all remaining issues and allow the case to be passed to issue.
THIS ACTION IS MADE FINAL. 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 BRYON P GEHMAN whose telephone number is (571) 272-4555. The examiner can normally be reached on Tuesday through Thursday from 7:30 am to 5:00 pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Orlando Aviles-Bosques, can be reached on (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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/BRYON P GEHMAN/Primary Examiner, Art Unit 3736
Bryon P. Gehman
Primary Examiner
Art Unit 3736
BPG
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