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 .
Claim Rejections - 35 USC § 102
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 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.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 2,4-5,7,11-12,18,21 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sanchez et al. US 2017/0266031, provided in the IDS and hereafter Sanchez.
Regarding claim 2, Sanchez discloses
A fluid collection assembly, comprising: a fluid impermeable barrier at least defining a chamber, at least one opening, and a fluid outlet (Abstract, Fig. 46,47; impermeable casing (2604), reservoir (2610), opening (2604A), outlet (2620)), and at least one porous material disposed in the chamber (permeable support (2640), where the permeable support may have sufficient porosity per para. 0166.). Sanchez further discloses the at least one porous material extending across the at least one opening (see figure 46), the at least one porous material includes a protrusion extending outwardly from the at least one opening before the at least one porous material is exposed to one or more bodily fluids or after the at least one porous material is exposed to the one or more bodily fluids and a portion of the at least one porous material expands (see para. 0169), the protrusion exhibiting a shape that does not correspond to a shape of the fluid impermeable barrier, the protrusion forming an apex (figure 46, para. 0169). The examiner notes that a slight protrusion through the opening would form a shape that is not cylindrical as the opening allows only a portion of the support to extend and protrude through. Therefore it is interpreted that the protrusion would be a different shape than the barrier and form an apex.
Regarding claim 4, Sanchez discloses
The fluid collection assembly of claim 2, wherein the at least one porous material includes the protrusion after expanding when exposed to the one or more bodily fluids (para. 0169).
Regarding claim 5, Sanchez discloses
The fluid collection assembly of claim 4, wherein the at least one porous material includes at least one expandable material (para. 0167). Per paragraph 0167, the support has a high absorption rate as a means to absorbent and transport fluid and forms a protrusion when in contact with fluid (para. 0169) and is thus interpreted as expandable.
Regarding claim 7, Sanchez discloses
The fluid collection assembly of claim 5, wherein the at least one expandable material includes at least one of a hydrogel, a sponge, or at least one super absorbent polymer (per para. 0169, the structure acts as a sponge and is thus interpreted as including a sponge, or a spongelike material.)
Regarding claim 11, Sanchez discloses
The fluid collection assembly of claim 4, wherein the at least one porous material and the at least one fluid impermeable barrier exhibit a generally cylindrical shape before the at least one porous material is exposed to the one or more bodily fluids (see figure 46-47)
Regarding claim 12, Sanchez discloses
The fluid collection assembly of claim 2, wherein the protrusion includes two edges extending from the apex to portions of the fluid impermeable barrier defining the at least one opening. The examiner notes that as the opening of the barrier is smaller than the barrier and the permeable member forming the protrusion, the protrusion (formed by expansion via fluid contact) would be a “taper” in the permeable member as the member must taper and thus come to a point in order to protrude through the smaller opening. AS such the tapered portion is interpreted as the two edges coming to the apex point.
Regarding claim 18, Sanchez discloses
A method of forming a fluid collection assembly, the method comprising: disposing at least one porous (figure 46-47 permeable support (2640), where the permeable support may have sufficient porosity per para. 0166) material in a chamber (2610) defined by a fluid impermeable barrier (2604); wherein the fluid impermeable barrier at least defines the chamber (figure 46, para. 0165), at least one opening (2604A), and a fluid outlet (2620); wherein, when disposed in the chamber, the at least one porous material extends across the at least one opening (figure 46), the at least one porous material including a protrusion extending outwardly from the at least one opening before the at least one porous material is exposed to one or more bodily fluids or after the at least one porous material is exposed to the one or more bodily fluids and a portion of the at least one porous material expands (para. 0169, where the support expands to form a protrusion when urine is being evacuated from the user), the protrusion exhibiting a shape that does not correspond to a shape of the fluid impermeable barrier, the protrusion forming an apex (figure 46, para. 0169). The examiner notes that a slight protrusion through the opening would form a shape that is not cylindrical as the opening allows only a portion of the support to extend and protrude through. Therefore it is interpreted that the protrusion would be a different shape than the barrier and form an apex.
Regarding claim 21, Sanchez discloses
A method of using a fluid collection assembly, the method comprising: positioning at least one opening of the fluid collection assembly adjacent to a urethral opening of a patient (para. 0169), the fluid collection assembly including: a fluid impermeable barrier (figure 46,47, (2604)) defining a chamber (2610), at least one opening (2604A), and a fluid outlet (2620); and at least one porous material disposed in the chamber (2640), the at least one porous material extending across the at least one opening (figure 46), the at least one porous material includes a protrusion extending outwardly from the at least one opening before the at least one porous material is exposed to one or more bodily fluids or after the at least one porous material is exposed to the one or more bodily fluids and a portion of the at least one porous material expands(para. 0169, where the support expands to form a protrusion when urine is being evacuated from the user), the protrusion exhibiting a shape that does not correspond to a shape of the fluid impermeable barrier, the protrusion forming an apex (figure 46, para. 0169). The examiner notes that a slight protrusion through the opening would form a shape that is not cylindrical as the opening allows only a portion of the support to extend and protrude through. Therefore it is interpreted that the protrusion would be a different shape than the barrier and form an apex. Sanchez further discloses receiving one or more bodily fluids from the urethral opening into the chamber (para. 0169).
Claim Rejections - 35 USC § 103
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.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 6,8-10, 13-17,20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sanchez.
Regarding claim 6, Sanchez discloses
The fluid collection assembly of claim 5, but in the embodiment above fails to teach wherein the at least one porous material includes a fluid permeable outer layer and a fluid permeable inner layer, the at least one expandable material is positioned between at least a portion of the fluid permeable outer layer and the fluid permeable inner layer.
Sanchez, however, does teach that the membrane and support may be different components in alternate embodiments and still function to channel fluid through the device (para. 0143, figure 34). Therefore, as Sanchez teaches that the permeable member may be two separate components instead of a unitary combination (As per the rejection of claim 1), it would have been obvious to one having ordinary skill in the art prior to the effective filing date of the claimed invention to use a multiple piece construction for the permeable member. Doing so would merely require the simple substitution of one known element for another to obtain predictable results, that being the control of urine flow through the device.
Upon combination however, it is not taught that there is two permeable layers. Rather there is a permeable membrane and a permeable support. However, per MPEP section 2144.04 VI B In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960) the court held that mere duplication of parts has no patentable significance unless a new and unexpected result is produced. As such, duplicating the permeable membrane to have a second membrane would still allow the device of the prior art to function in its intended manner (where the permeable members direct fluid into the reservoir), and thus it would have been obvious to one having ordinary skill in the art to provide a second permeable membrane below the permeable support as a matter of obviousness duplication of parts.
Regarding claim 8, Sanchez discloses
The fluid collection assembly of claim 5, wherein at least a portion of the at least one porous material and at least a portion of the fluid impermeable barrier exhibits a generally triangular cross-sectional shape or a generally teardrop-like cross-sectional shape after the at least one porous material is exposed to the one or more bodily fluids. The examiner notes that the impermeable body and, prior to wetting, the permeable body exhibit a cylindrical shape as seen in the figures. As the permeable body extends through the opening, forming a protrusion, upon wetting, it is interpreted that through this protrusion a teardrop shape is exhibited, as the protrusion portion is narrowed going through the open (as the opening is narrower than the body) while the internal portion remains cylindrical. However, should the applicant disagree with the interpretation, the examiner notes per paragraph 0166, support is sufficiently pliable and/or flexible” to allow the device to “conform to differently shaped and/or sized users”. Further per paragraph 0106, “the support can have any suitable shape”, and this would conform the membrane and therefore the protrusion to the same shape. Therefore it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to provide the device of Sanchez with a generally teardrop cross section, as Sanchez discloses support for any suitable shape of the device that aids in creating more comfort and securement for the patient (Paragraph 0106), and as upheld In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966), a change in shape would have been found obvious to one of ordinary skill in the art absent persuasive evidence that the particular configuration of the claimed shape was significant.
Regarding claim 9, Sanchez discloses
The fluid collection assembly of claim 5, but in the embodiment above fails to teach wherein the at least one porous material includes an inner layer and an outer layer surrounding the inner layer, the inner layer including the at least one expandable material, the outer layer include at least one fluid permeable material.
Sanchez, however, discloses an embodiment including the permeable membrane and permeable support in which the membrane surrounds the support (see figure 50B). Therefore, as Sanchez teaches a construction in which the membrane (outer layer) surrounds the support (inner layer), where both layers are permeable and expandable, it would have been obvious to one having ordinary skill in the art prior to the effective filing date of the claimed invention to use the construction with the surrounded support in place of the unitary construction as matter simple substitution of one known element for another to obtain predictable results, that being the control of urine flow through the device, and thus a prima facie case of obviousness exists.
Regarding claim 10, Sanchez discloses
The fluid collection assembly of claim 5, but in the embodiment above fails to teach wherein the at least one porous material includes at least one expandable layer and at least one additional fluid permeable layer, the at least one expandable layer including the at least one expandable material, the at least one additional permeable layer negligibly expands when exposed to the one or more bodily fluids compared to the at least one expandable layer.
Sanchez, however, does teach that the membrane and support may be different components in alternate embodiments and still function to channel fluid through the device (para. 0143, figure 34). Therefore, as Sanchez teaches that the permeable member may be two separate components instead of a unitary combination (As per the rejection of claim 1), it would have been obvious to one having ordinary skill in the art prior to the effective filing date of the claimed invention to use a multiple piece construction for the permeable member. Doing so would merely require the simple substitution of one known element for another to obtain predictable results, that being the control of urine flow through the device.
The examiner notes that per MPEP Section 2114 II "[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987) (The preamble of claim 1 recited that the apparatus was "for mixing flowing developer material" and the body of the claim recited "means for mixing ..., said mixing means being stationary and completely submerged in the developer material." The claim was rejected over a reference which taught all the structural limitations of the claim for the intended use of mixing flowing developer. However, the mixer was only partially submerged in the developer material. The Board held that the amount of submersion is immaterial to the structure of the mixer and thus the claim was properly rejected.). Therefore, as the prior art discloses two expandable and permeable members within an impermeable casing, configured to expand and wick fluid, and the negligible expansion of one member to another is interpreted to be functional language, the prior art structure would reasonably be able to perform the same function and thus reads to the claimed limitation
Regarding claim 13, Sanchez discloses
The fluid collection assembly of claim 12, wherein the two edges are generally straight. The examiner notes that as detailed under the rejection of claim 12, the protrusion comes to an apex and thus interpreted that the edges are generally straight. Should applicant disagree, the examiner notes that per paragraph 0166, support is sufficiently pliable and/or flexible” to allow the device to “conform to differently shaped and/or sized users”. Further per paragraph 0106, “the support can have any suitable shape”, and this would conform the membrane and therefore the protrusion to the same shape. Therefore it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to provide the device of Sanchez with a shape that forms straight edges to the protrusion, as Sanchez discloses support for any suitable shape of the device that aids in creating more comfort and securement for the patient (Paragraph 0106), and as upheld In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966), a change in shape would have been found obvious to one of ordinary skill in the art absent persuasive evidence that the particular configuration of the claimed shape was significant.
Regarding claim 14, Sanchez discloses
The fluid collection assembly of claim 12 but fails to specifically disclose wherein the two edges are curved, wherein an average radius of curvature of the two edges is greater than an average radius of curvature of the apex. per paragraph 0166, support is sufficiently pliable and/or flexible” to allow the device to “conform to differently shaped and/or sized users”. Further per paragraph 0106, “the support can have any suitable shape”, and this would conform the membrane and therefore the protrusion to the same shape. Therefore it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to provide the device of Sanchez shape that provides curved edges to the protrusion, as Sanchez discloses support for any suitable shape of the device that aids in creating more comfort and securement for the patient (Paragraph 0106), and as upheld In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966), a change in shape would have been found obvious to one of ordinary skill in the art absent persuasive evidence that the particular configuration of the claimed shape was significant.
Regarding claim 15, Sanchez discloses
The fluid collection assembly of claim 2 but fails to specifically disclose wherein at least a portion of the at least one porous material exhibits a generally triangular cross-sectional shape including the three apexes and three edges each extending between adjacent ones of the three apexes, the three apexes including the apex of the protrusion. Per paragraph 0166, support is sufficiently pliable and/or flexible” to allow the device to “conform to differently shaped and/or sized users”. Further per paragraph 0106, “the support can have any suitable shape”, and this would conform the membrane and therefore the protrusion to the same shape. Therefore it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to provide the device of Sanchez with a generally triangular cross section, as Sanchez discloses support for any suitable shape of the device that aids in creating more comfort and securement for the patient (Paragraph 0106), and as upheld In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966), a change in shape would have been found obvious to one of ordinary skill in the art absent persuasive evidence that the particular configuration of the claimed shape was significant.
Regarding claim 16, Sanchez discloses
The fluid collection assembly of claim 15, wherein at least a portion of the fluid impermeable barrier abutting the at least one porous material exhibits a generally triangular cross-sectional shape corresponding to the generally triangular shape of the at least one porous material. Per paragraph 0166, support is sufficiently pliable and/or flexible” to allow the device to “conform to differently shaped and/or sized users”. Further per paragraph 0106, “the support can have any suitable shape”, and this would conform the membrane and therefore the protrusion to the same shape. Therefore it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to provide the device of Sanchez with a generally triangular cross section, as Sanchez discloses support for any suitable shape of the device that aids in creating more comfort and securement for the patient (Paragraph 0106), and as upheld In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966), a change in shape would have been found obvious to one of ordinary skill in the art absent persuasive evidence that the particular configuration of the claimed shape was significant.
Regarding claim 17, Sanchez discloses
The fluid collection assembly of claim 2, wherein at least a portion of the at least one porous material exhibits a generally teardrop-like cross-sectional shape. The examiner notes that the impermeable body and, prior to wetting, the permeable body exhibit a cylindrical shape as seen in the figures. As the permeable body extends through the opening, forming a protrusion, upon wetting, it is interpreted that through this protrusion a teardrop shape is exhibited, as the protrusion portion is narrowed going through the open (as the opening is narrower than the body) while the internal portion remains cylindrical. However, should the applicant disagree with the interpretation, the examiner notes per paragraph 0166, support is sufficiently pliable and/or flexible” to allow the device to “conform to differently shaped and/or sized users”. Further per paragraph 0106, “the support can have any suitable shape”, and this would conform the membrane and therefore the protrusion to the same shape. Therefore it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to provide the device of Sanchez with a generally teardrop cross section, as Sanchez discloses support for any suitable shape of the device that aids in creating more comfort and securement for the patient (Paragraph 0106), and as upheld In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966), a change in shape would have been found obvious to one of ordinary skill in the art absent persuasive evidence that the particular configuration of the claimed shape was significant.
Regarding claim 20, Sanchez discloses
The method of claim 18, but fails to specifically disclose wherein, prior to disposing the at least one porous material in the chamber, the at least one porous material exhibits a generally triangular cross- sectional shape including the three apexes and three edges each extending between adjacent ones of the three apexes, the three apexes including the apex of the protrusion. Per paragraph 0166, support is sufficiently pliable and/or flexible” to allow the device to “conform to differently shaped and/or sized users”. Further per paragraph 0106, “the support can have any suitable shape”, and this would conform the membrane and therefore the protrusion to the same shape. Therefore it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to provide the device of Sanchez with a generally triangular cross section, as Sanchez discloses support for any suitable shape of the device that aids in creating more comfort and securement for the patient (Paragraph 0106), and as upheld In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966), a change in shape would have been found obvious to one of ordinary skill in the art absent persuasive evidence that the particular configuration of the claimed shape was significant.
Claim(s) 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sanchez in view of Gordon US 2616426.
Regarding claim 19, Sanchez discloses
The method of claim 18 but fails to specifically disclose pinching the porous material to form the protrusion. The examiner notes that per paragraph 0100, 0134, the permeable membrane may be pulled over or wrapped around the permeable support before being inserted through the elongated opening of the impermeable casing.
Gordon teaches a fluid collection device configured to be used by females and is thus considered analogous to the claimed invention. Gordon further teaches that insertion of the device into the labial folds for retaining the device while in use requires that the user first laterally compress the device by drawing together opposite sides of the periphery between the fingers and thumb of one hand (Column 2, lines 28-35). The examiner notes that the lateral compression of opposite sides using a finger and thumb is interpreted as pinching. Therefore in order to position the device of Sanchez within the labial folds of the user using one hand, it would have been obvious to one of ordinary skill in the art to pinch the permeable membrane of Sanchez to aid in said positioning, as taught by Gordon.
Allowable Subject Matter
Claim 3 is objected to as being dependent upon a rejected base claim but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The closest prior art of record is Sanchez et al., as detailed above. It is interpreted that Sanchez
comprises the claimed protrusion as the absorbent layer would expand through the opening of the
impermeable casing thus forming a protrusion through said opening. However, as this protrusion is
formed by the expansion of the absorbent when in contact with fluid, it does not read to the
claim limitation where the protrusion is formed prior to being exposed to bodily fluids. As claim 2 requires before or after contacting fluid, Sanchez reads to claim 1. However claim 3 clarifies that the protrusion exists before contacting fluid. The examiner notes that other prior arts were found that disclose protrusions in urine collection devices, where said protrusions exist prior to contact with fluid (See Ellis US 3512185, Keane US 3349768, Fallows et al. US 20230210685, Whittome et al. US 20230105001), however each of these prior art references alone, or in combination with Sanchez would fail to read to the claimed limitation. Regarding Fallows and Whitmore, the two arts do not qualify as prior art as the filing dates are after the filing date of the claimed invention. Regarding Ellis, while Ellis does disclose a protrusion prior to fluid contact (see figures 1-4), said protrusion is part of the outer casing (fluid impermeable barrier) of the device (fig. 3), and not part of a porous material located within the chamber of the casing. Ellis does not disclose a porous material within the casing at all. Therefore it would not have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to form a protrusion (as seen in Ellis) on the inner porous layer of Sanchez, as the outer impermeable layer of Ellis functions differently from the porous inner layer of Sanchez. Similarly, although Keane discloses a protrusion prior to fluid contact, where said protrusion is porous (see figures 1-3), said protrusion is part of the outer casing (fluid impermeable barrier) of the device. Keane does not teach that a porous material within the fluid impermeable barrier of the device extends through an opening forming a protrusion, as the protrusion is part of the impermeable barrier itself. Therefore, like Ellis, it would not have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to form a protrusion (as seen in Keane) on the inner porous layer of Sanchez, as the outer impermeable layer of Keane functions differently from the porous inner layer of Sanchez.
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.
Claims 2-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-21 of U.S. Patent No. 12257174, hereafter '174. Although the claims at issue are not identical, they are not patentably distinct from each other because:
Instant Claims
Corresponding ‘174 Claims
2
1
3
1
4
1
5
1
6
3,6
7
7,8,9
8
5
9
3,6,13
10
3,6
11
16
12
1,15
13
14
14
15
15
14
16
14
17
15
18
18
19
20
20
20
21
21
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Matthew Wrubleski whose telephone number is (571)272-1150. The examiner can normally be reached M-F 8:00-4:00 EST.
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/MATTHEW WRUBLESKI/Examiner, Art Unit 3781
/REBECCA E EISENBERG/Supervisory Patent Examiner, Art Unit 3781
