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 .
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 1-9 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of U.S. Patent No. 10,953,118. Although the claims at issue are not identical, they are not patentably distinct from each other.
The limitations of instant claim 1 are claimed in claim 1 of ‘118 except for “a plurality of carriers…”. These limitations are in claim 9 of ‘118. Thus the limitations of instant claim 1 are all in claim 9 of ‘118. Additionally, as to the dependency of other limitations a person having ordinary skill in the art would have modified the device of claim 1 with the plurality of carriers in claim 9 of ‘118 in order to expose multiple items to the sanitization in an organized holder.
The limitations of instant claim 2 is in claim 1 of ‘118.
The limitations of instant claim 3 are claims in claim 2 of ‘118.
The limitations of instant claim 4 are in claim 3 of ‘118.
The limitations of instant claim 5 are claimed in claim 4 of ‘118.
The limitations of instant claim 6 are claimed in claim 5 of ‘118.
The limitations of claim 7 are claimed in claim 6 of ‘118 except for the dependency including the limitations of claim 2 of ‘118. A person having ordinary skill in the art would have found it obvious to have the controller carry out the control of claim 2 in order to successfully sterilize the items when properly inserted and door closed.
The limitations of claim 8 are claimed in claim 7 of ‘118.
The limitations of instant claim 9 are claimed in claim 8 of ‘118.
Claims 1-9 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of U.S. Patent No. 12,263,263. Although the claims at issue are not identical, they are not patentably distinct from each other.
The limitations of instant claim 1 are claimed in claim 1 of ‘263.
The limitations of instant claim 2 is in claim 2 of ‘263.
The limitations of instant claim 3 are claims in claim 3 of ‘263.
The limitations of instant claim 4 are in claim 1 of ‘263.
The limitations of instant claim 5 are claimed in claim 4 of ‘263.
The limitations of instant claim 6 are claimed in claim 5 of ‘263.
The limitations of claim 7 are claimed in claim 6 of ‘118 except for the dependency including the limitations of claim 2 of ‘263. A person having ordinary skill in the art would have found it obvious to have the controller carry out the control of claim 2 in order to successfully sterilize the items when properly inserted and door closed.
The limitations of claim 8 are claimed in claim 7 of ‘263.
The limitations of instant claim 9 are claimed in claim 8 of ‘263.
Claim Rejections - 35 USC § 103
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.
Claim 1 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shoenfeld (US 2012/0153783) in view of Havens et al. (US 2008/0265179) and Archer et al. (US 4,894,207) and additionally and alternatively in view of Safavi (US 2015/0314341).
With regards to claim 1, Shoenfeld teaches a sterilizing and storage device (abstract) comprising: a housing (outer part forming cabinet 10) defining an interior chamber (space inside the cabinet 10) and having an opening defined in the housing to enable access to the interior chamber (opening covered by single cabinet door 14), the interior chamber divided into a plurality of storage compartments (16a-d formed by shelf/racks 19 which store bins 18) each storage compartment adapted to slidably receive a carrier holding a plurality of laboratory consumables (bins 18 can be slid into the compartments and can hold a plurality of laboratory consumables if desired for such use); a door (14) affixed to the housing and selectively movable between a closed position closing the opening and an open position enabling access to the interior chamber and the storage compartments (the function of the door 14); and a plurality of UV lamps (40) positioned such that each storage tray receives UF light from above (abstract; fig 5-6; para [0051]-[0056]).
Shoenfeld does not teach that a UV lamp is positioned above and below each storage compartment. Havens et al. teaches placing UV lamps (LED arrays with LEDs 205) above and below a chamber (interior space) where an object can be sterilized and stored in order to direct UV light onto all areas of items placed in the chamber (abstract; fig 2 and 4; and para [0032]).
A person having ordinary skill in the art at the time the invention was effectively filed would have found it obvious to have positioned UV lamps above and below the storage compartment so that UV light can be received from above and below on all the surfaces of items placed in the storage compartment thus better sterilizing all the surfaces of the items.
Shoenfeld does not teach at least one fan to draw air into the housing. Havens et al. teaches adding a fan in an outer chamber wall in order to disperse heat from the UV sterilizing chamber (para [0042]; fig 2). A person having ordinary skill in the art would have found it obvious to have added at least one fan in order to ventilate the housing and dissipate heat. The fan would draw/be capable of drawing air into the housing (it ventilates to dissipate heat).
The combination does not teach that the target objects include a plurality of carriers as claimed. Archer et al. teaches that medical implements and other items can be supported in a mesh tray (44) when placing the items into a sterilizer (abstract; fig 2; column 5, lines 46-50; and column 6, lines 7-22). A persona having ordinary skill in the art at the time the invention was effectively filed would have found it obvious to have provided a mesh trays to the sterilization compartments in order to support, organize, and hold multiple medical devices and/or laboratory consumables in the sterilization compartments.
The combination results in a plurality of carriers (mesh trays), each carrier adapted to hold a plurality of laboratory consumables suspended from an upper surface (laboratory consumables can be suspended from the upper lip 44 and into the carrier chamber space below when such consumables are selected for use; for example disposable tubing can be so suspended) of the carrier such that a distal end of each of the plurality of laboratory consumables hangs down into an open interior portion of the carrier (when such a consumable is selected for use this is possible), each carrier having one or more side surface openings (openings in the mesh sides) defined therein and one or more bottom surface openings (openings in the bottom surface mesh) defined therein to enable air flow and UV light to reach the distal ends of the plurality of laboratory consumables (mesh openings are capable of such use).
Additionally and alternatively, Safavi teaches that it is desirable to sterilize pipettes (a type of laboratory consumable) with UV light by suspending them from a rack (16) (abstract; fig 1B; para [0038 and [0064]). A person having ordinary skill in the art at the time the invention was effectively filed would have found it obvious to have added a rack to the mesh carrier taught by Archer et al. above in order to better allow the suspension of laboratory consumables like pipettes as desired.
Claims 2-5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shoenfeld (US 2012/0153783), Havens et al. (U 2008/0265179), Archer et al. (US 4,894,207) and additionally and alternatively in view of Safavi (US 2015/0314341) as applied to claim 1 above and further in view of Cooper et al. (US 2010/0044582).
With regards to claim 2, the combination above does not teach the claimed controller and sensors. Cooper et al. teaches a UV sterilization chamber (cavity 130 of sterilizer 110) with a controller (140), door (cover 114), and target object presence sensor (second sensor 184) (para [0049], [0050]; abstract; and fig 8). Cooper et al. teaches that the controller controls the operation of the device, the target object sensor is in communication with the controller and detects whether the target object is present and then operates the UV light based on that determination, and the door sensor is in communication with the controller and detects whether the door is open or closed and operates the UV light based on that determination (para [0049]-[0050]). A person having ordinary skill in the art at the time the invention was effectively filed would have found it obvious to have added a controller, a plurality of carrier sensors (target object presence sensors), and a door sensor in order to prevent unsafe operation of the UV light when the door is open while only operating UV lights in each storage compartment when the compartment has an object inside in order to prevent wasting power on empty compartment sterilization. A person having ordinary skill would have found it obvious to have used the multiple carrier presence sensors in order to operate each sterilization compartment individually and optimally.
The presence sensors are capable of detecting a carrier when such a carrier is selected for use.
With regards claim 3, the combination teaches wherein the controller activates one or more UV lamps after one or more carriers have been detected to have been inserted into respective storage compartments and the door has been detected to be closed (Cooper et al. teaches door closed and target object presence detected as conditions for UV light activation; para [0049]-[0050]).
With regards to claim 4, the combination results in the controller activates only the UV lamps positioned above and below the storage compartments in which the presence of a carrier has been detected (the UV lamps for the compartment that is occupied and thus needing the sterilization).
With regards to claim 5, the controller activates the UV lamps for a predetermined period of time to achieve the sterilization (Cooper et al. para [0050]).
Claims 6 and 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shoenfeld (US 2012/0153783), Havens et al. (U 2008/0265179), Archer et al. (US 4,894,207), and Cooper et al. (US 2010/0044582) and additionally and alternatively in view of Safavi (US 2015/0314341) as applied to claims 3 and 5 above and further in view of Trapani (US 2012/0282135).
With regards to claim 6, the combination teaches using a door sensor to prevent UV light activation when the door is open but does not teach having the controller reactivate that UV lamps for a remaining duration of the predetermined period of time (a pause a resume) when the door is detected to be closed.
Trapani teaches a UV disinfection device with a controller (11) and a door sensor (30) (abstract and para [0027]). Trapani teaches having the controller shut off the UV light when the door is opened in order to prevent harm to a person entering the UV sterilization area (para [0027]). Trapani also teaches allowing a user to pause and resume a sterilization thus allowing a job to be interrupted and then finished from that point (para [0027], [0045], [0063]). A persona having ordinary skill in the art at the time the invention was effectively filed would have found it obvious to have the controller deactivate the UV light when the door sensor detects the door opened in order to prevent injury to users. A person having ordinary skill in the art at the time the invention was effectively filed would have found it obvious to have the controller reactivate the UV lights to resume the sterilization for the predetermined time after detecting the door is closed again in order to allow the sterilization to pause and resume without requiring the sterilization to restart from the beginning thus saving time.
With regards to claim 7, the combination teaches that the controller uses a sensor to determine if a target object is present or not in the compartment. The combination thus teaches that the controller determines if a target object has been removed. The combination does not teach that the determination is linked to if it is removed prior to a predetermined sterilization and providing a notification to the user. Trapani teaches providing notification to a UV sterilizer user including information about when the status of the sterilization and any interruptions or pauses (fig 3-7; para [0045]-[0046]). A person having ordinary skill in the art at the time the invention was effectively filed would have found it obvious to have provided notifications to a user about the status of the sterilization including whether the sterilization was interrupted and the target object removed in order to keep the user fully informed and provide a record of the sterilization operations.
Claim 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shoenfeld (US 2012/0153783), Havens et al. (U 2008/0265179), Archer et al. (US 4,894,207) and additionally and alternatively in view of Safavi (US 2015/0314341) as applied to claim 1 above and further in view of Bonin (US 2003/0034459).
With regards to claim 8, the combination does not teach an air intake, an air outlet, and a fan to draw air through the housing. Bonin teaches a UV sterilization cabinet and teaches having an air inlet passage (20) on a bottom side and an air outlet passage (60) on an opposing top side (abstract; para [0033] and fig 1). This allows for sanitizing and heating air drawn through the cabinet (para [0022]). This also results in cooling the chamber as the air flow carries off heat from the UV lights. Elsewhere Bonin teaches that fans are known air flow generators (para [0011]). A person having ordinary skill in the art at the time the invention was effectively filed would have found it obvious to have placed an air intake and an air outflow in opposing walls of the housing along with a fan in order to vent the housing, cool the sterilization chamber and lamps, and sterilize air.
The combination results in drawing air into the housing through the air intake, through the interior chamber, and out the housing through the air outflow.
Claim 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shoenfeld (US 2012/0153783), Havens et al. (U 2008/0265179), Archer et al. (US 4,894,207) and additionally and alternatively in view of Safavi (US 2015/0314341) as applied to claim 1 above as evidenced by Bonin (US 2003/0034459).
With regards to claim 9, UV lamps and LEDs give off heat (as evidenced by Bonin that UV lights give off heat para [0022]). Thus one or more of the LEDs/lamps can be considered a heater separate from the rest of the UV lamps/LEDs. This heater provides heat to the interior of the chamber.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DONALD R SPAMER whose telephone number is (571)272-3197. The examiner can normally be reached Monday to Friday from 9-5.
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, Michael Marcheschi can be reached at (571)272-1374. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/DONALD R SPAMER/Primary Examiner, Art Unit 1799
Prosecution Insights