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 .
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 claims 1-79 of U.S. Patent No. 12,245,840. Although the claims at issue are not identical, they are not patentably distinct from each other because both the present application and the patent are directed to a portable, handheld multi-modal imaging system comprising one or more excitation light sources and a fluorescence image sensor and being configured to capture fluorescence signals having a wavelength corresponding to one or more of bacterial fluorescence, bacterial autofluorescence, tissue fluorescence, and tissue autofluorescence, as well as a light source and image sensor to capture optical signals and a processor configured to receive the optical signals from the detected fluorescence and optical signals and to output a representation of the target comprises target measurements and detected areas of fluorescence. The present application discloses one or more light sources while the patent discloses a white light source; however, the addition of one or more light sources is an obvious design choice which is a mere duplication of parts. The patent explicitly discloses white light; however, the patent anticipates the limitations of the present application. The present application uses the terms “a bacterial detection module” and “a target measurement module”; however, these modules include the same structural components as the patent. The present application explicitly discloses the captured optical signals emitted by the target are related to a width of the target, a length of the target, and a depth of the target; however, these features are an obvious variation as these are features which would be present in a 3D imaged target as set forth in the patent (see claims 34 and 35).
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 (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 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.
Claim(s) 1 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Dacosta (2017/0236281).
Regarding claim 1, Dacosta discloses a portable, handheld multi-modal imaging system (portable, handheld device for imaging – [0007]), comprising:
a bacterial detection module, the bacterial detection module comprising one or more excitation light sources configured to emit excitation light during fluorescence imaging of a target (one or more excitation/illumination light sources – [0061]) and a fluorescence image sensor (a detector device – [0061]) (fluorescence-based imaging and monitoring – [0060]), the bacterial detection module configured to capture fluorescence signals emitted by the target in response to illumination of the target with the excitation light and having a wavelength corresponding to one or more bacterial fluorescence, bacterial autofluorescence, tissue fluorescence, and tissue autofluorescence (bacterial autofluorescence - abstract; tissue autofluorescence – [0048] tissue fluorescence – [0060]; bacterial fluorescent – [0070]);
a target measurement module, the target measurement module comprising one or more light sources and one or more image sensors (captures both white light (WL) and autofluorescence (AF) – [0051]; device may utilize a combination of white light, tissue fluorescence and reflectance imaging – [0060]; one or more illumination light sources – [0061]), the target measurement module being configured to capture optical signals emitted by the target in response to illumination of the target with the one or more light sources and related to a width of the target, a length of the target, and a depth of the target (user-selected parameters shown on the map may be correlated with one or more wound parameters, such as size, depth, and area of the wound – [0057]); and
a processor configured to receive the optical signals from the bacterial detection module and the target measurement module and to output a representation of the target comprising target measurements and detected areas of fluorescence (a display for displaying the output data regarding the illuminated portion of the wound and the area around the wound output by the processor – [0006]; display composite images – [0052]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROCHELLE DEANNA TURCHEN whose telephone number is (571)270-7104. The examiner can normally be reached Mon - Fri 6:30-2:30.
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/ROCHELLE D TURCHEN/Primary Examiner, Art Unit 3797