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 1-22 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 10679342, 11341641, 12283042, 10692207, 11763448, 10853938, 11568537, and 12315156. Although the claims at issue are not identical, they are not patentably distinct from each other because it would have been obvious to one having ordinary skill in the art to provide a user interface to provide improved usability.
Claims 1-22 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 18/229488 and 19/196044 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because it would have been obvious to one having ordinary skill in the art to provide a user interface to provide improved usability.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 2 and 14 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 2 and 14 recites the limitation "the second end of the enclosure housing" in line 1. There is insufficient antecedent basis for this limitation in the claim. Examiner notes “a second enclosure housing end” is disclosed in the claims from which they depend and suggest amending the claims to align the limitation language to ensure clarity and avoid indefiniteness.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 18 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 13, line 18, recites the limitation of claim 18 verbatim. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
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.
Claim(s) 1-4, 6, 10-15, 17-18, and 21-22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lang et al. (US 2013/0142406 A1) in view of Ito et al. (US 2015/0010758 A1) and Tribble at al. (US 2010/0094653 A1).
Regarding Claims 1, 7, 13, and 18, Lang discloses a system for preparing a pharmaceutical compound, comprising: a base comprising a scale having a platen configured for placement of an object thereon [Lang: FIG. 2], the platen comprising: one or more recessed grooves [Lang: ¶ [0028]: The tray 48 may be self-aligning in some embodiments, such as by fitting into a similarly-sized recess in the surface of the stage 44, by having alignment fittings in the tray 48]; and a transparent and/or translucent material configured to permit passage of light therethrough [Lang: ¶ [0028]: As shown in FIG. 2, a user-removable tray 48, which may be washable, sterilizable, and/or disposable, and which is substantially transparent to such portion of the electromagnetic spectrum]; a supporting arm comprising a first end coupled to a portion of the base and a second end extending to a position above the platen of the scale [Lang: FIG. 2]; an enclosure housing comprising a first enclosure housing end and a second enclosure housing end, the first enclosure housing end attached to and extending from the second end of the supporting arm, and the second end of the enclosure housing extending over the platen of the scale [Lang: FIG. 2] and comprising a portion that is concave along an axis defined by the first enclosure housing end and the second enclosure housing end [Lang: FIG. 2], wherein a field of view of the image capture device includes the platen [Lang: FIG. 2; and ¶ [0028]], wherein the enclosure housing has a curved profile to minimize flow disturbance [Lang: FIG. 2]; an image capture device received within the enclosure housing and operatively connected to the scale [Lang: ¶ [0030]: the light source 62 may include a discretely identifiable illumination source power control module 68 that emits radiation 70, such as infrared light, that passes through a stage 72 and is blocked in part by subject units 74 (e.g., pills). A portion of the unblocked radiation 76 impinges on a camera 78, functioning as an image acquisition component]; an infrared camera received within the enclosure housing [Lang: ¶ [0030]]; and a user interface arranged on the base, the user interface operatively connected to the scale [Lang: ¶ [0028]: an operator interface cluster 34 integrated into a base 36 on a sloped face 38 thereof].
Lang may not explicitly disclose one or more recessed grooves [as shown in the instant application FIG. 4] and the system is positioned within a flow hood.
However, Ito discloses one or more recess grooves [Ito: FIG. 7].
Ito may not explicitly disclose the system is positioned within a flow hood.
However, Tribble may disclose the system is positioned within a flow hood [Tribble: ¶ [0141] The present system combines a macro-level workflow manager that tracks the status of dose production in the pharmacy IV room from the receipt of the dose order, through preparation at a workstation that can include a laminar flow hood].
It would have been obvious to one having ordinary skill in the art before the effective filing date to combine the flow hood of Tribble with the system of Lang in order to provide safer working environment for users, as well as the recessed grooves of Ito in order to provide mitigation for objects rolling around.
Regarding Claims 2 and 14, Lang in view of Ito and Tribble discloses all the limitations of Claims 1 and 13, respectively, and is analyzed as previously discussed with respect to those claims.
Furthermore, Lang in view of Ito and Tribble discloses wherein the second end of the enclosure housing has a curved profile to minimize flow disturbance within a flow hood [Lang: FIG. 2].
Regarding Claims 3 and 15, Lang in view of Ito and Tribble discloses all the limitations of Claims 1 and 13, respectively, and is analyzed as previously discussed with respect to those claims.
Furthermore, Lang in view of Ito and Tribble discloses wherein the supporting arm is arranged such that a center of a field of view of the image capture device coincides with a center of the platen [Lang: FIG. 2].
Regarding Claims 4, Lang in view of Ito and Tribble discloses all the limitations of Claims 1 and 13, respectively, and is analyzed as previously discussed with respect to those claims.
Furthermore, Lang in view of Ito and Tribble discloses further comprising a printer [Lang: ¶ [0051]: printer].
Regarding Claims 6 and 17, Lang in view of Ito and Tribble discloses all the limitations of Claims 1 and 13, respectively, and is analyzed as previously discussed with respect to those claims.
Furthermore, Lang in view of Ito and Tribble discloses further comprising a barcode scanner received within the enclosure housing and operatively connected to the scale [Lang: ¶ [0034]: barcode scanner].
Regarding Claims 10 and 21, Lang in view of Ito and Tribble discloses all the limitations of Claims 1 and 13, respectively, and is analyzed as previously discussed with respect to those claims.
Furthermore, Lang in view of Ito and Tribble discloses wherein the enclosure housing is configured such that, when the system is placed in a laminar flow hood, a consistent pressure is applied to the scale [Tribble: ¶ [0141]; wherein it is understood normal air pressure is considered consistent].
Regarding Claims 11 and 22, Lang in view of Ito and Tribble discloses all the limitations of Claims 1 and 13, respectively, and is analyzed as previously discussed with respect to those claims.
Furthermore, Lang in view of Ito and Tribble discloses wherein the enclosure housing is configured such that, when the system is placed in a laminar flow hood, drag is minimized [Lang: FIG. 2; Tribble: ¶ [0141]; wherein “minimized” appears to be a broad term which may be interpreted as reducing drag in any amount].
Regarding Claim 12, Lang in view of Ito and Tribble discloses all the limitations of Claim 1, and is analyzed as previously discussed with respect to that claim.
Furthermore, Lang in view of Ito and Tribble discloses wherein the second enclosure housing end comprises a portion that is concave along an axis defined by the first enclosure housing end and the second enclosure housing end [Lang: FIG. 2].
Claim(s) 5 and 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lang in view of Ito and Tribble as applied to claims 1 and 13 above, and further in view of Hoare et al. (US 2015/0257574 A1).
Regarding Claims 5 and 16, Lang in view of Ito and Tribble discloses all the limitations of Claims 1 and 13, respectively, and is analyzed as previously discussed with respect to those claims.
Lang in view of Ito and Tribble may not explicitly disclose further comprising a printer integral with the base.
However, Hoare discloses further comprising a printer integral with the base [Hoare: ¶ [0112]: Electronic scales associated with the appliance 250 may have an integral label printer for creating a barcode such as a 2D barcode 255].
It would have been obvious to one having ordinary skill in the art before the effective filing date to combine the integral printer of Hoare with the system of Lang in view of Ito and Tribble in order to provide compact tools with integrated peripheries.
Claim(s) 8 and 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lang in view of Ito and Tribble as applied to claims 1 and 13 above, and further in view of Luchinger (US 2011/0286886 A1).
Regarding Claims 8 and 19, Lang in view of Ito and Tribble discloses all the limitations of Claims 1 and 13, respectively, and is analyzed as previously discussed with respect to those claims.
Lang in view of Ito and Tribble may not explicitly disclose wherein the enclosure housing is configured such that the scale exhibits a gravimetric accuracy of +/-0.05 g.
However, Luchinger discloses wherein the enclosure housing is configured such that the scale exhibits a gravimetric accuracy of +/-0.05 g [Luchinger: ¶ [0011]: The term "high-resolution weighing cells" refers to devices which allow the mass of a weighing object to be measured with an accuracy as fine as a microgram].
It would have been obvious to one having ordinary skill in the art before the effective filing date to combine the high accuracy scale of Luchinger with the system of Lang in view of Ito and Tribble in order to provide improved accuracy.
Claim(s) 9 and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lang in view of Ito and Tribble as applied to claims 1 and 13 above, and further in view of Dartus [US 5938074 A].
Regarding Claims 9 and 20, Lang in view of Ito and Tribble discloses all the limitations of Claims 1 and 13, respectively, and is analyzed as previously discussed with respect to those claims.
Lang in view of Ito and Tribble may not explicitly disclose Scales capable of weighing several grams with a weighing time of less than one second can be found on the market.
However, Dartus discloses Scales capable of weighing several grams with a weighing time of less than one second can be found on the market [Dartus: Col. 2, ll. 50-55: Scales capable of weighing several grams with a weighing time of less than one second can be found on the market].
It would have been obvious to one having ordinary skill in the art before the effective filing date to combine the well-known quick-stabilization scales of Dartus with the system of Lang in view of Ito and Tribble in order to provide improved work pace.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JONATHAN R MESSMORE whose telephone number is (571)272-2773. The examiner can normally be reached Monday-Friday 9-5 EST/EDT.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Chris Kelley can be reached at 571-272-7331. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JONATHAN R MESSMORE/Primary Examiner, Art Unit 2482
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