DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
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 1-6 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 4 of U.S. Patent No. 12,285,177. Although the claims at issue are not identical, they are not patentably distinct from each other because of the overlapping subject matter as discussed below.
Claims of Application 19171514
Rejected over claims of U.S. Patent No. 12,285,177
Overlapping Subject Matter
1, 2
1, 4
Applying pressure to selected neck vein prior to and during a blast or concussive event, the pressure increase fluid pressure of the cochlear fluid, the absorption of energy of the blast event by auditory hair cells is reduced or not transmitted to auditory hair cells.
3, 4, 5
1, 4
Congesting a cochlear vein thereby increasing a volume and pressure of the cochlear fluid.
6
1, 4
The pressure is sufficient to congest a cochlear vein of the human subject thereby reducing a compressibility of cochlear fluid within the inner ear of the human subject so that energy of the concussive event is not transmitted to auditory hair cells within the inner ear of the human subject through vibration of the cochlear fluid.
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 3 and 5 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.
Claim 3 discloses “increasing a pressure of the cochlear fluid” on line 2. This language is unclear as to whether this is the same or different increasing pressure of the cochlear fluid as also disclosed in line 6, claim 1.
Claim 5 discloses “increasing a pressure of the cochlear fluid” on line 2. This language is unclear as to whether this is the same or different increasing pressure of the cochlear fluid as also disclosed in line 6, claim 1.
Allowable Subject Matter
Claims 1-6 are rejected on the ground of nonstatutory double patenting as being unpatentable over the claims 1 and 4 of U.S. Patent No. 12,285,177 as discussed above in more detail, but would be allowable if a proper terminal disclaimer is filed and the claims are rewritten to include all of the limitations of the base claim and any intervening claims. Claims 7-13 are 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 following is a statement of reasons for the indication of allowable subject matter:
Coakwell US 2676586 discloses a collar for applying pressure on the lateral side of the neck to the veins and preventing blackouts (column 2, lines 1-14). However, Coakwell discloses non-analogous art, as Coakwell discloses g-forces, not vibrational energy affected by a concussive or blast events. If the pilot (either manually or automatically) applies pressure, it would be prior to the presence of g-forces, but it would not be prior to vibrational energy, as the vibrational energy would be present at all times while the pilot is flying the plane. Absorption of energy of the blast event or concussive event implies the vibrational energy being absorbed. Additionally, if applied manually, it would not have been obvious to one having ordinary skill to apply the required amount of pressure in the range to sufficiently limit blood flow.
Harris, Jr. US 8376975 discloses a strap that is wrapped around a body part, including the neck. The strap being a vibration dampener to dampen vibration of musculature and soft tissue that may otherwise result in injury or pain (column 1, lines 16-20). The strap being adjustable to provide different tensions (column 2, lines 52-61). However, Harris, Jr. further discloses the strap is not wrapped so tightly as to limit blood flow or impose undue local pressure on body tissue (column 7, lines 52-57). Therefore, Harris, Jr. would not apply the specific degrees of pressure to the jugular vein in order to reduce blood flow and absorption in these claimed areas.
No combination of Coakwell and Harris, Jr. and prior art of record or prior art at large serves to rectify the deficiencies of Coakwell and Harris, Jr. in regard to the limitations of the claim. Further, the prior art of record, as well as the prior art at large, alone or in combination, fails to remedy those deficiencies listed above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTINA C LAUER whose telephone number is (571)270-5418. The examiner can normally be reached Monday-Thursday 7:00 AM-4:00 PM.
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/CHRISTINA C LAUER/Examiner, Art Unit 3771
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