CTNF 19/173,224 CTNF 86082 DETAILED ACTION Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia 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 08-33 AIA 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. 08-34 AIA Claim s 1-3 and 5 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim s1-4 of U.S. Patent No. 12,321,539 . Although the claims at issue are not identical, they are not patentably distinct from each other because the patent claims include all of the limitations of the instant application claims, respectively. The patent claims also include additional limitations . For Example: U.S. Application #19/173,224 US Patent# 12,321,539 1. A medical device comprising: a casing body including an interior cavity , and an input surface ; and a base plate covering the interior cavity , a sheet comprising: a first sheet portion covering the input surface, the first sheet portion configured to transmit an input from a user to the input surface; and a second sheet portion configured to be held by the casing body and by the base plate 5. The medical device according to claim 1, wherein the sheet further comprises a third sheet portion provided in the interior cavity. 1. A medical device comprising: a casing having an interior cavity , the casing comprising: a first surface including an input portion configured to receive an input from a user; a second surface opposed the first surface; and a third surface connecting the first surface to the second surface, the first, second and third surfaces surrounding the interior cavity; a sheet comprising: a first sheet portion at least partially covering the first surface including the input portion; a second sheet portion at least partially covering the second surface ; and a third sheet portion connecting the first sheet portion to the second sheet portion and at least partially covering the third surface; and a projection extending from the second surface for slidably holding the second sheet portion relative to the second surface in a direction towards or away from the third sheet portion, while the first sheet portion contacts the input portion ; wherein the first sheet portion is configured to transmit the input from the user through the first sheet portion such that the input is received by the input portion . 4. The medical device according to claim 1, further comprising a base plate having the second surface, wherein the second sheet portion is internal to the interior cavity; and the projection is provided in the interior of the cavity. 2. The medical device according to claim 1, wherein the input surface is a touchpad . 2. The medical device according to claim 1, wherein the input portion comprises a touchpad. 3. The medical device according to claim 2, wherein the touchpad is spaced apart from a curved side surface of the casing body. 3. The medical device according to The medical device according to wherein the third surface includes a curved surface . Hence, the instant application claims are generic to the species of invention covered by the respective patent claims. As such, the instant application claims are anticipated by the patent claims and are therefore not patentably distinct therefrom. (See Eli Lilly and Co. v. Barr Laboratories Inc., 58 USPQ2D 1869, "a later genus claim limitation is anticipated by, and therefore not patentably distinct from, an earlier species claim", In re Goodman, 29 USPQ2d 2010, "Thus, the generic invention is 'anticipated' by the species of the patented invention" and the instant “application claims are generic to species of invention covered by the patent claim, and since without terminal disclaimer, extant species claims preclude issuance of generic application claims”). Allowance of application claim 1-3 would result in an unjustified time-wise extension of the monopoly granted for the invention defined by US Patent claims 1-4. Therefore, Obviousness-type double patenting is appropriate . Claim Rejections - 35 USC § 103 07-06 AIA 15-10-15 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. 07-20-aia AIA 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. 07-23-aia AIA 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. 07-21-aia AIA Claim (s) 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over Notarianni (WO 9400037 A1) in view of Kanetani (JP 2007279437 A) . Claim 1. Notarianni teaches a medical device (Figs. 1-4) comprising: a casing body including an interior cavity (Page 5- The housing 2 of the protective case 10 ) , and an input surface (Page 6 - The protective sheet 15 is preferably formed of a thin transparent or translucent plastic material to permit operation of the inductive pen through the sheet 15 with the pen based computer 30) a sheet comprising: a first sheet portion covering the input surface, the first sheet portion configured to transmit an input from a user to the input surface (Page 6 - The protective sheet 15...to permit operation of the inductive pen through the sheet 15 with the pen based computer 30.) Notarianni further discloses a first sheet portion integrated with the housing but does not specifically disclose a base plate covering the interior cavity; and a second sheet portion configured to be held by the casing body and by the base plate However, Kanetani teaches a base plate covering the interior cavity (Page 6- A frame body 23 having an opening having an area smaller than the area of the diffusion sheet 40 is arranged from above, and the frame body 23 is attached to the panel holder 22 with screws or the like. { e.g. frame body 23 is the base plate and panel holder 22 is a body part }) ; and a second sheet portion configured to be held by the casing body and by the base plate. (Page 6- A diffusion sheet 40 is arranged in the diffusion sheet arrangement part 30a of the reflection sheet 30. A frame body 23 having an opening having an area smaller than the area of the diffusion sheet 40 is arranged from above, and the frame body 23 is attached to the panel holder 22 with screws or the like. ( e.g. sheet 40 having first sheet portion, panel holder 22 is the casing body ) Page 8- For example, in the case of the first embodiment, as shown in FIG. 9, the surface shape 41a of the diffusion sheet 41 in the region corresponding to the diffusion sheet arrangement portion 33a of the reflection sheet 33 is roughened (for example, uneven shape) and reflected. ( e.g. 41a of sheet 40 is the second portion sandwiched between frame body 23 and panel 22 ( e.g. casing body ) via screws )). Therefore, it would have been obvious to one ordinarily skilled in the art before the effective filing date of invention to use a base plate and a second sheet portion as taught by Kanetani within the system of Notarianni for the purpose of enhancing the device to prevent cracking of the sheet by compensating for expansion and contraction and allow malleability of the sheet when in use by an operator. Claim 2. Notarianni and Kanetani teach the medical device according to claim 1, wherein the input surface is a touchpad (Page 6 - The protective sheet 15 is preferably formed of a thin transparent or translucent plastic material to permit operation of the inductive pen through the sheet 15 with the pen based computer 30) . Claim 3. Notarianni and Kanetani teach the medical device according to claim 2, wherein the touchpad is spaced apart from a curved side surface of the casing body (Notarianni Fig 1 shows curved surface and touchpad 30 spaced apart from the curved surfaces). Claim 4. Notarianni and Kanetani teach the medical device according to claim 1, wherein the second sheet portion contacts with the casing body and with the base plate (Kanetani Page 6- A diffusion sheet 40 is arranged in the diffusion sheet arrangement part 30a of the reflection sheet 30. A frame body 23 having an opening having an area smaller than the area of the diffusion sheet 40 is arranged from above, and the frame body 23 is attached to the panel holder 22 with screws or the like. ( e.g. sheet 40 having first sheet portion, panel holder 22 is the casing body )). Claim 5. Notarianni and Kanetani teach the medical device according to claim 1, wherein the sheet further comprises a third sheet portion provided in the interior cavity (Kanetani Page 1- the diffusion sheet 30 can freely slide on the diffusion sheet arrangement part 30a, so the diffusion sheet 40 never flexes to accumulate force. Page 6- a reflection sheet 30 as a first optical sheet is disposed on the inner surface of the backlight chassis 21 along the inner surface. ( e.g. diffusion sheet 30 is third sheet portion )) . Claim 6. Notarianni and Kanetani teach the medical device according to claim 5, further comprising a projection configured to hold the third sheet portion relative to the base plate (Kanetani Page 6 - the diffusion sheet arrangement part 30 a is placed on a step part 22 a provided in the panel holder 22… the frame body 23 is attached to the panel holder 22 with screws or the like). Claim 7. Notarianni and Kanetani teach the medical device according to claim 6, wherein the third sheet portion comprises a slot elongated in a direction towards or away from the second sheet portion, and the projection is disposed in the slot and fastened to the base plate to slidably hold the third sheet portion (Kanetani Page 8 - a slit 35 a (FIG. 8A) and a slit 35b (FIG. 8B) are provided in the diffusion sheet arrangement portion 32 a of the reflection sheet 32. By providing slits 35a and 35b in the diffusion sheet arrangement portion 32a, Page 6 - the diffusion sheet arrangement part 30 a is placed on a step part 22 a provided in the panel holder 22… the frame body 23 is attached to the panel holder 22 with screws or the like ( e.g. step part is the projection which holds diffusion sheets 30 and 40 )). Claim 8. Notarianni and Kanetani teach the medical device according to claim 7, wherein the slot comprises a plurality of linear slots, and the projection comprises a plurality of projections respectively corresponding to the plurality of linear slots (Kanetani Page 8 - a slit 35 a (FIG. 8A) and a slit 35b (FIG. 8B) are provided in the diffusion sheet arrangement portion 32 a of the reflection sheet 32. By providing slits 35a and 35b in the diffusion sheet arrangement portion 32a,). . Claim 9. Notarianni and Kanetani teach the medical device according to claim 7, wherein the slot is positioned at an end of the third sheet portion (Kanetani Page 8 - a slit 35 a (FIG. 8A) and a slit 35b (FIG. 8B) are provided in the diffusion sheet arrangement portion 32 a of the reflection sheet 32. By providing slits 35a and 35b in the diffusion sheet arrangement portion 32a,). Claim 10. Notarianni and Kanetani teach the medical device according to claim 6, wherein the projection protrudes into the interior cavity (page 6- It has a diffusion sheet arrangement part 30 a, and the diffusion sheet arrangement part 30 a is placed on a step part 22 a provided in the panel holder 22.) . Claim 11. Notarianni and Kanetani teach the medical device according to claim 6, wherein the projection further comprises a guide provided between the projection and the third sheet portion (Kanetani Page 6 - A diffusion sheet 40 is arranged in the diffusion sheet arrangement part 30a of the reflection sheet 30. A frame body 23 having an opening having an area smaller than the area of the diffusion sheet 40 is arranged from above, and the frame body 23 is attached to the panel holder 22 with screws or the like. e.g. Holder 22 and frame body 23 are the projections ). Claim 12. Notarianni and Kanetani teach the medical device according to claim 6, wherein the projection comprises a plurality of projections, each configured to hold the third sheet portion relative to the base plate (Kanetani Page 6 - A diffusion sheet 40 is arranged in the diffusion sheet arrangement part 30a of the reflection sheet 30. A frame body 23 having an opening having an area smaller than the area of the diffusion sheet 40 is arranged from above, and the frame body 23 is attached to the panel holder 22 with screws or the like. e.g. Holder 22 and frame body 23 are the projections ). Claim 13. Notarianni and Kanetani teach the medical device according to claim 1, wherein the second sheet portion is configured to be slidably held while the first sheet portion contacts the input surface (Kanetani Page 6 - (for example, uneven shape) (see FIG. 4), and the frictional resistance with the diffusion sheet 40 is lowered. Accordingly, even when the diffusion sheet 40 expands due to heat generated in the apparatus, the diffusion sheet 40 freely slides (slides) on the diffusion sheet arrangement portion 30a,). Claim 14. Notarianni and Kanetani teach the medical device according to claim 1, wherein the second sheet portion is configured to be slidably held between the casing body and the base plate in a direction towards or away from a side surface of the casing body (Kanetani Page 6 - (for example, uneven shape) (see FIG. 4), and the frictional resistance with the diffusion sheet 40 is lowered. Accordingly, even when the diffusion sheet 40 expands due to heat generated in the apparatus, the diffusion sheet 40 freely slides (slides) on the diffusion sheet arrangement portion 30a,). Claim 15. Notarianni and Kanetani teach the medical device according to claim 1, wherein the casing body comprises a side surface, and the second sheet portion is configured to be held by the side surface of the casing body and the base plate (Kanetani Page 6 - A diffusion sheet 40 is arranged in the diffusion sheet arrangement part 30a of the reflection sheet 30. A frame body 23 having an opening having an area smaller than the area of the diffusion sheet 40 is arranged from above, and the frame body 23 is attached to the panel holder 22 with screws or the like. e.g. Holder 22 is the side surface ). Claim 16. Notarianni and Kanetani teach the medical device according to claim 1, wherein the base plate is opposed to the first sheet portion across the interior cavity (Kanetani Page 6 - A diffusion sheet 40 is arranged in the diffusion sheet arrangement part 30a of the reflection sheet 30. A frame body 23 having an opening having an area smaller than the area of the diffusion sheet 40 is arranged from above, and the frame body 23 is attached to the panel holder 22 with screws or the like. e.g. frame body 23 is the opposed to the first sheet ) Claim 17. Notarianni and Kanetani teach the medical device according to claim 1, wherein a first coefficient of thermal expansion of the casing body is larger than a second coefficient of thermal expansion of the sheet (Kanetani Page - hat is, FIG. 5B shows the state before the CCFL 25 is lit, and FIG. 5B shows the state after the thermal expansion of the diffusion sheet 40, that is, the CCFL 25 being lit. e.g. Fig. 5 shows expansion, Fig.9 shows the expansion and the casing body (chassis 21) is larger than the expansion ). Claim 18. Notarianni and Kanetani teach the medical device according to claim 17, wherein a third coefficient of thermal expansion of the base plate is smaller than each of the first coefficient of thermal expansion of the casing body and the second coefficient of thermal expansion of the sheet (Kanetani Page - hat is, FIG. 5B shows the state before the CCFL 25 is lit, and FIG. 5B shows the state after the thermal expansion of the diffusion sheet 40, that is, the CCFL 25 being lit. e.g. Fig. 5 shows expansion, Fig.9 shows the expansion and the casing body (frame body 23) remains the same ). Claim 19. Notarianni and Kanetani teach the medical device according to claim 1, wherein the second sheet portion comprises: a first surface contacting the casing body; and a second surface contacting the base plate, the second surface opposing the first surface across a thickness of the second sheet portion (Kanetani Fig. 9 shows frame body 23 compressed on the thickness of 41a under panel holder 22). Claim 20. Notarianni and Kanetani teach the medical device according to claim 1, wherein the second sheet portion is provided between the casing body and the base plate in a thickness direction of the second sheet portion (Kanetani Fig. 9 shows frame body 23 compressed on the thickness of 41a under panel holder 22). . Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to RUFUS C POINT whose telephone number is (571)270-7510. The examiner can normally be reached 9am-5pm. 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, Davetta Goins can be reached at 571-272-2957. 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If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /RUFUS C POINT/Primary Examiner, Art Unit 2689 Application/Control Number: 19/173,224 Page 2 Art Unit: 2689 Application/Control Number: 19/173,224 Page 3 Art Unit: 2689 Application/Control Number: 19/173,224 Page 4 Art Unit: 2689 Application/Control Number: 19/173,224 Page 5 Art Unit: 2689 Application/Control Number: 19/173,224 Page 6 Art Unit: 2689 Application/Control Number: 19/173,224 Page 7 Art Unit: 2689 Application/Control Number: 19/173,224 Page 8 Art Unit: 2689 Application/Control Number: 19/173,224 Page 9 Art Unit: 2689 Application/Control Number: 19/173,224 Page 10 Art Unit: 2689 Application/Control Number: 19/173,224 Page 11 Art Unit: 2689 Application/Control Number: 19/173,224 Page 12 Art Unit: 2689 Application/Control Number: 19/173,224 Page 13 Art Unit: 2689 Application/Control Number: 19/173,224 Page 14 Art Unit: 2689 Application/Control Number: 19/173,224 Page 15 Art Unit: 2689 Application/Control Number: 19/173,224 Page 16 Art Unit: 2689 Application/Control Number: 19/173,224 Page 17 Art Unit: 2689 Application/Control Number: 19/173,224 Page 18 Art Unit: 2689
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