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 .
The non-statutory 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.
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Claims 1-24 are provisionally rejected on the ground of non-statutory double patenting as being unpatentable over claims 1-24 of co-pending Application No. 17/941,763 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because it would have been obvious in view of the reference application claims to provide the contact lens package of the subject application, for the purpose of constructing a more economical package.
This is a provisional non--statutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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 Bauman (5,695,049). The claimed contact lens package reads on the packages of Bauman. The rejection is the same as in parent application 17/941,763 except for the commentary immediately following that addresses features now added to claim 1. Thus, regarding the now claimed pivoting action about a pivot line in the package, Fig. 7 of Bauman most clearly shows the feature in the portion of the package at the end of the lead line from numeral 25 (the pivot line can be a line through this portion of the package).
The prior rejection of claim 1 is reproduced below in italics for applicant’s convenience:
“Bauman discloses a contact lens package having a contact lens therein as now claimed. Moreover, the contact lens of Bauman is suspended within the packaging solution when the Bauman package is in an unopened state as also now claimed in claim 1, since as should be apparent from Fig 3 of Bauman, the package only contacts and therefore supports a portion of the lens, with the remaining support of the lens coming from the lens solution. This appears to be similar to what is described in page 24 line 12 through page 25 line 2 of the application specification where portions of applicant’s lens may rest on or contact the package even though the lens is characterized by applicant as being suspended in packaging solution.
Additionally, the package of Bauman is configured to lift the contact lens out of the packaging solution when a user applies opposing forces to proximal and distal ends of the package, as now also claimed in claim 1, as follows. Thus, as described and shown in the Bauman, the package can be pushed with a finger such that the contact lens is lifted out of the saline solution in which the contact lens sits. For example, see column 3 lines 43-52. Thus, a force is applied by a finger to one end (the bottom end) of the Bauman package as shown in Figs 3, 6, 7 and 9. Moreover, this force would have to be counteracted by an opposite force or the package would simply move upwardly in the Bauman figures and the contact lens would not be lifted out of the packaging solution as shown in the Bauman drawings (compare, for example Fig 3 to Fig 9, the former showing the lens suspended within the packaging solution when the package is in an unopened state, as explained above, and the latter showing that the package has lifted the lens out of the packaging solution in which the lens was suspended). This opposite force can be applied by a user of the Bauman package to the opposite end (the top end) of the Bauman package. For example, the opposite force can be applied to top portions of flange 20. Accordingly, the Bauman package is configured to lift the contact lens out of the packaging solution when a user applies opposing forces to proximal and distal ends of the package as claimed.”
Claim(s) 1 and 18 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hsieh et al. (2014/0001059) previously of record and cited herein. Hsieh operates similarly to Bauman. Thus, as shown in Figs. 1-3 and required in claim 1, a force is applied to a proximal and of the package by a finger and an opposing force can be applied to the distal end of the package (at ring 106) to prevent the package from moving upwardly due to the finger force, thereby allowing inversion of the bag 104 as shown in Fig. 3 and lifting of the lens out of the packaging solution. The now claimed pivoting action about a pivot line occurs in Hsieh at a similar position to the Bauman package for the same feature (where bag 104 meets ring 106).
Claims 2-17 and 19-24 avoid the prior art of record.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JACOB K ACKUN whose telephone number is (571)272-4418. The examiner can normally be reached Monday-Thursday 11am-7pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Gregory J. Pickett can be reached on (571) 272-4560. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JACOB K ACKUN/Primary Examiner, Art Unit 3736
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