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 .
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, 3, 6-7, and 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Iske et al. (Iske US 2009/0120820) in view of Maness (US 8,573,426).
1: Iske teaches a waste receiver (generally shown as 10) capable of receiving unclaimed pharmaceutical waste material and adapted to be releasably coupled to an unclaimed locking assembly secured to an unclaimed fixed surface (unclaimed locking assembly 72/73 capable of being fixed to an unclaimed surface), said waste receiver comprising:
a receiver body (body 12) defining a container volume (volume within 12) and an opening (opening at the top of 12) in fluid communication with said container volume capable of receiving the unclaimed pharmaceutical waste material, said receiver body comprising a front wall, a rear wall opposite said front wall, and opposing sidewalls extending between said front and rear walls (front wall 17, rear wall 13, side walls 12), and a bottom wall (14, Figure 1) extending between said opposing sidewalls, wherein said receiver body defines a lock passageway (passageway between 40 and 13, Figure 1) adapted to receive the unclaimed locking assembly, said lock passageway being separate from said opening and extending through said receiver body between said front and rear walls (see Markup Figures 1-2 below); a support (generally indicated as 22, Figure 1) coupled to said receiver body (within 12) within said container volume (volume within 12), and Iske further teaches that the support (receptacle 22) where the bottom of the receptacle 22 sits on the bottom wall (14) of the receiver body (12).
Iske teaches the claimed invention as discussed above except a reaction agent disposed within a region of said container volume and supported by said support so as to be spaced apart from said bottom wall of said receiver body.
Maness teaches a fluid processor 274 for use with waste (col. 13, ll. 20-37).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Iske such that the teaching of a fluid processor was provided within the waste receptacle 22, wherein the fluid processor/reaction agent is spaced apart from the bottom wall of the receiver body (14, of 12), wherein the fluid processor/reaction agent is spaced apart from bottom wall (14) by the thickness of the bottom of receptacle (22, Figure 1 of Iske) were applied, in order to process waste fluids for disposal, as taught by Maness (col. 13, ll. 20-37).
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3: Iske-Maness teaches the claimed invention as discussed above for Claim 1 and Iske-Maness further teaches that two shells joined to one another to form said receiver body with each of said shells defining a portion of said container volume and a portion of said lock passageway (two shells formed by front wall 17, rear wall 13, side walls 12 and container 22).
6: Iske-Maness teaches the claimed invention as discussed above for Claim 1 except a packet including said reaction agent.
Maness teaches a packet (287A) which includes a reaction agent (297, paragraph 0097, Figure 4A).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Iske-Maness such that the teaching of a packet including said reaction agent were applied in order to react with the fluid pharmaceutical waste to destroy or otherwise chemically and/or physically change the fluid pharmaceutical waste to an unusable and/or unrecoverable form, as taught by Maness (paragraph 0097).
7: Iske teaches a waste receiver (generally shown as 10) capable of receiving unclaimed pharmaceutical waste material and adapted to be releasably coupled to an unclaimed locking assembly secured to an unclaimed fixed surface (unclaimed locking assembly 72/73 capable of being fixed to an unclaimed surface), said waste receiver comprising:
a receiver body (body 12) defining a container volume (volume within 12) and an opening (opening at the top of 12) in fluid communication with said container volume capable of receiving the unclaimed pharmaceutical waste material, said receiver body comprising a front wall, a rear wall opposite said front wall, and opposing sidewalls extending between said front and rear walls (front wall 17, rear wall 13, side walls 12), and a bottom wall (14, Figure 1) extending between said opposing sidewalls, wherein said receiver body defines a lock passageway (passageway between 40 and 13, Figure 1) adapted to receive the unclaimed locking assembly, said lock passageway being separate from said opening and extending through said receiver body between said front and rear walls (see Markup Figures 1-2 below and Iske further teaches that a receptacle (receptacle 22) where the bottom of the receptacle (22) sits on the bottom wall (14) of the receiver body (12).
Iske teaches the claimed invention as discussed above except a reaction agent disposed within said container volume, said reaction agent being positioned to be spaced apart from said bottom wall.
Maness teaches a fluid processor 274 for use with waste (col. 13, ll. 20-37).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Iske such that the teaching of a fluid processor was provided within the waste receptacle 22, wherein the fluid processor/reaction agent is spaced apart from the bottom wall of the receiver body (14, of 12), wherein the fluid processor/reaction agent is spaced apart from bottom wall (14) by the thickness of the bottom of receptacle (22, Figure 1 of Iske) were applied, in order to process waste fluids for disposal, as taught by Maness (col. 13, ll. 20-37).
10: Iske-Maness teaches the claimed invention as discussed above for Claim 7 and Iske-Maness further teaches that two shells joined to one another to form said receiver body with each of said shells defining a portion of said container volume and a portion of said lock passageway (two shells formed by front wall 17, rear wall 13, side walls 12 and container 22).
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 1-17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,064,797 and Claims 1-20 of U.S. Patent No. 10,940,513. Although the claims at issue are not identical, they are not patentably distinct from each other because both inventions are directed to a waste receiver for receiving pharmaceutical waste material and adapted to be releasably coupled to a locking assembly secured to a fixed surface, said waste receiver comprising: a receiver body defining a container volume and an opening in fluid communication with said container volume for receiving the pharmaceutical waste material, said receiver body comprising a front wall, a rear wall opposite said front wall, opposing sidewalls extending between said front and rear walls, wherein said receiver body defines a lock passageway adapted to receive the locking assembly, said lock passageway being separate from said opening and extending through said receiver body between said front and rear walls; and a reaction agent disposed within said container volume, said reaction agent being positioned to be spaced apart from said bottom wall except a bottom wall extending between said opposing sidewalls and a support coupled to said receiver body within said container volume; and a reaction agent disposed within said container volume and supported by said support so as to be spaced apart from said bottom wall of said receiver body.
Iske teaches a bottom wall (14, Figure 1) extending between said opposing sidewalls and Maness teaches a fluid processor 274 for use with waste (col. 13, ll. 20-37).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Iske such that the teaching of a fluid processor was provided within the waste receptacle 22, wherein the fluid processor/reaction agent is spaced apart from the bottom wall of the receiver body (14, of 12), wherein the fluid processor/reaction agent is spaced apart from bottom wall (14) by the thickness of the bottom of receptacle (22, Figure 1 of Iske) were applied, in order to process waste fluids for disposal, as taught by Maness (col. 13, ll. 20-37).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KING M CHU whose telephone number is (571)270-7428. The examiner can normally be reached Monday - Friday 10AM - 6PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Anthony Stashick can be reached at (571) 272 - 4561. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/King M Chu/Primary Examiner, Art Unit 3735
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