DETAILED ACTION
Notices to Applicant
This communication is a First Action Non-Final on the merits. Claims 1-20 as filed 05/13/2025, are currently pending and have been considered below.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Priority
The present application is a continuation of U.S. Patent Application No. 18/068,422, filed on December 19, 2022 which is a continuation of U.S. Patent Application No. 16/872,176, filed on May 11, 2020, which claims the benefit under 35 U.S.C. § 120 and 35 U.S.C. § 365(c) as a continuation of International Application No. PCT/US2020/028337, designating the United States, with an international filing date of April 15, 2020, which claims priority to Indian Provisional Patent Application No. 201911015467, filed April 17, 2019.
Information Disclosure Statement
Due to the excessively lengthy Information Disclosure Statement (IDS) submitted by applicant, the examiner has given only a cursory review of the listed references. In accordance with MPEP 609.04(a), applicant is encouraged to provide a concise explanation of why the information is being submitted and how it is understood to be relevant. Concise explanations (especially those which point out the relevant pages and lines) are helpful to the Office, particularly where documents are lengthy and complex and application is aware of a section that is highly relevant to patentability or where a large number of documents are submitted and applicant is aware that one or more are highly relevant to patentability. Applicant is required to comply with this statement for any non-English language documents. See 37 CFR § 1.56 Duty to Disclose Information Material to Patentability.
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 1-2, 4-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over U.S. Patent No. 12,340,888 B2
Claims 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,340,888 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because each limitation of the instant application claim 1 is anticipated by U.S. Patent No. 12,340,888 B2, claim 1.
Claim 2 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2 of U.S. Patent No. 12,340,888 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because each limitation of the instant application claim 2 is anticipated by U.S. Patent No. 12,340,888 B2, independent claim 1 and dependent claim 2.
Claim 4 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 4 of U.S. Patent No. 12,340,888 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because each limitation of the instant application claim 4 is anticipated by U.S. Patent No. 12,340,888 B2, independent claim 1 and dependent claim 4.
Claim 5 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 5 of U.S. Patent No. 12,340,888 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because each limitation of the instant application claim 5 is anticipated by U.S. Patent No. 12,340,888 B2, independent claim 5.
Claim 6 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 5-6 of U.S. Patent No. 12,340,888 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because each limitation of the instant application claim 6 is anticipated by U.S. Patent No. 12,340,888 B2, independent claim 5 and dependent claim 6.
Claim 7 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 5-7 of U.S. Patent No. 12,340,888 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because each limitation of the instant application claim 7 is anticipated by U.S. Patent No. 12,340,888 B2, independent claim 5 and dependent claims 6-7.
Claim 8 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 5-6 and 8 of U.S. Patent No. 12,340,888 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because each limitation of the instant application claim 8 is anticipated by U.S. Patent No. 12,340,888 B2, independent claim 5 and dependent claims 6 and 8.
Claim 9 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 5 of U.S. Patent No. 12,340,888 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because each limitation of the instant application claim 9 is anticipated by U.S. Patent No. 12,340,888 B2, independent claim 5.
Claim 10 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 5 and 10 of U.S. Patent No. 12,340,888 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because each limitation of the instant application claim 10 is anticipated by U.S. Patent No. 12,340,888 B2, independent claim 5 and dependent claim 10.
Claim 11 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 5 and 11 of U.S. Patent No. 12,340,888 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because each limitation of the instant application claim 11 is anticipated by U.S. Patent No. 12,340,888 B2, independent claim 5 and dependent claim 11.
Claim 12 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 5 and 12 of U.S. Patent No. 12,340,888 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because each limitation of the instant application claim 12 is anticipated by U.S. Patent No. 12,340,888 B2, independent claim 5 and dependent claim 12.
Claim 13 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 5 and 13 of U.S. Patent No. 12,340,888 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because each limitation of the instant application claim 13 is anticipated by U.S. Patent No. 12,340,888 B2, independent claim 5 and dependent claim 13.
Claim 14 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 5 and 14 of U.S. Patent No. 12,340,888 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because each limitation of the instant application claim 14 is anticipated by U.S. Patent No. 12,340,888 B2, independent claim 5 and dependent claim 14.
Claim 15 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2 and 15 of U.S. Patent No. 12,340,888 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because each limitation of the instant application claim 15 is anticipated by U.S. Patent No. 12,340,888 B2, independent claim 5 and dependent claims 2 and 15.
Claim 16 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 5 and 16 of U.S. Patent No. 12,340,888 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because each limitation of the instant application claim 16 is anticipated by U.S. Patent No. 12,340,888 B2, independent claim 5 and dependent claim 16.
Claim 17 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 5 and 17 of U.S. Patent No. 12,340,888 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because each limitation of the instant application claim 17 is anticipated by U.S. Patent No. 12,340,888 B2, independent claim 5 and dependent claim 17.
Claim 18 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 5 and 18 of U.S. Patent No. 12,340,888 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because each limitation of the instant application claim 18 is anticipated by U.S. Patent No. 12,340,888 B2, independent claim 5 and dependent claim 18.
Claim 19 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 5 and 19 of U.S. Patent No. 12,340,888 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because each limitation of the instant application claim 19 is anticipated by U.S. Patent No. 12,340,888 B2, independent claim 5 and dependent claim 19.
Claim 20 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 5 and 20 of U.S. Patent No. 12,340,888 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because each limitation of the instant application claim 20 is anticipated by U.S. Patent No. 12,340,888 B2, independent claim 5 and dependent claim 20.
Claim Objections
Claim 3 is 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.
Examiner Statement - 35 USC § 102/103
The closest prior art – U.S. Patent Application Pub. No. 2016/0051750 A1 (hereinafter “Tsoukalis”) in view of U.S. Patent Application Pub. No. 2016/0001003 A1 (hereinafter “Perazzo et al.”), U.S. Patent Application Pub. No. 2013/0274669 A1 (hereinafter “Stempfle et al.”) and U.S. Patent Application Pub. No. 2022/0254470 A1 (hereinafter “Lafauci et al.”) – does not teach the invention in the particular combination as claimed in the independent claims; therefore, the closest prior art of record does not anticipate or otherwise render the claimed invention obvious, specifically the disclosure of: “a disposal device capable of receiving one or more portions of the recorded information automatically from the electronic communication device on the liquid destination container after patient infusion, the recorded information including a changed portion of the recorded information indicating the change in contents of the liquid destination container, …, evaluating the any remaining liquid within the liquid destination container to determine one or more physical, optical, or chemical characteristics of the liquid within the liquid destination container, and comparing the one or more physical, optical, or chemical characteristics to the changed portion of the recorded information received from the electronic communication device on the liquid destination container,” as recited in independent claim 1. Independent claim 5 similarly recites, “a secure disposal device configured to: (1) receive the liquid container with any remaining liquid contained therein after use in a manner that places the liquid container beyond access by a user; (2) within the disposal device, evaluate the any remaining liquid within the liquid container to determine one or more physical, optical, or chemical characteristics of the liquid within the liquid container; (3) receive one or more portions of the recorded information from the electronic communication device on the medical liquid container, including the information representing updated or modified contents; and (4) compare the one or more physical, optical, or chemical characteristics to the information representing the updated or modified contents of the recorded information received from the electronic communication device of the medical liquid container.” The closest prior art, Lafauci et al. teaches the analysis engine can further determine how much unused/leftover medication is supposed to be returned/wasted based on information from the eMAR and/or CPOE, and compare the theoretical amount to the actual amount that is being returned, however, the eMAR and/or CPOE information is received from a central server database of an institution and not received from the electronic communication device of the medical liquid container as claimed. See Lafauci et al., [0161], [0209], and [0216]. Tsoukalis, Perazzo et al., and Stempfle et al. fail to fill the gap in obvious combination. Dependent claims 2-4 and 6-20 are hereby indicated as being free of prior art for least the same rationale applied to the independent claims.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
U.S. 2011//0241878 A1 teaches a panel on an IV pole including multiple RFID readers for reading the RFID tags placed on each of the medication containers mounted to the panel (Abstract);
U.S. 2016/0158108 A1 teaches a near field communication tags configured to send programming data-information to the medication dispensing device ([0022]); and
U.S. 2016/0213851 A1 teaches a filling station for liquid pharmaceuticals including a motor for conveying drives ([0062], [0064]).
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/A.M.B./Examiner, Art Unit 3682
/FONYA M LONG/Supervisory Patent Examiner, Art Unit 3682
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