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 .
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 27-46 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5, 7, 10-11, 13-18, 20, 23-24, and 26 of U.S. Patent No. 12,379,307. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims recite a fluid contact element, whereas the parent claims recite a translucent element comprising pores. The specification of the instant application does not explicitly disclose the “fluid contact element” recited in the claims. However, the instant does disclose a “translucent element” being in contact with a liquid. Therefore, the Examiner assumes that the fluid contact element of the instant claims is the same as the translucent element with pores of the parent claims, wherein the parent claims are more narrowly recited.
The 1-to-1 correspondence of the claims is as given below:
instant app.
19/258,024
parent PatentUS 12,379,307
27
1
28
2
29
3
30
4
31
5
32
7
33
10
34
11
35
1
36
13
37
14
38
15
39
16
40
17
41
18
42
20
43
13
44
23
45
24
46
26
Claims 27 and 36 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 9, 11, and 21 of U.S. Patent No. 12,480,873. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims recite a fluid contact element, whereas the parent claims recite a translucent element comprising pores. The specification of the instant application does not explicitly disclose the “fluid contact element” recited in the claims. However, the instant does disclose a “translucent element” being in contact with a liquid. Therefore, the Examiner assumes that the fluid contact element of the instant claims is the same as the translucent element with pores of the parent claims, wherein the parent claims are more narrowly recited.
The 1-to-1 correspondence of the claims is as given below:
instant app.
19/258,024
parent PatentUS 12,480,873
27
1 + 19 + 21
36
1 + 11
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 37 and 45 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.
Regarding claims 37 and 45, the phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Allowable Subject Matter
Claims 27-36, 38-44, and 46 would be allowable if rewritten or amended to overcome the double patenting rejections set forth in this Office action.
Claims 37 and 35 would be allowable if rewritten to overcome the double patenting rejections and the rejections under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action, and to include all of the limitations of the base claim and any intervening claims.
Conclusion
The prior art made of record and not relied upon is considered pertinent to Applicant's disclosure.
Perkins (US 2015/0293016) discloses an apparatus (300, Figs. 2-3) for determining a concentration of a predetermined analyte in a liquid comprising:
a fluid contact element (110) [0042],
one or more light sources (361) being adapted to illuminate (101) the fluid contact element (110) [0044], and
a light detector (362) being adapted to receive light (102) transmitted in response to an illumination (101) by the one or more light sources (361) [0044],
wherein the light detector (362) is further adapted to generate one or more signals based on the received light [0045], and
wherein the apparatus (300) further comprises a data processing device (350) comprising a processor (351) [0044] configured to:
determine the concentration of the predetermined analyte in the liquid [0063].
Perkins is silent with respect to determining a difference in concentration between two or more predetermined analytes by detecting temporally resolved signals and determining, based on these signals, time response values.
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to HINA F AYUB whose telephone number is (571)270-3171. The Examiner can normally be reached on 9am-5pm ET Mon-Fri.
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, Tarifur Chowdhury can be reached on 571-272-2287. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Hina F Ayub/
Primary Patent Examiner
Art Unit 2877
