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 .
Continuation
The current application is a continuation of 18/550,581, which was issued as US Patent No. 12,357,537.
Specification
The disclosure is objected to because the specification is silent about claim 1 limitation “an electrical circuit operably connected”, claim 12 limitation “automatically rotate”, and claim 18 limitation “automatically rotating.” Appropriate correction is required.
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8, 12-15, 17, and 19 of U.S. Patent No. 12,357,537. Although the claims at issue are not identical, they are not patentably distinct from each other because,
the subject matter of the current application is directed to a locking cap assembly comprising: locking vanes, power source, and wireless communication activates the locking vanes to locked or unlocked state (claim 1); an inductive charging coil (claim 2); lower and upper housing (claim 3); locking slots (claim 4); motor (claim 5); microprocessor, authorization code (claim 6); predetermined medication administration time (claim 7); identification of medication (8); NFC input (claim 9); display device (10); wireless communication (claim 11); a vane positioning ring cause vanes to contract or expand (claim 12); the method of securing a medication container by a microprocessor involves receiving wireless input within a locking cap, activating power source to activate locking vanes to locked or unlocked state, the locking cap is secured to when locking vanes are in locked state, and the locking cap is removable when the locking vanes are in unlocked state (claim 13); a lower and an upper housing, a motor (claim 14); authorization code (claim 15); predetermined medication administration time (claim 16); identification of medication (17); a vane positioning ring cause vanes to contract or expand (claim 18); NFC input (claim 19); and display device (20).
Subject matter of issued patent is directed to a locking cap assembly comprising: an upper housing, a lower housing, NFC, inductive charging coil, microprocessor, locking vanes (claim 1); a vane positioning ring cause the vanes to expand or contract (2); locking slots (claim 3); display device (claim 4); authorization and wireless communication (claim 5); electrical actuation (claim 6); lower and upper housing (claim 7); motor drives locking vanes (claim 8); NFC and data network (claim 12); the method of securing a medication container involves receiving NFC input within a locking cap, determining authorization code, current time is within the medication administration time interval, activating locking vanes to locked or unlocked state, the locking cap is secured to when locking vanes are in locked state (claim 13); NFC module (claim 14); data network (claim 15); NFC and data network (claim 17); display (claim 19); and an access code (20).
Generally, a continuation application will have claims directed to different aspects of what is set forth in the original description and drawings.
Conclusion
Prior art made of record and not relied upon is considered pertinent to applicant's disclosure and provides example of invention. A few of the prior art cited but not applied include Patel (US 2020-0390655); Dutta (US 10,751,259); and Ponticelli (US 2020-0130908).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NATHAN CUMAR whose telephone number is (571)270-3112. The examiner can normally be reached Monday thru Friday, 8:00 am to 5:00 pm EST.
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, KRISTINA FULTON can be reached at 571-272-7376. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/NATHAN CUMAR/Primary Examiner, Art Unit 3675
Prosecution Insights