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.
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Claim(s) 1-3, 5-6, 8, 11-16 & 18-19 is/are rejected on the ground of nonstatutory double patenting as being unpatentable over Claim(s) 1, 2, 5, 8 & 11 of U.S. Patent No. 12,402,831 B2.
In order to make a double patenting determination, it first must be determined whether there are any differences between the rejected claims and the patented claims and, if so, whether those differences render the claims patentably distinct.
Rejected Claim 1: A finger insert for a nailfold imaging device [A finger insert for a finger imaging device] (Line 1 of patented Claim 1), the finger insert comprising: [the finger insert comprising:] (Line 1-2 of patented Claim 1)
a housing [a housing] (Line 3 of patented Claim 1) defining an opening [defining an opening] (Line 3 of the patented Claim 1) adapted to receive a finger of a subject [adapted to receive a finger of a subject] (Line 3-4 of the patented Claim 1), the housing including: [the housing including:] (Line 4-5 of the patented Claim 1)
a front wall [a second wall] (Line 7 of Patented Claim 1) that includes a transparent region to facilitate imaging of nailfold capillaries in a nailfold of the finger by the nailfold imaging device when the finger is inserted into the finger insert [being optically transparent to facilitate imaging of capillaries in a nailfold of the finger by the finger imaging device when the finger insert is inserted in the finger imaging device] (Line 7-10 of Patented Claim 1) and the nailfold of the finger is adjacent to the transparent region [wherein during use at least a portion of a nail of the finger is pressed against the second wall portion] (Line 14-16 of Patented Claim 1);
a substance to dispose between the nailfold and the transparent region, the substance having a refractive index similar to at least one of a refractive index of the housing or a refractive index of a dermis of the finger to facilitate imaging of the nailfold capillaries [a liquid to facilitate imaging of the capillaries in the nailfold of the finger of the subject] (Line 2-4 of Patented Claim 5);
a rear wall opposite the front wall (Claim 1 as a whole);
Examiner’s Note: Based on the structural description of the first and second wall, the only way the functional language of the claim operates, the first and second wall are opposite each other.
a deformable pad or a plurality of deformable spacers [a plurality of deformable spacers] (Line 22 of Patented Claim 1) adjacent to the rear wall [the plurality of deformable spacers positioned on at least a portion of the first wall] (Line 22-23 of the Patented Claim 1) and configured to press the finger towards the front wall [the finger of the subject when the finger is inserted into the finger insert, and to press the finger towards the second wall] (Line 26-28 of the Patented Claim 1), such that there is little, or no pressure applied on the nailfold by the front wall [contact between the nailfold of the finger and the second wall is prevented] (Line 33-34 of Patented Claim 1), permitting blood to flow through the nailfold capillaries in the nailfold and permitting imaging of the nailfold capillaries [to facilitate imaging of capillaries in a nailfold of the finger by the finger imaging device] (Line 8-9 of Patented Claim 1).
A similar analysis can be applied to the dependent claims:
Rejected Claim 2 and Patented Claims 1-2.
Rejected Claim 3 and Patented Claims 1, 8 & 11.
Rejected Claim 5 and Patented Claim 1.
Rejected Claim 6 and Patented Claims 5.
Rejected Claim 8 and Patented Claim 1.
Rejected Claim 11-13 and Patented Claim 1.
Rejected Claim 14 and Patented Claim 1.
Rejected Claim 15: A finger insert for a nailfold imaging device [A finger insert for a finger imaging device] (Line 1 of patented Claim 1), the finger insert comprising: [the finger insert comprising:] (Line 1-2 of patented Claim 1)
a housing [a housing] (Line 3 of patented Claim 1) defining an opening [defining an opening] (Line 3 of the patented Claim 1) adapted to receive a finger of a subject [adapted to receive a finger of a subject] (Line 3-4 of the patented Claim 1), the housing including: [the housing including:] (Line 4-5 of the patented Claim 1)
a front wall [a second wall] (Line 7 of Patented Claim 1) that includes a transparent region to facilitate imaging of nailfold capillaries in a nailfold of the finger when the finger is inserted into the finger insert [being optically transparent to facilitate imaging of capillaries in a nailfold of the finger by the finger imaging device when the finger insert is inserted in the finger imaging device] (Line 7-10 of Patented Claim 1) and the nailfold of the finger is adjacent to the transparent region [wherein during use at least a portion of a nail of the finger is pressed against the second wall portion] (Line 14-16 of Patented Claim 1);
a rear wall opposite the front wall (Claim 1 as a whole);
Examiner’s Note: Based on the structural description of the first and second wall, the only way the functional language of the claim operates, the first and second wall are opposite each other.
a deformable pad or a plurality of deformable spacers [a plurality of deformable spacers] (Line 22 of Patented Claim 1) adjacent to the rear wall [the plurality of deformable spacers positioned on at least a portion of the first wall] (Line 22-23 of the Patented Claim 1) and configured to press the finger towards the front wall [the finger of the subject when the finger is inserted into the finger insert, and to press the finger towards the second wall] (Line 26-28 of the Patented Claim 1), such that there is little, or no pressure applied on the nailfold by the front wall [contact between the nailfold of the finger and the second wall is prevented] (Line 33-34 of Patented Claim 1), permitting blood to flow through the nailfold capillaries in the nailfold and permitting imaging of the nailfold capillaries [to facilitate imaging of capillaries in a nailfold of the finger by the finger imaging device] (Line 8-9 of Patented Claim 1).
A similar analysis can be applied to the dependent claims:
Rejected Claim 16 and Patented Claims 1-2.
Rejected Claim 18 and Patented Claim 1.
Rejected Claim 19 and Patented Claim 5.
Rejected Claim(s) 1-3, 5-6, 8, 11-16 & 18-19 is/are anticipated by Patented Claim(s) 1, 2, 5, 8 & 11. Thus, the Rejected Claim(s) is/are not patentably distinct from Patented Claim(s) 1, 2, 5, 8 & 11.
Claim(s) 1-9 & 11-20 is/are rejected on the ground of nonstatutory double patenting as being unpatentable over Claim(s) 1, 2, 8 & 14 of U.S. Patent No. 11,160,492 B2.
In order to make a double patenting determination, it first must be determined whether there are any differences between the rejected claims and the patented claims and, if so, whether those differences render the claims patentably distinct.
Rejected Claim 1: A finger insert [a finger insert] (Line 1 of patented Claim 1) for a nailfold imaging device [a finger imaging device] (Line 1 of patented Claim 1), the finger insert comprising: [a finger insert…including:] (Line 8-9 of patented Claim 1)
a housing [a housing] (Line 10 of patented Claim 1) defining an opening [defining an opening] (Line 10 of the patented Claim 1) adapted to receive a finger of a subject [adapted to receive a finger of a subject] (Line 10-11 of the patented Claim 1), the housing including: [the housing including] (Line 19-20 of the patented Claim 1)
a front wall [a second wall] (Line 20 of Patented Claim 1) that includes a transparent region to facilitate imaging of nailfold capillaries in a nailfold of the finger by the nailfold imaging device [being optically transparent to facilitate imaging of the nailfold of the finger via the light source and detector] (Line 20-23 of Patented Claim 1) when the finger is inserted into the finger insert [as the finger is placed into the finger insert via the opening] (Line 18-19 of Patented Claim 1) and the nailfold of the finger is adjacent to the transparent region [a section of the second wall is in optical communication with the imaging window when the finger insert is disposed in the receptacle] (Line 23-26 of Patented Claim 1);
a substance to dispose between the nailfold and the transparent region, the substance having a refractive index similar to at least one of a refractive index of the housing or a refractive index of a dermis of the finger to facilitate imaging of the nailfold capillaries [to hold a liquid to facilitate imaging of a nailfold of the finger of the subject, wherein at least the distal phalange of the finger is immersed in the liquid when the liquid is present in the finger insert] (Line 14-18 of Patented Claim 1);
a rear wall opposite the front wall (Claim 1 as a whole);
Examiner’s Note: Based on the structural description of the first and second wall, the only way the functional language of the claim operates, the first and second wall are opposite each other.
a deformable pad [a deformable pad] (Line 27 of Patented Claim 1) or a plurality of deformable spacers adjacent to the rear wall [positioned on at least a portion of the first wall] (Line 27-28 of the Patented Claim 1) and configured to press the finger towards the front wall [structure that fills a gap between the first wall and the finger of the user when the finger is inserted into the finger insert] (Line 28-30 of the Patented Claim 1), such that there is little, or no pressure applied on the nailfold by the front wall [adapted to abut against the nail of the finger of the user, to prevent or reduce contact between the nailfold and the second wall] (Line 10-12 of Patented Claim 2), permitting blood to flow through the nailfold capillaries in the nailfold and permitting imaging of the nailfold capillaries [a finger imaging device] (Line 1 of patented Claim 1).
A similar analysis can be applied to the dependent claims:
Rejected Claim 2 and Patented Claims 1-2.
Rejected Claim 3 and Patented Claim 4.
Rejected Claim 4 and Patented Claim 2.
Rejected Claim 5 and Patented Claims 1.
Rejected Claim 6 and Patented Claim 1.
Rejected Claim 7 and Patented Claims 1 & 8.
Rejected Claim 8 and Patented Claims 1 & 8.
Rejected Claim 9 and Patented Claim 14.
Rejected Claim 11 and Patented Claim 1.
Rejected Claim 12 and Patented Claim 1.
Rejected Claim 13 and Patented Claims 1.
Rejected Claim 14 and Patented Claims 1 & 8.
Rejected Claim 15: A finger insert [a finger insert] (Line 1 of patented Claim 1) for a nailfold imaging device [a finger imaging device] (Line 1 of patented Claim 1), the finger insert comprising: [a finger insert…including:] (Line 8-9 of patented Claim 1)
a housing [a housing] (Line 10 of patented Claim 1) defining an opening [defining an opening] (Line 10 of the patented Claim 1) adapted to receive a finger of a subject [adapted to receive a finger of a subject] (Line 10-11 of the patented Claim 1), the housing including: [the housing including] (Line 19-20 of the patented Claim 1)
a front wall [a second wall] (Line 20 of Patented Claim 1) that includes a transparent region to facilitate imaging of nailfold capillaries in a nailfold of the finger [being optically transparent to facilitate imaging of the nailfold of the finger via the light source and detector] (Line 20-23 of Patented Claim 1) when the finger is inserted into the finger insert [as the finger is placed into the finger insert via the opening] (Line 18-19 of Patented Claim 1) and the nailfold of the finger is adjacent to the transparent region [a section of the second wall is in optical communication with the imaging window when the finger insert is disposed in the receptacle] (Line 23-26 of Patented Claim 1);
a rear wall opposite the front wall (Claim 1 as a whole);
Examiner’s Note: Based on the structural description of the first and second wall, the only way the functional language of the claim operates, the first and second wall are opposite each other.
a deformable pad [a deformable pad] (Line 27 of Patented Claim 1) or a plurality of deformable spacers adjacent to the rear wall [positioned on at least a portion of the first wall] (Line 27-28 of the Patented Claim 1) and configured to press the finger towards the front wall [structure that fills a gap between the first wall and the finger of the user when the finger is inserted into the finger insert] (Line 28-30 of the Patented Claim 1), such that there is little, or no pressure applied on the nailfold by the front wall [adapted to abut against the nail of the finger of the user, to prevent or reduce contact between the nailfold and the second wall] (Line 10-12 of Patented Claim 2), permitting blood to flow through the nailfold capillaries in the nailfold and permitting imaging of the nailfold capillaries [a finger imaging device] (Line 1 of patented Claim 1).
A similar analysis can be applied to the dependent claims:
Rejected Claim 16 and Patented Claims 1-2.
Rejected Claim 17 and Patented Claim 1-4.
Rejected Claim 18 and Patented Claim 2.
Rejected Claim 19 and Patented Claims 1.
Rejected Claim 20 and Patented Claim 1.
Rejected Claim(s) 1-9 & 11-20 is/are anticipated by Patented Claim(s) 1, 2, 8 & 14. Thus, the Rejected Claim(s) is/are not patentably distinct from Patented Claim(s) 1, 2, 8 & 14.
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) 15-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Casenhiser (U.S. Patent 4,694,843 A; as evidenced as Teng et al. (U.S. Patent 6,154,285 A1)) and further in view of Chin (U.S. Patent 7,477,924 B2).
Claim 15: Casenhiser teaches –
A finger insert [finger-end cover] (Claim 1) for a finger imaging device,
Examiner’s Note: Casenhiser does not teach “for finger imaging device”. However, the claim limitation is a functional limitation and not a positive recitation of a finger imaging device. The Examiner contends that the finger-end cover of Casenhiser is capable of being used in a finger imaging device.
the finger insert comprising:
a housing [elongate, flexible sheath] (Claim 1, Figure 1 and Figure 4, Element 1) defining an opening adapted to receive a finger of a subject [an open rear end, with a continuous tubular cavity] (Claim 1 and Figure 1, Element 3), the housing including:
a front wall [a lower wall] [wall] [a stop or barrier] [finger-gripping portion] (Figure 1, Element 8, 7, 6 & 4, respectively as all these elements collectively compromise the front wall) that includes a transparent region [plastic such as, for example, polyvinyl chloride] (Col. 2, Line 36-39) to facilitate imaging of nailfold capillaries in the finger when the finger is inserted into the finger insert and
Examiner’s Note: The invention of Casenhiser is manufactured using polyvinyl chloride plastic (Col. 2, Line 36-39). As evidenced by Teng (U.S. Patent 6,154,285 A), polyvinyl chloride (Col. 7, Line 24) is used in finger optical imaging (See Figure 3 of Teng). Teng teaches the first layer of material comprises polyvinyl chloride (Claim 3) and that the first layer of material is transparent for imaging (Claim 1, Line 1 & 57-59). Since Casenhiser discloses the finger-end cover being polyvinyl chloride and Teng teaching that polyvinyl chloride is transparent and capable of being used in imaging, the Examiner concludes that the second wall is optically transparent to facilitate imaging as an inherent property of polyvinyl chloride.
a nailfold of the finger is adjacent to the transparent region (See Figure 1);
a rear wall [an upper wall] (Figure 1, Element 9) opposite the front wall (See Figure 1);
Casenhiser fails to teach a deformable spacers. However, Chin teaches –
a deformable pad or a plurality of deformable spacers (Figure 2B, Element 30) adjacent to the rear wall (the wall structure that Figure 2B, Element 30 is attached to) and configured to press the finger towards the front wall [raised protrusions may be conformable or semi-rigid] (Col. 5, Line 4 and deformable as shown in Figure 2B), such that there is little, or no pressure applied on the nailfold by the front wall,
Examiner’s Note: Even though the second wall of Chin also has a plurality of deformable spacers, the nature of the deformable spacers of the first wall is to press the finger in the direction of the second wall. The second wall is being claimed as being in no contact or less than 100% contact (where the contact is reduced).
Examiner’s Note: The claim interpretation is that the deformable spacers are being claimed as being on both the first and second wall.
permitting blood to flow through the nailfold capillaries in the nailfold and permitting imaging of the nailfold capillaries (functional language of which the structure is capable of) in order to prevent the finger-end cover of Casenhiser from unintentionally moving off the finger by having the deformable spacers of Chin provide a durable, non-adhesive gripping contact with patient’s skin (Col. 3, Line 30-31 of Chin)
Examiner’s Note: It is being interpreted that the second wall can also have deformable spacers to prevent or reduce contact. The second wall is being claimed as being in no contact or less than 100% contact (where the contact is reduced). The claim interpretation is that the deformable spacers are being claimed as being on both the first and second wall.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add the deformable spacers of Chin (Figure 2B, Element 30 of Chin) to the first wall of Casenhiser (Figure 1, Element 4) in order to prevent the finger-end cover of Casenhiser from unintentionally moving off the finger by having the deformable spacers of Chin provide a durable, non-adhesive gripping contact with patient’s skin (Col. 3, Line 30-31 of Chin)
Claim 16/15: Casenhiser teaches wherein the housing further includes a socket or landing region to abut against a distal phalange of the finger [wall 7…may also be curved in the transverse direction to accommodate the contour of the inserted finger] (Col. 2, Line 51-55 and Figure 5, Element 7) as approximately centered about a longitudinal axis of the housing (as demonstrated in Figure 5).
Examiner’s Note: Based on the Specification of the Applicant, the socket is disclosed as a part of the landing region which is curved to conform to the finger (Para 1060 of the Specification of the Applicant as filed) and the landing region is a part of the second wall (Para 1066 of the Specification of the Applicant). Thus, the Rejection above points to the multiple prior art elements that comprise the second wall and the prior art elements that read on the socket and landing region of the claimed invention.
Claim 17/15: Casenhiser teaches wherein the front wall comprises a flat portion (See Figure 1) through which the imaging of the nailfold capillaries occurs when the finger insert is in use (functional language of which the structure is capable of).
Claim 18/15: Casenhiser teaches wherein the front wall [a lower wall] [wall] [a stop or barrier] [finger-gripping portion] (Figure 1, Element 8, 7, 6 & 4, respectively as all these elements collectively compromise the front wall) comprises:
a first portion [finger-gripping portion] (Figure 1, Element 4) against which a knuckle of the finger abuts when the finger insert is in use [finger-gripping portion 4 may easily slip onto and comfortably encircle the outer joint of a finger] (Col. 2, Line 28-29); and
a second portion [a stop or barrier] (Figure 1, Element 6) arranged at an angle [slope] with respect to the first portion [barrier 6 has a wall 7…wall 7 may therefore slope upwardly and forwardly toward the front end 2] (Col. 2, Line 47 & 51-53 and as shown in Figure 1),
wherein a nail of the finger abuts against the second portion when the finger insert is in use [wall 7…may also be curved in the transverse direction to accommodate the contour of the inserted finger] (Col. 2, Line 51-55 and Figure 5, Element 7).
Claim 19/15: Casenhiser teaches wherein the housing [elongate, flexible sheath] (Claim 1, Figure 1 and Figure 4, Element 1) is sealed [closed end] (Col. 2, Line 59-60) to contain a liquid around the nailfold of the finger when the finger insert is in use.
Examiner’s Note: The invention of Casenhiser is described as close end (Figure 1 and Col. 2, Line 59-60) and the invention of Casenhiser is described as being manufactured from using polyvinyl chloride plastic (Col. 2, Line 36-39). As evidenced by Teng (U.S. Patent 6,154,285 A), polyvinyl chloride (Col. 7, Line 24) is capable of retaining fluid (See Abstract of Teng). Those cited facts together support the conclusion that the housing of Casenhiser is capable of being fluid-tight.
Allowable Subject Matter
Claim(s) 1-14 is/are allowed.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Bonner (U.S. Patent 10,485,309 B1) – Bonner teaches a finger mountable implement comprising a body defining an open interior space. The body comprises a side wall having an open bottom end and an open top end, and a top panel proximate to the open top end. An interior surface of the side wall includes a figured finger grip portion configured to releasably engage a finger of a user when the finger is inserted into the interior space so as to removably secure the finger within the body.
Maev et al. (U.S. Patent Application 2012/0177257 A1) – Maev teaches a biometric sensor for generating a three-dimensional representation of a portion of a finger, the finger comprising a three-dimensional structure including a surface tissue layer and a subsurface tissue layer, the biometric sensor comprising: a platen; a first transducer; a drive system; a controller; and a software module. The platen is configured to receive the finger. The first transducer is arranged about the platen, configured to scan at least a portion of the finger by transmitting ultrasound waves toward the finger and receiving the ultrasound waves after the waves reflect off of the finger, and further configured to output signals based upon the received ultrasound waves. The drive system is configured to motivate the set of transducers arcuately about a central axis substantially parallel to the length of the finger to be scanned. The controller is configured to control the motion of the drive system. The software module is configured to receive a form of the signals from the first transducer and to compose the form of the signals into a three-dimensional representation of at least a portion of the surface tissue layer of the finger.
Abraham et al. (U.S. Patent 6,634,367 B2) – Abraham teaches a finger tip enclosure apparatus for fitting over and sealingly enclosing a user finger tip and its fingernail includes an enclosure shell having a tubular shell side wall with a side wall proximal end and a side wall distal end, the side wall proximal end including a sealing structure protruding radially inward for making circumferential sealing contact with side surfaces of a human finger, the side wall distal end being sealingly joined to and closed by a distal end wall. The apparatus may retain a fingernail polish solvent in prolonged contact with the fingernail so that polish on the fingernail is dissolved or softened for removal while freeing the to move about and perform manual tasks, and alternatively may retain medication in prolonged contact with the finger tip and fingernail, and still alternatively may shield the finger tip and fingernail from contamination and abrasion.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HELENE C BOR whose telephone number is (571)272-2947. The examiner can normally be reached Mon - Fri 10:30 - 6:30.
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/Helene Bor/Examiner, Art Unit 3797
/JOSEPH M SANTOS RODRIGUEZ/Primary Examiner, Art Unit 3797
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