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 .
Specification
The disclosure is objected to because of the following informalities: On page 1, in paragraph 0001, line 2: The phrase --and issued as U.S. Patent No. 12,453,663 on October 28, 2025-- should be inserted after the date “June 11, 2024”.
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); and 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 1-11 and 14-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of U.S. Patent No. 11,197,790. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-11 and 14-20 are generic to all that is recited in claims 1-17 of U.S. Patent No. 11,197,790. In other words, claims 1-17 of U.S. Patent No. 11,197,790 fully encompass the subject matter of claims 1-11 and 14-20 and therefore anticipate claims 1-11 and 14-20. Since claims 1-11 and 14-20 are anticipated by claims 1-17 of the patent, they are not patentably distinct from claims 1-17. Thus the invention of claims 1-17 of the patent is in effect a “species” of the “generic” invention of claims 1-11 and 14-20. It has been held that the generic invention is anticipated by the species, see In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Since claims 1-11 and 14-20 are anticipated (fully encompassed) by claims 1-17 of the patent, claims 1-11 and 14-20 are not patentably distinct from claims 1-17, regardless of any additional subject matter present in claims 1-17.
Claims 1-11 and 14-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of U.S. Patent No. 11,672,711. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-11 and 14-20 are generic to all that is recited in claims 1-17 of U.S. Patent No. 11,672,711. In other words, claims 1-17 of U.S. Patent No. 11,672,711 fully encompass the subject matter of claims 1-11 and 14-20 and therefore anticipate claims 1-11 and 14-20. Since claims 1-11 and 14-20 are anticipated by claims 1-17 of the patent, they are not patentably distinct from claims 1-17. Thus the invention of claims 1-17 of the patent is in effect a “species” of the “generic” invention of claims 1-11 and 14-20. It has been held that the generic invention is anticipated by the species, see In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Since claims 1-11 and 14-20 are anticipated (fully encompassed) by claims 1-17 of the patent, claims 1-11 and 14-20 are not patentably distinct from claims 1-17, regardless of any additional subject matter present in claims 1-17.
Claims 1-11 and 14-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of U.S. Patent No. 12,042,435. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-11 and 14-20 are generic to all that is recited in claims 1-16 of U.S. Patent No. 12,042,435. In other words, claims 1-16 of U.S. Patent No. 12,042,435 fully encompass the subject matter of claims 1-11 and 14-20 and therefore anticipate claims 1-11 and 14-20. Since claims 1-11 and 14-20 are anticipated by claims 1-16 of the patent, they are not patentably distinct from claims 1-16.
Thus the invention of claims 1-16 of the patent is in effect a “species” of the “generic” invention of claims 1-11 and 14-20. It has been held that the generic invention is anticipated by the species, see In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Since claims 1-11 and 14-20 are anticipated (fully encompassed) by claims 1-16 of the patent, claims 1-11 and 14-20 are not patentably distinct from claims 1-16, regardless of any additional subject matter present in claims 1-16.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,453,663. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-20 are generic to all that is recited in claims 1-20 of U.S. Patent No. 12,453,663. In other words, claims 1-20 of U.S. Patent No. 12,453,663 fully encompass the subject matter of claims 1-20 and therefore anticipate claims 1-20. Since claims 1-20 are anticipated by claims 1-20 of the patent, they are not patentably distinct from claims 1-20 of the patent. Thus the invention of claims 1-20 of the patent is in effect a “species” of the “generic” invention of claims 1-20. It has been held that the generic invention is anticipated by the species, see In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Since claims 1-20 are anticipated (fully encompassed) by claims 1-20 of the patent, claims 1-20 are not patentably distinct from claims 1-20 of the patent, regardless of any additional subject matter present in claims 1-20 of the patent.
Claims 12 and 13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11,197,790 in view of U.S. Patent Application
Publication No. 2013/0168987 to Valentino et al., or alternatively, as being unpatentable over claim 1 of U.S. Patent No. 11,672,711 in view of Valentino et al. ‘987, or alternatively still, as being unpatentable over claims 1 and 11 of U.S. Patent No. 12,042,435 in view of Valentino et al. ‘987. Claim 1 of U.S. Patent No. 11,197,790; claim 1 of U.S. Patent No. 11,672,711; and claims 1 and 11 of U.S. Patent No. 12,042,435 do not specifically disclose conditions wherein the sensor comprises a strain gauge operably coupled between the base and the support frame, and wherein the strain gauge is operably coupled to the lift mechanism. Valentino et al. ‘987 provides the basic teaching of a patient transport apparatus (10) comprising a base (20, 40) and a support frame (12) comprising a patient support surface configured to support a patient (as shown in Figures 1-5C and as described on page 2, in paragraphs 0028 & 0030-0033 an on page 3, in paragraph 0033); a lift mechanism (16, 18) interposed between the base (20, 40) and the support frame (12) and being configured to move between a plurality of vertical configurations (as shown in Figures 1-4 and as described on page 3, in paragraphs 0036-0039); and a sensor (62, 64) operably coupled to the lift mechanism (16, 18), wherein the sensor comprises a strain gauge which is operably coupled to the support frame (12) but may be located in other areas of the patient support apparatus (as shown in Figures 1-4 and as described on page 6, in paragraph 0059). The skilled artisan would have found it obvious before the effective filing date of the claimed invention to combine the respective patient transport apparatuses recited in claim 1 of U.S. Patent No. 11,197,790; claim 1 of U.S. Patent No. 11,672,711; and claims 1 and 11 of U.S. Patent No. 12,042,435 with the strain gauge taught in Valentino et al. ‘987 with a reasonable expectation of success because this would have achieved the desirable result of providing a simple and conventional means for readily detecting the operational state of the lift
mechanism, thereby helping to ensure that the lift mechanism is functioning properly, as taught by Valentino et al. ‘987 (page 6, paragraph 0059).
Allowable Subject Matter
The examiner respectfully asserts that none of the limitations of the patient transport apparatus as currently recited in claims 1-20 can be rejected under 35 U.S.C. §§§ 102, 103 and 112; accordingly, claims 1-20 are considered as being allowable if the double patenting rejections indicated above were fully overcome.
Conclusion
The prior art made of record and not relied upon is considered pertinent to Applicant's disclosure: Mansfield et al. ‘044, Mansfield et al. ‘218, Mansfield et al. ‘674, Mansfield et al. ‘072 and Mansfield et al. ‘648.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT G SANTOS whose telephone number is (571)272-7048. The examiner can normally be reached Monday-Friday 9am-11:30am and 2pm-7:30pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Justin C Mikowski can be reached at 571-272-8525. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ROBERT G SANTOS/Primary Examiner, Art Unit 3673
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