DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Election/Restrictions
Applicant’s election without traverse of Species A drawn to Figures 2-12 in the reply filed on 01/14/2026 is acknowledged.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 01/15/2026 was considered by the examiner.
The Applicant should note that the large number of references in the attached information disclosure statements (IDSs) have been considered by the Examiner in the same manner as other documents in Office search files are considered by the Examiner while conducting a search of the prior art in a proper field of search (See MPEP 609.05(b)). The Applicant is requested to point out any particular references in the IDSs which they believe may be of particular relevance to the instant claimed invention in response to this office action (see suggestion 13 of MPEP 2004).
Claim Objections
Claim 39 is objected to because of the following informalities:
Claim 39, line 3: –blood– should be inserted after “first amount of the”.
Appropriate correction is required.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
No limitations were interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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.
Claim 33, 40-49, 52, and 54 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.
Claim 33 recites “the first seal member and the first portion of the housing collectively contain a first amount of the blood in the inner volume” in lines 2-3, which is unclear in light of the specification. The claim language indicates that the first seal and the first portion of the housing alone contain the first amount of blood in the inner volume. However, the specification indicates that other components are required for containing the first amount of blood. The specification depicts a first plunger 255 which includes a seal element 257 (i.e., a first seal member) which forms a fluid tight seal with an inner surface of walls 205 to form the fluid reservoir 280 (Figs. 7-10 and ¶ [1059]). However, the specification indicates that the fluid reservoir 280 is further defined by the distal surface of the second plunger 260 and the outer surface of the first control member 231 (Fig. 8 and ¶ [1064]). Therefore, it is unclear whether the first seal member and the first portion of the housing alone contain a first amount of the blood in the inner volume or not. For the purposes of examination, the recitation will be interpreted to be “the first seal member and the first portion of the housing collectively at least partially contain a first amount of the blood in the inner volume”. Claims 40, 42, 52, and 54 are rejected for reciting similar limitations which are unclear for similar reasons.
Claims 41-49 are rejected by virtue of their dependence from claim 40.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of pre-AIA 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for a patent.
(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of application for patent in the United States.
Claims 31-60 are rejected under pre-AIA 35 U.S.C. 102(b) as being anticipated by US 2005/0161112 A1 (Ehwald) (cited by applicant).
With regards to claim 31, Ehwald discloses an apparatus (Fig. 1a depicts an automatic sample collector), comprising: a housing including an inlet port and an outlet port (¶ [0013] discloses the sample collector can be comprised of a single solid matter body; Fig. 1a and ¶ [0010] depict an inlet at the supply line 2 and an outlet), a first portion of the housing at least partially defining an inner volume in fluid communication with the inlet port (Fig. 1a and ¶¶ [0010]-[0011] depict a container 3, liquid inlet 6, and gas discharge 7, the combination of which amount to a first portion in fluidic communication with the supply line 2); a first seal member in the housing (Fig. 1a depicts a gas-permeable liquid barrier 5; ¶ [0006] describes the gas-permeable liquid barrier), the first seal member configured to facilitate a pressure differential in the inner volume to draw a flow of blood from the inlet port into the inner volume (Fig. 1a and ¶¶ [0011], [0015] indicate that the liquid barrier 5 maintains a pressure differential such that the collection container 3 is first filled; ¶¶ [0018], [0026] indicates that the sample collector is capable of being used to collect blood), the inner volume configured to contain the blood therein (¶ [0011] discloses the container 3, liquid inlet 6, and gas discharge 7 are capable of containing the liquid); a fluid flow path defined at least in part by a second portion of the housing (see annotated Fig. 1a with regards to the fluid flow path), the fluid flow path including a first end in fluid communication with the inlet port and a second end in fluid communication with the outlet port (annotated Fig. 1a depicts a left end of the fluid flow path being in fluid communication with the supply line 2 and a right end of the fluid flow path being in fluid communication with the outlet port); and a second seal member in the housing (Fig. 1a depicts a leftmost gas-permeable liquid barrier 4), the second seal member configured, in a first position, to obstruct at least a portion of the fluid flow path (Fig. 1a and ¶ [0015] depict the liquid barrier 4 being impermeable to a sample liquid in an uncollapsed position, which causes it to obstruct the fluid flow path), the second seal member configured to be moved to a second position to establish fluid communication between the inlet port and the fluid flow path such that a subsequent flow of the blood is conveyed through the fluid flow path from the inlet port and to the outlet port (Fig. 1a and ¶¶ [0011], [0015] depict the liquid barrier 4 configured to be moved to a collapsed state which allows a subsequent flow of liquid to move through the fluid flow path and towards the outlet).
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Annotated Fig. 1a of Ehwald
With regards to claim 32, Ehwald further discloses the first seal member is configured to facilitate the pressure differential in the inner volume to draw the flow of the blood into the inner volume and to the first seal member (Fig. 1a and ¶¶ [0011], [0015] depict the liquid barrier 5 facilitating pressure differentials in the collection container 3 such that fluid flows into the collection container 3 to the liquid barrier 5).
With regards to claim 33, Ehwald further discloses the first seal member forms a seal with a wall of the first portion of the housing such that the first seal member and the first portion of the housing collectively contain a first amount of the blood in the inner volume (Fig. 1a and ¶¶ [0014], [0015] depict the liquid barrier 5, in combination with a wall of the gas discharge 7, form an impermeable barrier for the sample liquid to remain within the container 3).
With regards to claim 34, Ehwald further discloses the first seal member defines a portion of the inner volume (Fig. 1a depict the liquid barrier 5 defines a portion of the volume of the combination of the collection chamber 3, inlet 6, and discharge 7).
With regards to claim 35, Ehwald further discloses the first seal member is configured to facilitate the pressure differential to draw at least a portion of the flow of the blood into the inner volume and to the first seal member (Fig. 1a and ¶¶ [0011], [0015] depict the liquid barrier 5 facilitating pressure differentials in the collection container 3 such that fluid flows into the collection container 3 to the liquid barrier 5).
With regards to claim 36, Ehwald further discloses the inner volume is configured to receive a first amount of the blood (Fig. 1a and ¶¶ [0011], [0015] depict the collection container 3, inlet 6, and discharge 7 are configured to receive a first amount of liquid).
With regards to claim 37, Ehwald further discloses the second seal member in the second position is configured to convey the subsequent flow of the blood through the fluid flow path from the inlet port to the outlet port and past the first amount of the blood contained in the inner volume (Fig. 1a and ¶¶ [0011], [0015] depict the collapse of the liquid barrier 4 allowing liquid to flow to the next collection chamber, towards the outlet, and past the first collection chamber).
With regards to claim 38, Ehwald further discloses the second seal member is configured to be moved from the first position to the second position in response to the first amount of the blood being contained in the inner volume (Fig. 1a and ¶¶ [0011], [0015] depict the collapse of the liquid barrier 4 occurring in response to the filling of the collection chamber 3)
With regards to claim 39, Ehwald further discloses wherein the second seal member in the first position is configured to separate the inlet port from at least the portion of the fluid flow path such that the pressure differential in the inner volume draws a first amount of the from the inlet port into the inner volume (Fig. 1a and ¶¶ [0011], [0015] depict the liquid barrier 4, in an uncollapsed position, separating the inlet from portions of the fluid flow path such that collection container 3 is filled due to a pressure differential), the second seal member in the second position is configured such that the first amount of the blood is contained in the inner volume and a second amount of the blood is conveyed through the fluid flow path from the inlet port to the outlet port (Fig. 1a and ¶¶ [0011], [0015] depict the liquid barrier 4, in an collapsed position, allows the liquid to remain in the collection chamber 3 and subsequent liquid to fill the next collection chamber 3 and continue towards the outlet)
With regards to claim 40, Ehwald discloses an apparatus (Fig. 1a depicts an automatic sample collector), comprising: a housing including an inlet port and an outlet port (¶ [0013] discloses the sample collector can be comprised of a single solid matter body; Fig. 1a and ¶ [0010] depict an inlet at the supply line 2 and an outlet); a first seal member in the housing and defining a portion of an inner volume of the housing (Fig. 1a and ¶¶ [0010]-[0011] depict a container 3, liquid inlet 6, and gas discharge 7, the combination of which comprise an inner volume; Fig. 1a depicts a gas-permeable liquid barrier 5 which defines at least a portion of the inner volume; ¶ [0006] describes the gas-permeable liquid barrier), the first seal member configured to (i) facilitate a pressure differential in the inner volume to cause blood to flow from the inlet port into the inner volume (Fig. 1a and ¶¶ [0011], [0015] indicate that the liquid barrier 5 maintains a pressure differential such that the collection container 3 is first filled; ¶¶ [0018], [0026] indicates that the sample collector is capable of being used to collect blood), and (ii) form a seal with a wall of the housing to contain an amount of the blood in the inner volume (Fig. 1a and ¶¶ [0014], [0015] depict the liquid barrier 5, in combination with a wall of the gas discharge 7, form an impermeable barrier for the sample liquid to remain within the container 3); a fluid flow path defined by the housing (see annotated Fig. 1a above with regards to the fluid flow path), the fluid flow path having a first end in fluid communication with the inlet port and a second end in fluid communication with the outlet port (annotated Fig. 1a depicts a left end of the fluid flow path being in fluid communication with the supply line 2 and a right end of the fluid flow path being in fluid communication with the outlet port); and a second seal member in the housing (Fig. 1a depicts a leftmost gas-permeable liquid barrier 4), the second seal member configured, in a first position, to obstruct at least a portion of the fluid flow path (Fig. 1a and ¶ [0015] depict the liquid barrier 4 being impermeable to a sample liquid in an uncollapsed position, which causes it to obstruct the fluid flow path), the second seal member configured, in a second position, such that the amount of the blood is contained in the inner volume and a subsequent amount of the blood flows from the inlet port through the fluid flow path to the outlet port (Fig. 1a and ¶¶ [0011], [0015] depict the liquid barrier 4 configured to be moved to a collapsed state which allows the liquid to remain in the collection chamber 3 and a subsequent flow of liquid to move through the fluid flow path and towards the outlet).
With regards to claim 41, Ehwald further discloses the inner volume is defined in part by a first portion of the housing (Fig. 1a and ¶¶ [0010]-[0011] depict a container 3, liquid inlet 6, and gas discharge 7, the combination of which amount to a first portion) and the fluid flow path is defined in part by a second portion of the housing (annotated Fig. 1a depicts the fluid flow path defined by a second portion of the housing).
With regards to claim 42, Ehwald further discloses the first seal member and the inner volume collectively contain the amount of the blood in the inner volume (Fig. 1a and ¶¶ [0014], [0015] depict the liquid barrier 5, in combination with a wall of the gas discharge 7, form an impermeable barrier for the sample liquid to remain within the container 3).
With regards to claim 43, Ehwald further discloses the first seal member is configured to facilitate the pressure differential in the inner volume to draw the blood from the inlet port into the inner volume and to the first seal member (Fig. 1a and ¶¶ [0011], [0015] depict the liquid barrier 5 facilitating pressure differentials in the collection container 3 such that fluid flows into the collection container 3 to the liquid barrier 5).
With regards to claim 44, Ehwald further discloses the first seal member is configured to transition from a first state to a second state (Fig. 1a and ¶¶ [0011], [0020] depicts the liquid barrier 5 is configured to transition from a first state in which gas flows through the barrier to a second state in which the barrier prevents liquid from flowing through the discharge 7).
With regards to claim 45, Ehwald further discloses the first seal member transitioning from the first state to the second state causes a change in the pressure differential in the inner volume (¶¶ [0011], [0012] depict the transition of the gas-permeable liquid barrier 5 from the first state to the second state causing an increase of pressure in the supply line 2 until the weaker barrier 4 collapses).
With regards to claim 46, Ehwald further discloses the second seal member is configured to be moved to the second position when the first seal member is in the second state (¶¶ [0011], [0012] depict the gas-permeable liquid barrier 5 in the second state causing an increase of pressure in the supply line 2 until the weaker barrier 4 collapses).
With regards to claim 47, Ehwald further discloses the second seal member in the first position is configured to obstruct at least the portion of the fluid flow path such that the pressure differential in the inner volume draws the amount of the blood from the inlet port into the inner volume (Fig. 1a and ¶¶ [0011], [0015] depict the liquid barrier 4, in an uncollapsed position, separating the inlet from portions of the fluid flow path such that collection container 3 is filled due to a pressure differential).
With regards to claim 48, Ehwald further discloses the second seal member is configured to be moved from the first position to the second position in response to the inner volume containing the amount of the blood (Fig. 1a and ¶¶ [0011], [0015] depict the collapse of the liquid barrier 4 occurring in response to the filling of the collection chamber 3)
.
With regards to claim 49, Ehwald further discloses the second seal member in the first position separates the inlet port from at least the portion of the fluid flow path (Fig. 1a and ¶¶ [0011], [0015] depict the liquid barrier 4, in an uncollapsed position, separating the inlet from portions of the fluid flow path).
With regards to claim 50, Ehwald discloses an apparatus (Fig. 1a depicts an automatic sample collector), comprising: a housing including an inlet port and an outlet port (¶ [0013] discloses the sample collector can be comprised of a single solid matter body; Fig. 1a and ¶ [0010] depict an inlet at the supply line 2 and an outlet), the housing defining a fluid flow path and an inner volume (see annotated Fig. 1a above with regards to the fluid flow path; Fig. 1a and ¶¶ [0010]-[0011] depict a container 3, liquid inlet 6, and gas discharge 7, the combination of which comprise an inner volume); a first seal member in the housing (Fig. 1a depicts a gas-permeable liquid barrier 5; ¶ [0006] describes the gas-permeable liquid barrier), the first seal member configured to (i) cause a pressure differential to form in the inner volume to draw a first amount of blood from the inlet port into the inner volume and toward the first seal member (Fig. 1a and ¶¶ [0011], [0020] depicts the liquid barrier 5 being gas-permeable and causing gas to flow through the barrier such that a pressure differential is formed and liquid flows into the inner volume towards the barrier 5), and (ii) form a seal with a wall of the housing to contain, at least in part, the first amount of the blood in the inner volume (Fig. 1a and ¶¶ [0014], [0015] depict the liquid barrier 5, in combination with a wall of the gas discharge 7, form an impermeable barrier for the sample liquid to remain within the container 3); and a second seal member in the housing (Fig. 1a depicts a leftmost gas-permeable liquid barrier 4), the second seal member configured, in a first position, to obstruct at least a portion of the fluid flow path (Fig. 1a and ¶ [0015] depict the liquid barrier 4 being impermeable to a sample liquid in an uncollapsed position, which causes it to obstruct the fluid flow path), the second seal member configured to be moved to a second position to establish fluid communication between the inlet port and the fluid flow path such that a second amount of the blood is conveyed through the fluid flow path from the inlet port to the outlet port (Fig. 1a and ¶¶ [0011], [0015] depict the liquid barrier 4, in an collapsed position, allows for (i) the liquid to remain in the collection chamber 3 and (ii) subsequent liquid to fill the next collection chamber 3 and continue towards the outlet).
With regards to claim 51, Ehwald further discloses the first seal member defines at least a portion of the inner volume (Fig. 1a depict the liquid barrier 5 defines a portion of the volume of the combination of the collection chamber 3, inlet 6, and discharge 7).
With regards to claim 52, Ehwald further discloses the first seal member is configured to form the seal with the wall of the housing to contain the first amount of the blood in the inner volume (Fig. 1a and ¶¶ [0014], [0015] depict the liquid barrier 5, in combination with a wall of the gas discharge 7, form an impermeable barrier for the sample liquid to remain within the container 3) while the fluid flow path conveys the second amount of the blood from the inlet port to the outlet port (Fig. 1a and ¶¶ [0011], [0012] depict the liquid barrier 5 stopping flow while the subsequent liquid flows through the fluid flow path towards the outlet).
With regards to claim 53, Ehwald further discloses the inner volume is defined in part by a first portion of the housing (Fig. 1a and ¶¶ [0010]-[0011] depict a collection container 3, liquid inlet 6, and gas discharge 7, the combination of which amount to a first portion) and the fluid flow path is defined in part by a second portion of the housing (annotated Fig. 1a depicts the fluid flow path defined by a second portion of the housing).
With regards to claim 54, Ehwald further discloses the first seal member and the first portion of the housing collectively contain the first amount of blood in the inner volume (Fig. 1a and ¶¶ [0014], [0015] depict the liquid barrier 5, in combination with a wall of the gas discharge 7, form an impermeable barrier for the sample liquid to remain within the container 3).
With regards to claim 55, Ehwald further discloses the second seal member in the second position is configured such that the second amount of the blood flows through the fluid flow path from the inlet port to the outlet port past the first amount of the blood contained in the inner volume (Fig. 1a and ¶¶ [0011], [0015] depict the collapse of the liquid barrier 4 allowing the subsequent liquid to flow to the next collection chamber, towards the outlet, and past the first collection chamber).
With regards to claim 56, Ehwald further discloses the first seal member is configured to transition from a first state to a second state (Fig. 1a and ¶¶ [0011], [0020] depicts the liquid barrier 5 is configured to transition from a first state in which gas flows through the barrier to a second state in which the barrier prevents liquid from flowing through the discharge 7).
With regards to claim 57, Ehwald further discloses the first seal member transitioning from the first state to the second state causes a change in the pressure differential in the inner volume (¶¶ [0011], [0012] depict the transition of the gas-permeable liquid barrier 5 from the first state to the second state causing an increase of pressure in the supply line 2 until the weaker barrier 4 collapses).
With regards to claim 58, Ehwald further discloses the second seal member is configured to be moved to the second position when the first seal member is in the second state (¶¶ [0011], [0012] depict the gas-permeable liquid barrier 5 in the second state causing an increase of pressure in the supply line 2 until the weaker barrier 4 collapses).
With regards to claim 59, Ehwald further discloses the second seal member is configured to be moved from the first position to the second position based at least in part on the first amount of the blood contained in inner volume (Fig. 1a and ¶¶ [0011], [0015] depict the collapse of the liquid barrier 4 occurring in response to the filling of the collection chamber 3).
With regards to claim 60, Ehwald further discloses the second seal member in the first position separates the inlet port from at least the portion of the fluid flow path (Fig. 1a and ¶¶ [0011], [0015] depict the liquid barrier 4, in an uncollapsed position, separating the inlet from portions of the fluid flow path).
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 31, 32, 34, 36-42, 44-51, 53-60 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of U.S. Patent No. 8,535,241 B2 (“the ‘241 patent”) (cited by Applicant). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims 31, 32, 34, 36-42, 44-51, 53-60 of the instant application are generic to the species or sub-genus of claims 1-13 of the ‘241 patent.
Claims 31-60 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 10,265,007 B2 (“the ‘007 patent”) (cited by Applicant). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims 31-60 of the instant application are generic to the species or sub-genus of claims 1-20 of the ‘007 patent.
Claims 31-60 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 12,471,815 B2 (“the ‘815 patent”) (cited by Applicant). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims 31-60 of the instant application are generic to the species or sub-genus of claims 1-18 of the ‘815 patent.
Conclusion
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/S.C.K./Examiner, Art Unit 3791
/JACQUELINE CHENG/Supervisory Patent Examiner, Art Unit 3791