DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
The action is in response to the application filed on 12/23/2025. Claims 21-29, 33-46 are pending and examined below.
Election/Restrictions
In response to the Requirement for Restriction/Election dated 05/05/2026, Applicant cancelled claims 30-32. As such the Restriction is moot.
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 21-29, 33-46 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-20 of U.S. Patent No. 11571149. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of U.S. Patent No. 11571149 are narrower than that of the Instant Application and thus necessarily meet the limitations.
Conclusion
Claims 21-29, 33-46 are rejected under a Double Patenting Rejection but claim 21 provides subject matter not found in the prior art search.
Regarding claim 21, US 20110213225 A1 (Bernstein) teaches an apparatus for in vivo glucose monitoring of a user with an in vivo glucose sensor (abstract), the apparatus comprising:
(1) a sensor control device (110; paragraph [0086]; Figures 1-4) configured to be worn on the user's skin (paragraph [0007], [0086]), the sensor control device comprising:
a sensor control device housing defining an enclosure (as shown in Figures 1-4); and
sensor electronics disposed in the enclosure (as shown in Figures 1-4), the sensor electronics comprising in vivo glucose monitoring circuitry (300; paragraph [0122]; Figures 1-4), a power source (350; paragraph [0122]; Figures 1-4), and a magnetic (paragraph [0199]);
wherein the in vivo glucose monitoring circuitry is configured to electrically couple with an in vivo glucose sensor having a distal end comprising a glucose- responsive enzyme (paragraph [0086]-[0088]; as shown in Figures 1-4);
(2) an applicator (150; paragraph [0086]; as shown in Figures 1-4), comprising:
an applicator housing (150; paragraph [0086]; as shown in Figures 1-4);
a removable end cap configured to couple with the applicator housing by a plurality of complimentary threads (paragraph [0086], [0114], [0303]), wherein the applicator housing and the removable end cap define an interior of the applicator (paragraph [0086], [0114], [0303]);
a sharp (101; paragraph [0114]).
US 20120078071 A1 (Bohm) teaches generally a magnet to switch an electronic sensor from a storage mode to an operational mode (paragraph [0164]).
US 20090076360 A1 (Brister) teaches a bi-stable magnetic reed switch is provided and configured to turn the power source on (paragraph [0327]).
However, the prior art fails to teach or suggest “A sensor control device having a magnetic activation sensor; wherein the magnetic activation sensor is configured to transition the sensor control device from a first power state to a second power state upon removal of a magnetic field; and an applicator having a magnet configured to generate the magnetic field, wherein the magnet is disposed in the removable end cap, wherein the removal of the magnetic field results from removal of the removable end cap from the application housing” in combination with the other limitations of the claim.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ABID A MUSTANSIR whose telephone number is (408)918-7647. The examiner can normally be reached M-F 10 am to 6 pm Pacific Time.
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/ABID A MUSTANSIR/Examiner, Art Unit 3791
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