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 .
Information Disclosure Statement
The IDS form(s) submitted on 5/4/2026 is/are in compliance with the requirements of the provisions of 37 CFR 1.97. Accordingly, the information disclosure(s) are being considered by the examiner.
Response to Amendment
This office action is responsive to the claim amendments filed on 5/4/2026. As directed by the amendment: claims 1, 7, and 29 have been amended; claims 5 and 13-28 are cancelled; and no claims have been added. Thus, claims 1-4, 6-12, and 29-37 are presently pending in this application.
Applicant’s amendments to claim 7 has overcome Examiner’s rejection under 35 USC § 112 and is therefore withdrawn.
Applicant’s amendments to claims 1 and 29 have overcome Examiner’s rejections under 35 USC § 102 and 103 and are therefore withdrawn.
Response to Arguments
Applicant's arguments with respect to amended claims 1 and 29 incorporating subject matter of previous dependent claim 5 to overcome the prior art of US 2005/0187519 to Harris et al. is considered persuasive.
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.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 and 3 of U.S. Patent No. US 11,083,871 B2. Although the claims at issue are not identical, they are not patentably distinct from each other claimed instrument is anticipated by the “needle configured to ablate tissue” previously claimed
Claim 2 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 2 of U.S. Patent No. US 11,083,871 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the claimed instrument is anticipated by the “needle configured to ablate tissue” previously claimed
Claim 10 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 6 of U.S. Patent No. US 11,083,871 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the claimed instrument is anticipated by the “needle configured to ablate tissue” previously claimed
Claim 11 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 7 of U.S. Patent No. US 11,083,871 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the claimed instrument is anticipated by the “needle configured to ablate tissue” previously claimed
Claim 12 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 8 of U.S. Patent No. US 11,083,871 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the claimed instrument is anticipated by the “needle configured to ablate tissue” previously claimed
Allowable Subject Matter
Claim(s) 3-4, 6-9 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims and if the double patenting rejection is overcome.
Claims 29-37 are allowed.
The following is an examiner' s statement of reasons for allowance: The claims in this application are allowed because the prior art of record fails to disclose either singly or in combination the claimed catheter.
The closest prior art of record is US 2005/0187519 A1 to Harris et al.
Regarding claim 29, Harris fails to teach among all the limitations or render obvious “an advancing mechanism including a clutch configured to selectively engage and move the instrument relative to the catheter” in combination with the other limitations. Dependent claims 30-37 are allowable based upon their dependency from claim 29.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Mark A Igel whose telephone number is (571)272-7015. The examiner can normally be reached Monday through Thursday 11 am to 5 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, Bhisma Mehta can be reached at (571) 272-3383. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/M.A.I./Examiner, Art Unit 3783
/BHISMA MEHTA/Supervisory Patent Examiner, Art Unit 3783
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