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.
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 19 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11490946. Although the claims at issue are not identical, they are not patentably distinct from each other because the patent claim is more narrow than claim 19.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 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)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 19-20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sharma et al., US 20160354140, herein referred to as “Sharma”.
Regarding claim 19, Sharma teaches: A vapor ablation system (Figs. 1-2 and 15) comprises: a controller (Fig. 1A and Fig. 15G); a fluid supply to supply liquid (Fig. 1A and Figs. 15A-H); and a handpiece coupling the liquid to an elongate catheter (Figs. 15A-H) wherein the handpiece comprises a vapor generating element (abstract) held in a coiled arrangement by a mandrel (abstract and [0811]) and wherein the vapor generating element is operable with the controller to heat liquid flowing therethrough into vapor ([0581]), and pass the vapor through the elongate catheter ([0581]).
Regarding claim 20, Sharma teaches: A method for ablating tissue with condensable vapor (abstract)) comprises: transporting a liquid through an electrically conducting tube ([0187] and [0762] where the electrically conducting tube is seen as the assembly of tube, core and coil and [0619]); applying a voltage difference across the electrically conducting tube from a first end to a second end thereby converting the liquid to a condensable vapor ([0771] and [0619]); delivering air across the electrically conducting tube for cooling the electrically conducting tube ([0716]); and delivering the condensable vapor to the tissue ([0129]).
Allowable Subject Matter
Claims 1-18 and 21 are allowed.
These claims are seen as allowable over the prior art of Humbert, US 20140005594 and Sharma, US 10842557 and US 20160354140.
The Humbert reference does disclose a handheld vapor ablation device but does not talk about cooling of the coil element or a fan element in the body of the handheld device.
The Sharma reference does disclose vapor ablation device where the coil is external to the handle of the device and the fan is external as well but does not teach the aspects of the handheld vapor ablation device.
It would not be obvious to combine these two references because there is no motivation for putting a fan into the handheld device of Humbert and doing so would be seen as hindsight reasoning.
Furthermore, there is no double patenting with the parent application of US 11490946 because the fan is not seen as obvious with the specifics of how its operable.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOANNE M RODDEN whose telephone number is (303)297-4276. The examiner can normally be reached Monday - Friday 9:00 AM-5:00 PM MST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jonathan Moffat can be reached at 571-272-4390. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOANNE M RODDEN/Supervisory Patent Examiner, Art Unit 3794
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