DETAILED CORRESPONDENCE
Note: This office action is in response to communication filed on 12/15/2025.
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 .
Status of Claims
Claim(s) 1, 3-5, 8-10, and 12-18 is/are pending in the application.
Claim(s) 1, 3-5, 8-10, and 12-18 is/are examined on the merits.
Information Disclosure Statement
The new information disclosure statement(s) (IDS) submitted on 12/15/2025 in compliance with the provisions of 37 CFR 1.97. Accordingly, the new information disclosure statement(s) has/have been considered by the examiner.
Response to Arguments
The terminal disclaimer filed on 12/12/2025 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of U.S. Patent No. 11553935 has been reviewed and is accepted. The terminal disclaimer has been recorded.
Upon further consideration, Examiner notes that claims 1, 3-5, 8-10, and 12-18 stand rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3-4, 8-10, and 12-18 of copending Application No. 18/136019 (see Double Patenting section below), claims 1, 3-5, 8-10 and 16-18 of copending Application No. 18/136046 (see Double Patenting section below). In order to overcome the nonstatutory double patenting rejections, Applicant's reply must include a terminal disclaimer over copending Application No. 18/136019 and a terminal disclaimer over copending Application No. 18/136046.
With respect to the drawing objection(s), applicant’s amendment(s) to the drawing(s) has/have overcome the objection(s).
With respect to the claim rejection(s) under 35 U.S.C. § 112(b), applicant's amendment(s) to the claim(s) has/have overcome the claim rejection(s).
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 1, 3-4, 8-10, and 12-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3-4, 8-10, and 12-18 of copending Application No. 18/136019 (reference application).
Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1, 3-4, 8-10, and 12-18 of the reference application contain a clot capture module for use in a thrombectomy system, comprising: a housing; a clot capture chamber in the housing; a window in the housing to permit visual inspection of the clot capture chamber; a filter in the clot capture chamber, the filter being visible through the window, the filter having an upstream surface and a downstream surface; an incoming flow path configured to direct incoming blood from an aspiration catheter against the upstream surface of the filter; an aspiration control valve in the incoming flow path, the aspiration control valve configured to block flow of incoming aspirated blood until actuated to permit inflow of aspirated blood; and an outgoing flow path configured to direct blood from a downstream side of the filter to a remote vacuum canister. The scope of the claimed limitations in the reference application encompasses the claimed limitations in the instant application.
Regarding instant claim 1, claim 1 of the reference application discloses all of the limitations of instant claim 1.
Regarding instant claim 3, claim 3 of the reference application discloses all of the limitations of instant claim 3.
Regarding instant claim 4, claim 4 of the reference application discloses all of the limitations of instant claim 4.
Regarding instant claim 8, claim 8 of the reference application discloses all of the limitations of instant claim 8.
Regarding instant claim 9, claim 9 of the reference application discloses all of the limitations of instant claim 9.
Regarding instant claim 10, claim 10 of the reference application discloses all of the limitations of instant claim 10.
Regarding instant claim 12, claim 12 of the reference application discloses all of the limitations of instant claim 12.
Regarding instant claim 13, claim 13 of the reference application discloses all of the limitations of instant claim 13.
Regarding instant claim 14, claim 14 of the reference application discloses all of the limitations of instant claim 14.
Regarding instant claim 15, claim 15 of the reference application discloses all of the limitations of instant claim 15.
Regarding instant claim 16, claim 16 of the reference application discloses all of the limitations of instant claim 16.
Regarding instant claim 17, claim 17 of the reference application discloses all of the limitations of instant claim 17.
Regarding instant claim 18, claim 18 of the reference application discloses all of the limitations of instant claim 18.
Claims 1, 3-4, 8-10, and 12-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3-5, 8-10, and 16-18 of copending Application No. 18/136046 (reference application).
Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1, 3-5, 8-10, and 16-18 of the reference application contain a clot capture module for use in a thrombectomy system, comprising: a housing; a clot capture chamber in the housing; a window in the housing to permit visual inspection of the clot capture chamber; a filter in the clot capture chamber, the filter being visible through the window, the filter having an upstream surface and a downstream surface; an incoming flow path configured to direct incoming blood from an aspiration catheter against the upstream surface of the filter; an aspiration control valve in the incoming flow path, the aspiration control valve configured to block flow of incoming aspirated blood until actuated to permit inflow of aspirated blood; and an outgoing flow path configured to direct blood from a downstream side of the filter to a remote vacuum canister. The scope of the claimed limitations in the reference application encompasses the claimed limitations in the instant application.
Regarding instant claim 1, claim 1 of the reference application discloses all of the limitations of instant claim 1.
Regarding instant claim 3, claim 3 of the reference application discloses all of the limitations of instant claim 3.
Regarding instant claim 4, claim 4 of the reference application discloses all of the limitations of instant claim 4.
Regarding instant claim 5, claim 5 of the reference application discloses all of the limitations of instant claim 5.
Regarding instant claim 16, claim 16 of the reference application discloses all of the limitations of instant claim 16.
Regarding instant claim 17, claim 17 of the reference application discloses all of the limitations of instant claim 17.
Regarding instant claim 18, claim 18 of the reference application discloses all of the limitations of instant claim 18.
Allowable Subject Matter
Claims 1, 3-5, 8-10, and 12-18 contain allowable subject matter which is allowable over prior art; however, claims 1, 3-5, 8-10, and 12-18 stand rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3-4, 8-10, and 12-18 of copending Application No. 18/136019 (see Double Patenting section above), claims 1, 3-5, 8-10 and 16-18 of copending Application No. 18/136046 (see Double Patenting section above).
In order to overcome the nonstatutory double patenting rejections, Applicant's reply must include a terminal disclaimer over copending Application No. 18/136019 and a terminal disclaimer over copending Application No. 18/136046.
Claim 1 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
The reasons for indicating allowable subject matter are the same as those presented in the Office Action filed on 08/18/2022 and 12/09/2022 of Application number 17/857598.
The closest prior arts are Shippert (US PGPUB 20090287190) and Deville (US PAT 11406402).
Regarding claim 1, Shippert discloses a module/device 400 (¶0063 and Fig. 4) comprising a housing 104, a chamber 108, and a normally closed aspiration control valve 406 (a stopcock 406: ¶0063 and Fig. 4) configured to block flow of incoming aspirated blood until actuated to permit inflow of aspirated blood (¶0063). Shippert does not disclose the clot capture module configured to reside within a sterile field while the aspiration pump and canister reside outside of the sterile field. Examiner did not find any teachings/motivations to reside the clot capture module within a sterile field while the aspiration pump and canister reside outside of the sterile field. In addition, the device 400 of Shippert is a tissue transplantation device, not a clot capture module for use in a thrombectomy system.
Denville discloses a clot capture module 200 for use in a thrombectomy system (Col. 30, lines 16-55 and Fig. 18), the clot capture module (200) in combination with a vacuum line leading to an aspiration pump and a canister (a vacuum line leading to a vacuum pump 80 and a standard aspiration canister: Col. 41, lines 22-31). Denville further discloses the clot capture module (200) comprising: a housing (a housing of 200: Fig. 18); a clot capture chamber in the housing (a trap chamber 224: Col. 30, lines 27-57 and Fig. 18); a window in the housing to permit visual inspection of the clot capture chamber (200 is see-through: Col. 30, line 65 – Col. 31, line 3); and a filter in the clot capture chamber (a filter 222: Col. 30, lines 27-57 and Fig. 18). Deville does not disclose the clot capture module is configured to reside within a sterile field while the aspiration pump and canister reside outside of the sterile field. Examiner did not find any teachings/motivations to reside/place the clot capture module within a sterile field while residing the aspiration pump and canister outside of the sterile field because the thrombus trap 200 of Deville is placed in-line with the vacuum pump and the canister (Col. 30, lines 16-27 and Fig. 18).
Therefore, claim 1 and its dependent claims 3-5, 8-10, and 12-18 are deemed novel and non-obvious over the prior arts of record.
No other prior art was located that fairly suggested the claimed invention in whole or in part, along with the requisite motivation for combining to render the claimed invention obvious.
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 NHU Q TRAN whose telephone number is (571)272-2032. The examiner can normally be reached Monday-Thursday 8:00-5:00 (PST).
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, SARAH AL-HASHIMI can be reached at (571) 272-7159. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NHU Q. TRAN/Examiner, Art Unit 3781
/SARAH AL HASHIMI/Supervisory Patent Examiner, Art Unit 3781