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 the invention of Group I, comprising claims 1-15 in the reply filed on 01/07/2026 is acknowledged.
Claims 16-19 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 01/07/2026.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the one or more “drive motors” located in the motor drive base recited in claim 1 must be shown or the feature(s) canceled from the claim(s). No new matter should be (Note: the drawings depict motor drive base 22, 302 in Figs. 3 and 15. However, the recited drive motors are not shown on the drawings).
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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 of the instant application is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of Wenderow et al. U.S. Patent No. 10,987,491 (hereinafter “US Pat. 491”). Although the claims at issue are not identical, they are not patentably distinct from each other because they are directed to analogous robotic catheter systems, the system comprising:
a motor drive base comprising one or more drive motors located in the motor drive base (a motor drive base comprising one or more drive motors located in the motor drive base); a cassette including a cassette housing, the housing including a front end, a rear end, a sidewall, a first channel, and a second channel (a cassette including a housing, a first pair of engagement surfaces, and a second pair of engagement surfaces; the housing including a front end, a rear end, a sidewall, a first channel, and a second channel); a first axial drive mechanism supported by the cassette housing and configured to releasably engage and impart axial movement to a guide wire along a longitudinal axis of the guide wire; wherein the guide wire extends out of a rear of the first axial drive mechanism and exits a front end of the cassette housing; (a first pair of engagement surface arranged to contact a guide wire with pressure such that when the engagement surfaces are driven, axial movement is imparted to the guide wire; wherein the guide wire extends along the first channel, through the rear end of the housing and through the front end of the housing); and a second axial drive mechanism configured to releasably engage and impart axial movement to a catheter device along a longitudinal axis of the catheter device; wherein the catheter device exits the front end of the cassette housing over the guide wire (second pair of engagement surfaces arranged to contact a catheter with pressure such that when the engagement surfaces are driven, axial movement is imparted to the catheter; wherein the catheter device extends along the second channel, the second channel arranged at an angle with respect to the first channel); wherein the motor drive base further includes one or more motor couplers configured to couple the one or more motors to the axial drive mechanisms within the cassette; and (a motor drive base comprising one or more drive motors located in the motor drive base).
Allowable Subject Matter
Claims 2-15 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AHMED M FARAH whose telephone number is (571)272-4765. The examiner can normally be reached Mon - Fri. 9:30AM -10:30 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Niketa Patel can be reached at 571-272-4156. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/AHMED M FARAH/Primary Examiner, Art Unit 3792
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