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.
Claims 60-74, 76-79 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 4, 7-9, 13, 19, 22-26, 35-36, 39, 42, and 44 of U.S. Patent No. 11751904.
Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1, 2, 4, 7-9, 13, 19, 22-26, 35-36, 39, 42, and 44 of Patent 11751904 recites the claimed cannula assembly plurality of cannulas, lumen, vacuum source) and a depth guide slidably coupled to the housing for variable selection of an insertion depth. Therefore, patent claims 1, 2, 4, 7-9, 13, 19, 22-26, 35-36, 39, 42, and 44 is in essence a “species” of the generic invention of application claims 60-79 is “anticipated” by a “species” within the scope of the generic invention. See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Since application claim 60 is anticipated by patent claims 1, 2, 4, 7-9, 13, 19, 22-26, 35-36, 39, 42, and 44, it is not patentably distinct from patent claim 1, 2, 4, 7-9, 13, 19, 22-26, 35-36, 39, 42, and 44.
18358580
60, 71
61
62
63
64, 73
65
66
67
11751904
1
4, 13
2
19
7
22
23
24
18358580
68
69
70
72, 73, 74
75
76
77
78
79
11751904
25
39
26
8
9, 34
35
36
42
44
Claims 60-74, 76-79 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 20, 9, 13, 11, 24-43, 46, 48 of U.S. Patent No. 11759321.
Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1, 20, 9, 13, 11, 24-43, 46, 48 of Patent 11759321 recites the claimed cannula assembly plurality of cannulas, lumen, vacuum source) and a depth guide slidably coupled to the housing for variable selection of an insertion depth. Therefore, patent claim 7 is in essence a “species” of the generic invention of application claim 60 is “anticipated” by a “species” within the scope of the generic invention. See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Since application claims 60-79 is anticipated by patent claims 1, 20, 9, 13, 11, 24-43, 46, 48, it is not patentably distinct from patent claims 1, 20, 9, 13, 11, 24-43, 46, 48.
18358580
60, 61
72
65
62
63
64
65
66
11311309
1, 20
9, 13, 35
11
24
25
27
28
29
18358580
67
68
69
70
71
73
74
75
11311309
30
31
43
32
34
36
37
38
18358580
76
77
78
79
11311309
39
42
46
48
Allowable Subject Matter
Claims 60-74 and 76-79 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 a Terminal Disclaimer filed to overcome the Double Patenting rejections.
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 ANH TIEU DANG whose telephone number is (571)270-3221. The examiner can normally be reached Monday-Thursday (9am-4pm 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, Darwin Erezo can be reached at (571) 272-4695. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANH T DANG/Primary Examiner, Art Unit 3771