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(s) 41 is/are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 of U.S. Patent No. 11298519 in view of U.S. Patent No. 11793994. Although the claims at issue are not identical, they are not patentably distinct from each other because both application and US Patent claim a method for improving kidney function in a patient, comprising the steps of: inserting a first blood pump into a heart of a patient; operating the first blood pump; inserting a second blood pump into an inferior vena cava of the patient; operating the second blood pump and the first blood pump such that while the second blood pump is operating, the first blood pump is also operating; monitoring a renal parameter; and adjusting operation of at least one of the first blood pump and the second blood pump to achieve a target level of the renal parameter. U.S. Patent No. 11793994 discloses an anchoring, by an anchoring device, the second blood pump to the inferior vena cava of the patient while the second blood pump is operating (column 6 lines 7-10, the second mechanical assist device also comprises an anchoring device, configured to anchor the second mechanical assist device to the inferior vena cava while the second mechanical assist device is operating). This allows a secure placement of the pump at the desired location in the heart. Therefore, it would have been obvious to one of ordinary skill in the art, at the time of filing, to modify the device of U.S. Patent No. 11298519 by adding an anchoring, by an anchoring device as taught by U.S. Patent No. 11793994 in order to facilitate a secure placement of the pump at the desired location in the heart.
Claim(s) 41 is/are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 of U.S. Patent No. 11793994 in view of U.S. Patent No. 11298519. Although the claims at issue are not identical, they are not patentably distinct from each other because both application and US Patent claim a method for improving kidney function in a patient, comprising the steps of: inserting a first blood pump into a heart of a patient; operating the first blood pump; inserting a second blood pump into an inferior vena cava of the patient; operating the second blood pump and the first blood pump such that while the second blood pump is operating, the first blood pump is also operating; monitoring a renal parameter; and adjusting operation of at least one of the first blood pump and the second blood pump to achieve a target level of the renal parameter. U.S. Patent No. 11298519 discloses an anchoring, by an anchoring device, the second blood pump to the inferior vena cava of the patient while the second blood pump is operating (column 6 lines 7-10, the second mechanical assist device also comprises an anchoring device, configured to anchor the second mechanical assist device to the inferior vena cava while the second mechanical assist device is operating). This allows a secure placement of the pump at the desired location in the heart. Therefore, it would have been obvious to one of ordinary skill in the art, at the time of filing, to modify the device of U.S. Patent No. 11793994 by adding an anchoring, by an anchoring device as taught by U.S. Patent No. 11298519 in order to facilitate a secure placement of the pump at the desired location in the heart.
Allowable Subject Matter
Claims 42-60 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.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JON ERIC C MORALES whose telephone number is (571)272-3107. The examiner can normally be reached Monday-Friday 830AM-530PM CST.
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/JON ERIC C MORALES/Primary Examiner, Art Unit 3796
/J.C.M/Primary Examiner, Art Unit 3796