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 .
Election/Restrictions
Claims 18-22 & 30 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected species, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on September 30, 2024.
Applicant's election with traverse of Species I, i.e., claims 17 & 23-29, in the reply filed on December 2, 2024 is acknowledged. The traversal is on the ground(s) that Species I and Species II can be examiner together without an undue burden. This is not found persuasive because the examiner has found that there is a structural difference between the species claimed, i.e., the washout channel, the first opening and the impeller, which would cause examination burden on the examiner to persecute each individual species as stated above.
The requirement is still deemed proper and is therefore made FINAL.
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 16 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 10,773,002.
Claim 16: U.S. App. No. 18/382,124
Claim 1: U.S. Pat. No. 10,773,002
A blood pump comprising…
A blood pump comprising…
…an impeller arranged in the pump casing…being provided with blades…being rotatably supported in the pump casing by at least one contact-type bearing;
…an impeller arranged in the pump casing…being provided with blades…being rotatably supported in the pump casing by at least one contact-type bearing comprising a bearing surface of the impeller facing a bearing surface of the pump casing,
…and at least one wash out channel…in fluid connection with the passage…
…wherein at least one channel extends through the impeller…in fluid connection with the passage…the wash out channel…associated with a secondary pump…
…wherein a distance between the second opening and the axis of rotation…
…wherein the secondary pump is formed at least partially is formed…by said at least one wash out channel…
Although the claims at issue are not identical, they are not patentably distinct from each other because the limitation of claim 16 of the present invention differs from claim 1 of U.S. Pat. No. 002’ in that the contact-type bearing comprises a bearing surface facing a bearing surface of the pump casing and a wash out channel is associated with a secondary pump, which represents an obvious species of the generic system of U.S. Pat. No. 002’, i.e. the generic claims are directed to a blood pump having a wash out channel and a contact-type bearing.
AND
Claim 16 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11,819,678.
Claim 16: U.S. App. No. 18/382,124
Claim 1: U.S. Pat. No. 11,819,678
A blood pump comprising…
A blood pump comprising…
…an impeller arranged in the pump casing…being provided with blades…being rotatably supported in the pump casing by at least one contact-type bearing;
…an impeller arranged in the pump casing…being provided with blades…being rotatably supported in the pump casing by at least one contact-type bearing comprising a bearing surface of the impeller facing a bearing surface of the pump casing,
…and at least one wash out channel…in fluid connection with the passage…
…a plurality of wash out channels…extends through the impeller…in fluid connection with the passage…the plurality of wash out channels…associated with a secondary pump…
…wherein a distance between the second opening and the axis of rotation…
…wherein the secondary pump is formed at least partially is formed…by said at least one wash out channel…
Although the claims at issue are not identical, they are not patentably distinct from each other because the limitation of claim 16 of the present invention differs from claim 1 of U.S. Pat. No. 678’ in that the contact-type bearing comprises a bearing surface facing a bearing surface of the pump casing and a plurality of wash out channel being associated with a secondary pump, which represents an obvious species of the generic system of U.S. Pat. No. 678’, i.e. the generic claims are directed to a blood pump having a wash out channel and a contact-type bearing.
Allowable Subject Matter
Claim 29 is considered allowable subject matter. The following is a statement of reasons for the indication of allowable subject matter: The closest prior art, Foster et al., fails to disclose, suggest and/or teach a protrusion extending from the first opening of the washout channel. Foster et al. does disclosed the use of a secondary flow path 27, which the examiner interpreting to be the claimed wash out channel, however, no ‘protrusion’-like structure extends from the first opening and/or entrance 28 of the secondary flow path.
Response to Arguments
Applicant’s arguments, filed March 24, 2026, with respect to the prior art rejections, i.e. claims 16-17, 23-25, 27-29 & 31-34 rejected under 35 U.S.C 102(a)(2) anticipated by Foster et al., have been fully considered and are persuasive and have been withdrawn.
Applicant's arguments filed March 24, 2026 have been fully considered but they are not persuasive. The applicant argues the following points in which the examiner provides a reason(s) as to why the arguments are not persuasive:
The applicant argues that their prior traverse of the restriction is still maintained, i.e. the applicant believes that the species claimed do not cause an examination burden on the examiner.
The applicant’s arguments have been fully considered but are not persuasive. The restriction requirement was proper because the claims are drawn to distinct species having materially different structural features, including differences relating to the washout channel, the first opening and the impeller configuration, as set forth in the restriction requirement and Office Action. These differences result in separate search and examination considerations such that examination of all claimed species in a single application would create a serious search and examination burden on the examiner.
Further, the applicant’s own arguments presented in response to the prior art rejections rely upon the structural distinctions between the claimed subject matter and the cited references, including distinctions relating to the wash out channel configuration, the relationship of the openings to the bearing and the impeller structure. Such arguments further support the conclusion that the claimed species are materially distinct and appropriately subject to restriction.
Accordingly, the restriction requirement is maintained. Claims 18-22 and 30 remain withdrawn from further consideration.
The applicant requests that the current, non-statutory double patenting rejection be held in abeyance until patentability is determined.
The examiner has acknowledged the above request. Independent claim 16 remains properly rejected on the ground of non-statutory obviousness-type double patenting over claim of U.S. Pat. No. 11,819,678 and U.S. Pat. No. 10,773,002, as set forth in the above office action. The applicant has not presented substantive arguments addressing the merits of the rejection. Accordingly, the non-statutory double patenting rejections of claim 16 is maintained.
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 NICOLE F JOHNSON whose telephone number is (571)270-5040. The examiner can normally be reached Monday-Friday 8:00am-5:00pm 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, David Hamaoui can be reached at 571-270-5625. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NICOLE F JOHNSON/Primary Examiner, Art Unit 3796
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