DETAILED ACTION
The following is a non-final office action is response to communications received on 12/21/2023. Claims 1-9 are currently pending and addressed below.
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 1-9 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 & 9-11 of U.S. Patent No. 10,813,777. The elements of the instant application are to be found in the Patent and therefore are anticipated. Although the conflicting claims are not identical, they are not patentably distinct from each other because the Patent and the instant application all recite the same basic structure with a permutation of similar elements throughout.
Regarding Claim 1, patent claims 1, 9 & 10 recite the same limitations.
Regarding Claims 2-3, patent claim 2 recites the same limitations.
Regarding Claim 4, patent claim 3 recites the same limitations.
Regarding Claims 5-6, patent claim 4 recites the same limitations.
Regarding Claim 7, patent claim 5 recites the same limitations.
Regarding Claim 8, patent claim 11 recites the same limitations.
Regarding Claim 9, patent claim 6 recites the same limitations.
Claims 1-3 & 5-9 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 4-11, 17 & 19 of U.S. Patent No. 11,890,211. The elements of the instant application are to be found in the Patent and therefore are anticipated. Although the conflicting claims are not identical, they are not patentably distinct from each other because the Patent and the instant application all recite the same basic structure with a permutation of similar elements throughout.
Regarding Claim 1, patent claims 1, 7-10, 17 & 19 recite the same limitations.
Regarding Claims 2-3, patent claim 2 recites the same limitations.
Regarding Claims 5-6, patent claim 4 recites the same limitations.
Regarding Claim 7, patent claim 5 recites the same limitations.
Regarding Claim 8, patent claim 11 recites the same limitations.
Regarding Claim 9, patent claim 6 recites the same limitations.
Allowable Subject Matter
Claims 1-9 would be allowable if a timely filed terminal disclaimer(s) in compliance with 37 CFR 1.321(c) or 1.321(d) is filed to overcome the nonstatutory double patenting rejection(s) set forth in this Office action.
The following is a statement of reasons for the indication of allowable subject matter: The prior art of record, which is the most pertinent art found, fails to teach and/or fairly suggest the instant invention.
Regarding Claim 1, Weber et al. (US 8,048,150) teaches a stent (Figs 1A-2B) for implantation into a biological duct, comprising: an expandable tubular conduit made out of a bio-absorbable (Col 7: line 47 – Col 8: line 4) fibrous network (20), wherein the fibrous network distinguishes:
a first state (i.e., delivery) with a first diameter of the tubular conduit determined by a first fiber orientation characterized by a first fiber dispersion and a first main angle difference, and a first average fiber diameter (all inherent properties of the unexpanded device), and
a second state (i.e., expanded) with a second diameter of the tubular conduit determined by a second fiber orientation characterized by a second fiber dispersion and a second main angle difference, and a second average fiber diameter (all inherent properties of the expanded device),
wherein the first diameter of the tubular conduit is smaller than the second diameter of the tubular conduit (as the first diameter is a delivery diameter and the second diameter is an expanded diameter),
wherein the transition from the first state to the second state is accommodated by rearrangement of the fibers in the fibrous network (i.e., the fibers move or rearrange to some degree as the device expands),
wherein the fibrous network in the second state provides mechanical support to the biological duct (Col 25: lines 33-35), and
wherein the fibrous network in the second state allows for cell infiltration (Col 7: lines 13-28) and may act as a scaffold to induce autologous tissue formation.
However, the prior art either individually or in combination, does not teach or render obvious wherein the transition from the first state to the second state is accommodated only by rearrangement of the fibers in the fibrous network and does not rely on a strut pattern.
Examination of similar structures and limitations was established and discussed in parent applications 16/068,604 and 17/028,119.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRIAN AINSLEY DUKERT whose telephone number is (571)270-3258. The examiner can normally be reached Mon-Fri 6am-4pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Melanie Tyson can be reached at (571)272-9062. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BRIAN A DUKERT/Primary Examiner, Art Unit 3774
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