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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Objections
Claim 1 is objected to because of the following informalities: the claim should be amended to recite “a height” in line 15 to provide antecedent basis for the claim terminology. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 6 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 6, the claim recites that the sleeve of the collar is configured to extend within the receiving channel of the receiving sleeve. Claim 1 recites that the collar extends around the receiving sleeve. It is unclear how the collar can extend both around and within the receiving sleeve. A review of Applicant’s specification shows that the sleeve of the collar (sleeve 87 in fig. 5a) is configured to extend around the receiving sleeve (intermediate piece 83 in fig. 5a) and does not show the sleeve of the collar extending within the receiving channel. As such, it is unclear from Applicant’s specification how the sleeve of the collar can both extend around and within the receiving sleeve.
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 1-5, 7-8, and 10-14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of U.S. Patent No. 11904112 in view of Dickhans (US 20200170703) (see table below).
Regarding claims 1 and 12, claims 1 and 11 claim all of the limitations set forth in instant claims 1 and 12, respectively, except that the issued claims claim an “intermediate piece” whereas the instant claims claim a “medical tubing receiving sleeve”.
Dickhans teaches a medical tubing receiving sleeve (threaded part 189 of catheter hub 180 in fig. 3) which is received within a collar (nut 182 in fig. 3) which is configured to rotationally extend or retract a height of a tubular medical device (paragraph 67). Therefore, it would have been obvious to one of ordinary skill before the effective filing date of the claimed invention to have modified the intermediate piece of the issued claims to be a medical tubing receiving sleeve, as taught by Dickhans. Dickhans teaches this configuration allows for the sleeve to be threadedly engaged to a nut for extension/retraction of a medical tube.
Instant Claims
Issued Claims
Teaching
1
1
see discussion above
2
3
3
4
4
5
5
6
7
7
8
8
10
9
11
10
12
11
see discussion above
13
12
14
13
Claim 9 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11904112 in view of Dickhans and in further view of Beran (US 4114626).
Regarding claim 9, claim 1 of the issued patent claims all of the claimed limitations set forth in instant claim 1, as discussed above, but does not claim said body of said housing has a cylindrical shape.
Beran teaches a body of a housing (outer sleeve 112 in fig. 14) which has a cylindrical shape (figs 10, 14, and 17). Therefore, it would have been obvious to one of ordinary skill before the effective filing date of the claimed invention to have modified this issued claim to claim that said body of said housing has a cylindrical shape, since such a modification would have involved a mere change in the form or shape of a component. A change in form or shape is generally recognized as being within the level of ordinary skill in the art. In re Dailey, 149 USPQ 47 (CCPA 1976).
Allowable Subject Matter
Claims 1-5 and 7-14 would be allowable with the filing of a terminal disclaimer to overcome the double patenting rejection above.
The following is a statement of reasons for the indication of allowable subject matter:
Regarding claim 1, the closest prior art is Snyder (5207651) which fails to teach or disclose a receiving sleeve movable within the longitudinal channel of the housing and a collar extending around the receiving sleeve.
Snyder discloses a catheter placement housing (device 10 in fig. 1) configured to be positioned around a catheter (tube T in fig. 1) and having a longitudinal channel along the length (bore 14 in fig. 1) and a longitudinal slot along the length (slot 16 in fig. 2); a medical tubing receiving sleeve (plate 40 in fig. 4) having a longitudinal catheter receiving channel along a length (bore 44 in fig. 4) and a longitudinal slot along the entire length (slot 46 in fig. 5), the longitudinal slots of the sleeve and the housing permitting lateral passage therethrough of an outer tubing associated with the catheter when said slots are rotationally aligned (fig. 5). Snyder further discloses a collar (gauge 70 in fig. 5) which is configured to rotationally extend or retract the height of the receiving sleeve relative to the housing (5:22-36).
However, the receiving sleeve (plate 40 in fig. 4) is not configured to be movable within the longitudinal channel of the housing (bore 14 in fig. 1) nor does the collar (gauge 70 in fig. 5) extend around the receiving sleeve (plate 40 in fig. 4).
Regarding claim 12, Snyder discloses the steps of inserting a catheter (tube T in fig. 1) into a person (fig. 3), placing a catheter mount about the catheter (device 10 in fig. 4) to anchor the catheter (fig. 3 shows the catheter anchored to the nose), clamping the catheter to a receiving sleeve (plate 40 in fig. 4) and vertically extending or retracting the receiving sleeve relative to the housing by rotating a nut relative to the receiving sleeve (5:22-36 discloses rotating gauge 70 to vary the distance between plates 20 and 40).
However, Snyder does not teach or disclose that the catheter mount (device 10 in fig. 1) comprises a housing configured to house the receiving sleeve.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to COURTNEY FREDRICKSON whose telephone number is (571)270-7481. The examiner can normally be reached Monday-Friday (9 AM - 5 PM EST).
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/COURTNEY FREDRICKSON/ Primary Examiner, Art Unit 3783
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