The present application is being examined under the pre-AIA first to invent provisions.
DETAILED ACTION
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 21-40 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 11,930,996. Although the claims at issue are not identical, they are not patentably distinct from each other because the overlapping subject matter of U.S. Patent No. 11,930,996 regarding a medical device reads on the subject matter of the instant application regarding a medical device, at least one cable, conductive wire, and catheter.
Claims 21-40 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 10,874,283. Although the claims at issue are not identical, they are not patentably distinct from each other because the overlapping subject matter of U.S. Patent No. 10,874,283 regarding a medical device reads on the subject matter of the instant application regarding a medical device, at least one cable, conductive wire, and catheter.
Claims 21-40 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 9,675,233. Although the claims at issue are not identical, they are not patentably distinct from each other because the overlapping subject matter of U.S. Patent No. 9,675,233 regarding a medical device reads on the subject matter of the instant application regarding a medical device, at least one cable, conductive wire, and catheter.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for a patent.
(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of application for patent in the United States.
(e) the invention was described in (1) an application for patent, published under section 122(b), by another filed in the United States before the invention by the applicant for patent or (2) a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent, except that an international application filed under the treaty defined in section 351(a) shall have the effects for purposes of this subsection of an application filed in the United States only if the international application designated the United States and was published under Article 21(2) of such treaty in the English language.
Claims 21, 26-30, 33, 34, 36, 38, and 39 are rejected under 35 U.S.C. 102(b) as being anticipated by Huang et al. (U.S. Publication 2011/0220389, hereinafter “Huang”).
As to Claim 21, Huang discloses a medical device (1) in [0046] and Figs. 1 and 2, comprising:
a shaft (8) in [0046];
a lumen surrounded by (3) in Fig. 1 on the right extending through the shaft;
an insulated conductive cable (4) in [0046], the right-most coated wire, in Fig. 1 extending through the lumen for transmitting electronic signals; and
a catheter “shield layer” (7) forming a tubular structure extending along the shaft and surrounding the lumen, the catheter electrically coupled to a ground “ground electrode” in [0058] and providing electromagnetic interference shielding to the insulated conductive cable.
As to Claim 26, Huang discloses the medical device of claim 21, wherein the ground “ground electrode” in [0058] is a floating ground, a signal ground, or an earth ground.
As to Claim 27, Huang discloses the medical device of claim 21, further comprising: a conductive wire (9) in Fig. 1 on the left disposed within and extending through the lumen.
As to Claim 28, Huang discloses the medical device of claim 27, wherein the conductive wire is electrically coupled to the ground “ground electrode” in [0058].
As to Claim 29, Huang discloses the medical device of claim 21, wherein the lumen in a first imaging lumen (the conductive wire capably transmitting electrical imaging signals), and the medical device further comprises a second working lumen surrounded by (3) in Fig. 1 on the left extending through the shaft, wherein the catheter further surrounds the second working lumen (capably transmitting electrical signals).
As to Claim 30, Huang discloses the medical device of claim 29, further comprising a third irrigation lumen internal to (7) in Fig. 1 extending through the shaft, and wherein the catheter further surrounds the third irrigation lumen.
As to Claim 33, Huang discloses a medical device (1) in [0046] and Figs. 1 and 2, comprising:
a shaft (8) in [0046];
at least three lumens extending through the shaft;
a conductive cable (4) in [0046], the right-most coated wire, in Fig. 1 extending through a first lumen of the at least three lumens surrounded by (3) in Fig. 1 on the right, surrounded by (3) in Fig. 1 on the left, and internal to (7) in Fig. 1; and
a conductive catheter “shield layer” (7) forming a tubular structure extending along the shaft and surrounding each of the at least three lumens, the conductive catheter providing electromagnetic interference shielding to the conductive cable.
As to Claim 34, Huang discloses the medical device of claim 33, further comprising:
a conductive wire (9) in Fig. 1 on the left disposed within and extending through the first lumen.
As to Claim 36, Huang discloses the medical device of claim 33, wherein a second lumen of the at least three lumens is a working lumen for receiving an instrument (a lumen being sized such that the intended use for passing a suitably sized instrument), and a third lumen of the at least three lumens is an irrigation lumen for delivering fluid or applying suction (a lumen being sized such that the intended use for delivering fluid or allowing air flow).
As to Claim 38, Huang discloses a medical device (1) in [0046] and Figs. 1 and 2 comprising:
a shaft (8) in [0046] having a proximal end and a distal end;
an imaging lumen (the conductive wire capably transmitting electrical imaging signals) extending from the proximal end to the distal end of the shaft;
an imaging device (102) in [0044] and Fig. 1 disposed at the distal end of the shaft;
a cable (4) in [0046], the right-most coated wire, in Fig. 1 connected to the imaging device and extending proximally through the imaging lumen to the proximal end of the shaft, the cable for transmitting electronic image signals from the imaging device; and
an electromagnetic interference shielding catheter “shield layer” (7) forming a tubular structure extending from the proximal end to the distal end of the shaft and surrounding the imaging lumen.
As to Claim 39, Huang discloses the medical device of claim 38, further comprising:
a conductive wire (9) in Fig. 1 on the left disposed within and extending through the imaging lumen.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
Claims 22-25, 31, 32, 35, 37, and 40 are rejected under 35 U.S.C. 103(a) as being unpatentable over Huang and in further view of Kaga et al. (U.S. Publication 2013/0087361, hereinafter “Kaga”).
As to Claims 22-25 and 37, Huang does not specifically disclose an outer layer or a braided/mesh catheter. Kaga teaches in the analogous field of electrical transmission wire means wherein at least one cable (10) in [0067] and (21) in [0069] as shown on the left and on the right in Fig. 3 with at least one conductor (10) in [0067] on the left and on the right in Fig. 3, an insulating sheath (21) in [0069] surrounding the at least one conductor, a conductive wire (33) in [0075], and a shielding catheter (31) in [0075] includes a braided catheter “braided very fine metal wire” in [0070] or a mesh catheter wherein a non-conductive material (12) in [0063] and (22) in [0067] is disposed between the at least one cable and the shielding catheter and the non-conductive material surrounds a circumference of the at least one cable. It would have been obvious to one of ordinary skill in the art to provide any non-conductive material of Huang to be configured to have multiple layers (in addition to an outer layer) as taught by Kaga in order to fulfill the same function of insulation with predictable results while providing additional properties such as heat resistance and flame retardancy (Kaga, [0071]) and that the electromagnetic interference shielding catheter of Huang could be provided as a braided catheter as taught by Kaga in order to fulfill the same function with predictable results.
As to Claims 31, 32, 35, and 40, Huang does not specifically disclose a non-conductive medium. Kaga teaches in the analogous field of electrical transmission wire means wherein at least one cable (10) in [0067] and (21) in [0069] as shown on the left and on the right in Fig. 3 with at least one conductor (10) in [0067] on the left and on the right in Fig. 3, an insulating sheath (21) in [0069] surrounding the at least one conductor, a conductive wire (33) in [0075], and a shielding catheter (31) in [0075] includes a braided catheter “braided very fine metal wire” in [0070] or a mesh catheter wherein a non-conductive material (12) in [0063] and (22) in [0067] is disposed between the at least one cable and the shielding catheter and the non-conductive material surrounds a circumference of the at least one cable. It would have been obvious to one of ordinary skill in the art to provide any non-conductive material of Huang to be configured to have multiple layers (in addition to an outer layer) as taught by Kaga in order to fulfill the same function of insulation with predictable results while providing additional properties such as heat resistance and flame retardancy (Kaga, [0071]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WILLIAM B CHOU whose telephone number is (571) 270-3367. The examiner can normally be reached on M-F 9 am - 6 pm.
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/WILLIAM CHOU/
Examiner, Art Unit 3795
/MICHAEL J CAREY/Supervisory Patent Examiner, Art Unit 3795