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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
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 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 5 of U.S. Patent No. 11,648,137. Although the claims at issue are not identical, they are not patentably distinct from each other because the Patent discloses:
Claim 1, A transport device (column 19, line 19) comprising: a transport tube that extends from a rear end of a medical device (column 20, line 24-25), wherein the transport tube has a double tube structure comprising an inner tube and an outer tube (column 20, lines 26-27); the inner tube projects from a distal end part of the outer tube, and a distal end part of the inner tube is connected to the medical device (column 20, lines 28-30); and the outer tube and the inner tube are fixed at a proximal end part of the outer tube (column 20, 31-32).
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-5 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Green et al. U.S. Publication 2016/0262920 A1.
Regarding Claim 1, Green et al. discloses a transport device 100 comprising: a transport tube that extends from a rear end of a medical device 2, wherein the transport tube 100 has a double tube structure comprising an inner tube 110 and an outer tube 120 (as seen in Figure 4-13); the inner tube 110 projects from a distal end part of the outer tube 120 (paragraph [0053]), and a distal end part of the inner tube is connected to the medical device 2 (paragraph [0063] and as seen in Figure 6-7 and paragraph [0063]); and the outer tube 120 and the inner tube 110 are fixed at a proximal end part of the outer tube 120 (as seen in Figure 13, paragraph [0060]).
Regarding Claim 2, Green et al. discloses wherein a rigidity of the proximal end part of the outer tube is lower than a rigidity of the distal end part of the inner tube (paragraphs [0053], [0079-0081]).
Regarding Claim 3, Green et al. discloses wherein a material of the proximal end part of the outer tube 120 is lower than a material of the distal end part of the inner tube 110 (paragraph [0061], the inner tubular member comprises a multi-lumen configuration having an inflation lumen 24, guidewire lumen 320 and a fluid lumen 310, wherein the outer tube 120 is described as having flexibility to be retracted in a proximal direction, see paragraphs [0043],[0045], [0053], [0079]) .
Regarding Claim 4, Green et al. discloses wherein a knitting of a fiber of the proximal end part of the outer tube is lower than a knitting of a fiber of the distal end part of the inner tube (paragraph [0082], Green discloses a reinforcing layer including a tube having a woven fabric such as carbon fibers encased in a polymer matrix can be disposed on a distal end portion of the outer and inner tube, therefore, the proximal part of the outer tube would have lower knitting fibers than a distal end part of the inner tube).
Regarding Claim 5, Green et al. discloses wherein a material and a knitting of a fiber of the proximal end part of the outer tube is lower than a material and a knitting of a fiber of the distal end part of the inner tube (paragraph [0082], Green discloses a reinforcing layer including a tube having a woven fabric such as carbon fibers encased in a polymer matrix can be disposed on a distal end portion of the outer and inner tube, therefore, the proximal part of the outer tube would have lower knitting fibers than a distal end part of the inner tube).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SEEMA MATHEW whose telephone number is (571) 270-1452. The examiner can normally be reached on Monday-Friday 9 am – 5 pm.
If attempts to reach the examiner by telephone are unsuccessful, please contact the examiner’s supervisor, SPE, Melanie Tyson 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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/SEEMA MATHEW/
Primary Examiner, Art Unit 3774