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 . 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.
Claim Objections
Claims 25, 35, 36, 39, and 40 are objected to because of the following informalities: In claim 25, line 10, “connect” should be replaced with -connected-; In claim 25, line 22, “at” should be replaced with -of-; In claim 25, lines 22 and 31, “shaft” should be deleted; In claim 25, line 26, “connect” should be replaced with -connects-; In claim 25, line 29, -the- should be inserted before “current”; In claim 35, “electrode and cannula shafts” should be replaced with -electrode shaft and cannula-; In claims 36 (line 1) and 39 (line 2), “shaft” should be deleted; In claim 40, line 16, “radiofrequency current flows” should be replaced with -radiofrequency current is configured to flow-. 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.
Claims 25-45 are 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.
Claim 25 is found to be indefinite because Examiner is unsure of the scope of the limitation “an electrode that is adapted to be used with a cannula” (lines 1-2). More specifically, it is unclear whether this “cannula” limitation is positively recited as part of the system in the same way that the “electrode” limitation is. In order to address this, Applicant is encouraged to replace the above limitation with -an electrode and a cannula, the electrode adapted to be used with the cannula-.
Claim 25 recites the limitation "the proximal opening" in line 18. There is insufficient antecedent basis for this limitation in the claim.
Claim 25 recites the limitation "a cannula lumen" in lines 18-19. The antecedent basis for this limitation is confusing, since it’s unclear whether this ‘lumen’ is related to the previously-recited ‘cannula’ or a new one. In order to address this, Applicant is encouraged to replace this limitation with -a lumen of the cannula-.
Claim 25 recites the limitations "a distal electrically conductive contact" (line 20) and “a proximal electrically conductive contact” (line 22). The antecedent basis for these limitations is confusing because they’ve already been recited.
Claim 25 recites the limitation "a second electrical potential” (line 27). The antecedent basis for this limitation is confusing because it’s already been recited.
Claim 25 is found to be indefinite because Examiner is unsure of the scope of the limitation “current flowing between the distal electrically conductive contact and both the proximal electrically conductive contact and the electrically-conductive outer surface of the distal end of the cannula” (lines 29-31). More specifically, the relationship between these components that enables this current flow is unclear (i.e., not claimed). In order to address this, Applicant is encouraged to add the following limitation to the end of the claim: ‘since the proximal electrically conductive contact and the electrically-conductive outer surface are in electrical communication with one another’.
Claim 38 is found to be indefinite because Examiner is unsure of the scope of the limitation “wherein each of the electrode, the cannula, and the stylet comprises a hub at the proximal end of its shaft”. More specifically, Examiner is unsure of which “shaft” is being referred to, because not all of these components are recited as having a “shaft”. Appropriate correction is required.
Claim 40 is found to be indefinite because Examiner is unsure of the scope of the limitation “a bipolar radiofrequency electrode configured for use with a needle” (lines 1-2). More specifically, it is unclear whether this “needle” limitation is positively recited as part of the system in the same way that the “electrode” limitation is. In order to address this, Applicant is encouraged to replace the above limitation with -a bipolar radiofrequency electrode and a needle, the electrode configured for use with the needle-.
Claim 40 recites the limitations "a needle" (line 6), “a needle shaft” (lines 7-8), and “a needle lumen” (lines 8-9). The antecedent basis for these limitations is confusing because they’ve already been recited.
It should be noted that all other cited claims have been rejected for being dependent upon a rejected base claim.
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 40-44 is/are rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 17-21 of prior U.S. Patent No. 11,793,562. This is a statutory double patenting rejection. In order to address this, Applicant is encouraged to replace “from the distal electrical contact to the proximal electrical contact and the needle shaft” (last two lines of claim 40) with -from the distal electrical contact to the proximal electrical contact by way of the electrically-conductive needle shaft-.
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 25-45 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of U.S. Patent No. 11,284,938. Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims anticipate the claims of the application. Accordingly, the application claims are not patentably distinct from the patented claims. Here, the more specific patented claims encompass the broader application claims. Following the rationale in In re Goodman cited in the preceding paragraph, where applicant has once been granted a patent containing a claim for the specific narrow invention, applicant may not obtain a second patent with a claim for the generic or broader invention without first submitting an appropriate terminal disclaimer.
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 THOMAS ANTHONY GIULIANI whose telephone number is (571)270-3202. The examiner can normally be reached Mon - Fri 9:00-5:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joanne Rodden can be reached at 303-297-4276. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/THOMAS A GIULIANI/Primary Examiner, Art Unit 3794