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 .
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 1-25 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 11642518. Although the claims at issue are not identical, they are not patentably distinct from each other because both the current application and the US Patent claim a method of temporarily and transvascularly placing a pacing lead on an endocardial surface of a heart chamber of an animal body, wherein the pacing lead comprises a lead manifold located outside the animal body; curled shaft is located in the distal end of the pacing lead body for placement of the lead body against the surface of the body part, the curled shaft further including a plurality of electrode/cathode sites, which electrode/cathode sites are connected via electrical continuity such that at least one of the plurality of the electrode/cathode sites is adapted to be temporarily connected to the wall surface, wherein each of the plurality of electrode/cathode sites is connected to a plurality of electrode/cathode conduction wires, wherein each of the plurality of electrode/cathode conduction wire extends along the pacing lead body to connect to at least one electrode/cathode connector on the lead manifold, wherein each of the at least one electrode/cathode connector is dimensioned and configured to be connected via an electrode/cathode connecting wire to a negative pole of a pulse generator, wherein the pulse generator provides voltage and current to the plurality of electrode/cathode sites.
Claims 1-25 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-21 of U.S. Patent No. 10773076, cited in IDS. Although the claims at issue are not identical, they are not patentably distinct from each other because both the current application and the US Patent claim a method of temporarily and transvascularly placing a pacing lead on an endocardial surface of a heart chamber of an animal body, wherein the pacing lead comprises a lead manifold located outside the animal body; curled shaft is located in the distal end of the pacing lead body for placement of the lead body against the surface of the body part, the curled shaft further including a plurality of electrode/cathode sites, which electrode/cathode sites are connected via electrical continuity such that at least one of the plurality of the electrode/cathode sites is adapted to be temporarily connected to the wall surface, wherein each of the plurality of electrode/cathode sites is connected to a plurality of electrode/cathode conduction wires, wherein each of the plurality of electrode/cathode conduction wire extends along the pacing lead body to connect to at least one electrode/cathode connector on the lead manifold, wherein each of the at least one electrode/cathode connector is dimensioned and configured to be connected via an electrode/cathode connecting wire to a negative pole of a pulse generator, wherein the pulse generator provides voltage and current to the plurality of electrode/cathode sites.
Claims 1-25 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12138449, cited in IDS. Although the claims at issue are not identical, they are not patentably distinct from each other because both the current application and the US Patent claim a method of temporarily and transvascularly placing a pacing lead on an endocardial surface of a heart chamber of an animal body, wherein the pacing lead comprises a lead manifold located outside the animal body; curled shaft is located in the distal end of the pacing lead body for placement of the lead body against the surface of the body part, the curled shaft further including a plurality of electrode/cathode sites, which electrode/cathode sites are connected via electrical continuity such that at least one of the plurality of the electrode/cathode sites is adapted to be temporarily connected to the wall surface, wherein each of the plurality of electrode/cathode sites is connected to a plurality of electrode/cathode conduction wires, wherein each of the plurality of electrode/cathode conduction wire extends along the pacing lead body to connect to at least one electrode/cathode connector on the lead manifold, wherein each of the at least one electrode/cathode connector is dimensioned and configured to be connected via an electrode/cathode connecting wire to a negative pole of a pulse generator, wherein the pulse generator provides voltage and current to the plurality of electrode/cathode sites.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JON ERIC C MORALES whose telephone number is (571)272-3107. The examiner can normally be reached Monday-Friday 830AM-530PM CST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, David Hamaoui can be reached at 571-270-5625. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JON ERIC C MORALES/Primary Examiner, Art Unit 3796
/J.C.M/Primary Examiner, Art Unit 3796