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 .
Specification
The disclosure is objected to because of the following informalities: The first paragraph of the specification should be amended to include updated patent information of related and continuation cases.
Appropriate correction is required.
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
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 33-52 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-30 of U.S. Patent No. 12,279,801. Although the claims at issue are not identical, they are not patentably distinct from each other because both the present application and the previously patented invention are directed towards an ablation device and pulse generator for pulsed field ablation of a tissue by a pulsed ablation field including a set of electrodes; a pulse generator configured to generate electric pulses, the pulse generator electrically coupled to a set of electrodes configured to provide pulsed electric fields from the electric pulses, the pulsed electric fields configured to cause an ablation of a tissue within a heart of a patient; wherein the pulse generator is configured to generate at least one electric pulse with a first polarity to a first electrode from the set of electrodes, the first electrode operating in a mode of a first polarity; to generate at least one electric pulse with a second polarity different than the first polarity to a second electrode from the set of electrodes, the second electrode operating in a mode of a second polarity different than the first polarity; and to set a high impedance to a third electrode from the set of electrodes, the third electrode operating in a mode of a state of high impedance; and wherein the set of electrodes comprises at least one electrode configured to be switched between at least two of the modes during a pulsed field ablation protocol.
Claims 33-38 of the present application correspond to similar claims 1-10 of the patented invention. Claims 39-52 of the present application correspond to claims 11-20 of the patented invention.
Claims 33-52 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-30 of U.S. Patent No. 11,832,785. Although the claims at issue are not identical, they are not patentably distinct from each other because both the present application and the previously patented invention are directed towards an ablation device and pulse generator for pulsed field ablation of a tissue by a pulsed ablation field including a set of electrodes; a pulse generator configured to generate electric pulses, the pulse generator electrically coupled to a set of electrodes configured to provide pulsed electric fields from the electric pulses, the pulsed electric fields configured to cause an ablation of a tissue within a heart of a patient; wherein the pulse generator is configured to generate at least one electric pulse with a first polarity to a first electrode from the set of electrodes, the first electrode operating in a mode of a first polarity; to generate at least one electric pulse with a second polarity different than the first polarity to a second electrode from the set of electrodes, the second electrode operating in a mode of a second polarity different than the first polarity; and to set a high impedance to a third electrode from the set of electrodes, the third electrode operating in a mode of a state of high impedance; and wherein the set of electrodes comprises at least one electrode configured to be switched between at least two of the modes during a pulsed field ablation protocol.
Claims 33-38 of the present application correspond to similar claims 1-7 of the patented invention. Claims 39-45 of the present application correspond to claims 8-23 of the patented invention. Claims 46-52 of the present application correspond to claims 24-30 of the patented invention.
Conclusion
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/A.L.Z/ Examiner, Art Unit 3794
/MICHAEL F PEFFLEY/ Primary Examiner, Art Unit 3794
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