DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
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 2 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 18/940,140 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 includes endograft medical devices comprising a first component interfaced with a second expandable component, and a blood conduit for placement in the aortic arch.
Claim 2 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patents No. 10028848. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 27 anticipates the claimed invention of the instant application.
Claim 2 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patents No. 11890188. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 11 anticipates the claimed invention of the instant application. Although the claims at issue are not identical, they are not patentably distinct from each other
Claim 2 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patents No.10555823, 10857011, 9339399, 10624770, 10478320, and 12502270. Although the claims at issue are not identical, they are not patentably distinct from each other because Claim 1 of each of the listed patents anticipates the claimed invention of the instant application.
Claim 2 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patents No. 11833068. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 47 anticipates the claimed invention of the instant application.
Claim 2 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patents No., 10363151, 10842655, 11883308, 11806259, 12186214, 11026817, 10888441, 10987236, 11911268, 11523918,11497634, , 11883284, 8940040, 12011346, and 12171675 in view of Rasmussen et al. US 20080132993 A1, herein referred to as Rasmussen. Claim 1 of each of the listed patents include an endograft medical device comprising a first component interfaced with a second expandable component and a blood conduit but does not explicitly disclose placement of the device in the aortic arch. However, Rasmussen teaches placing an endograft device in the aortic arch as claimed in the instant application, see [0003] and [0045]. It would have been obvious to one of ordinary skill in the art to modify the medical devices of the cited patents above to place the devices in the aortic arch, as taught and suggested by Rasmussen in order to support weakened vessels (Rasmussen [0003] and [0045]).
Claim Rejections - 35 USC § 103
The following is a quotation of pre-AIA 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, 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 negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under pre-AIA 35 U.S.C. 103(a) are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim 2 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Rasmussen et al. US 20080132993 A1, herein referred to as Rasmussen, in view of Doig et al. US 20040215327 A1, herein referred to as Doig, and further in view of Berez et al. US 20090319017 A1, herein referred to as Berez.
Regarding claim 2, Doig discloses endograft device (Fig 2B, 100) for endovascular repair of ascending aortic aneurysms, comprising: a first prosthetic component (101); a second prosthetic component (205) secured to a proximal end of the first prosthetic component (Fig 2B), wherein the second prosthetic component defines an expandable stent frame ([0084]); and a conduit (211) engaged to the first prosthetic component (Fig 2B).
But fails to explicitly discloses wherein a first prosthetic component configured for being positioned within an aortic arch of a patient; wherein a second prosthetic component is configured for being positioned within an ascending aorta of a patient.
Rasmussen teaches a first prosthetic component (Fig 2, trunk 14) configured for being positioned within an aortic arch of a patient (Fig 2); a second prosthetic component (Fig 2, graft section 12) secured to a proximal end of the first prosthetic component (Fig 2), wherein the second prosthetic component defines an expandable stent frame ([0029]) and is configured for being positioned within an ascending aorta of a patient ([0045]).
Therefore, it would have been obvious to one of ordinary skill in the art prior to the effective filling date of the claimed invention to modify of Doig to incorporate a first prosthetic component configured for being positioned within an aortic arch of a patient; wherein a second prosthetic component is configured for being positioned within an ascending aorta of a patient, as taught and suggested by Rasmussen in order to reestablish circulation (Rasmussen [0045]).
But Doig/Rasmussen fails to explicitly disclose wherein the conduit is configured for being engaged with a coronary artery of patient and allowing blood flow thereto.
Berez teaches a conduit (Annotated Fig 69, ‘stent 66’ see [0347]) engaged to the first prosthetic component (Fig 69, 54), wherein the conduit is configured for being engaged with a coronary artery of patient ([0377] explicitly teaches engaging the coronary artery; [0069] teaches engaging renal artery which are very similar in shape, therefore able to meet claimed limitation of engaging coronary artery) and allowing blood flow thereto ([0005]).
Therefore, it would have been obvious to one of ordinary skill in the art prior to the effective filling date of the claimed invention to modify of Doig/Rasmussen to incorporate wherein the conduit is configured for being engaged with a coronary artery of patient and allowing blood flow thereto, as taught and suggested b Berez in order to direct blood away from aneurysm (Berez [0005]).
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Conclusion
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/A.F./Patent Examiner, Art Unit 3774
/THOMAS C BARRETT/SPE, Art Unit 3799
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