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 .
Election/Restrictions
Applicant’s election without traverse of group 1: claims 1-11, species 1: fig. 1 in the reply filed on 8/7/26 is acknowledged.
Claims 10-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected groups and species, there being no allowable generic or linking claim.
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 claim 1 of U.S. Patent No. 11229466. Although the claims at issue are not identical, they are not patentably distinct from each other because all the claimed limitations of claim 1 of the present applications are claimed in claim 1 of the Patent.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11883083. Although the claims at issue are not identical, they are not patentably distinct from each other because all the claimed limitations of claim 1 of the present applications are claimed in claim 1 of the Patent.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 10398485. Although the claims at issue are not identical, they are not patentably distinct from each other because all the claimed limitations of claim 1 of the present applications are claimed in claim 1 of the Patent.
Claim Rejections - 35 USC § 102
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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-5, 7-9 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Druma (US 20120259375 A1).
Druma discloses a device, comprising: a cannula 100, fig. 1a comprising: a handle 141; a cannula hub 140 coupled to the handle; a cannula tube 120 portion extending from the cannula hub, the cannula tube portion defining a lumen 120l; and an expandable member 110 coupled to the cannula tube portion, the expandable member being reconfigurable between a contracted configuration fig. 1b and an expanded configuration fig. 1a; and a stylet 130 coupled to the cannula, the stylet comprising: a stylet hub 130c coupled to the handle, wherein the stylet hub is detachably coupled to the handle (para. 28), further comprising an inflation tube 120R is in fluid communication with the expandable member 110, comprising a sheath 304, fig. 3b coupled to the cannula tube portion, wherein the expandable member can be located between the sheath and the cannula tube portion, wherein the sheath is capable to retract and expose at least a portion of the expandable member, further comprising a stylet needle 130 extending from the stylet hub 130c, wherein the stylet needle is disposable within the lumen of the cannula tube portion, wherein an internal portion of the stylet needle is solid, wherein the expandable member is a balloon that is symmetrical fig. 1a.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Druma in view of Wang (US 20140277053 A1).
Druma fails to teach that a portion of the cannula tube portion has a larger outer diameter than an outer diameter of the expandable member while the expandable member is in the contracted configuration.
Wang teaches a portion of the cannula tube portion 10, fig. 10 has a larger outer diameter than an outer diameter of the expandable member 20 while the expandable member is in the contracted configuration fig. 10.
It would have been obvious to a person of ordinary skill in the art at the time of the invention was made to modify the diameter of the balloon of Druma to be smaller than the diameter of a portion of the cannula tube portion in view of Wang for facilitating insertion of the balloon through tissue/bone and to protect the balloon during the insertion.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SAMEH RAAFAT BOLES whose telephone number is (571)270-5537. The examiner can normally be reached 9-5 pm.
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, Kevin Truong can be reached at 571-272-4705. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SAMEH R BOLES/Primary Examiner, Art Unit 3775
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