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 .
Status of Claims
Claims 1-16 are pending and examined on the merits.
Priority
This application discloses and claims only subject matter disclosed in prior Application No. 18/235,515, filed 8/18/2023, and names the inventor or at least one joint inventor named in the prior application. The ADS filed on 3/6/2024 identifies the current Application as a divisional. However, said parent application was not subjected to a restriction requirement and the currently pending claims require all details of the patented claims in the parent application (see Double Patenting rejections infra). In other words, the current claims recite subject matter directed to an invention that is not independent and distinct from that claimed in the prior application because it requires all details from the patented claims.
Accordingly, this application should be considered as a continuation.
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 1 & 16 are rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 7 & 12, respectively, of prior U.S. Patent No. 11,938,257. This is a statutory double patenting rejection.
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 18 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 4 of U.S. Patent No. 11,938,257. Although the claims at issue are not identical, they are not patentably distinct from each other because said patented claim recites all limitations in the current claim. Said patented claim 4 further recites (by its dependency from patented claim 3) the blood inlet and blood exit are each connected to a tube that delivers blood from a blood source/container to the blood-gas exchange device.
Allowable Subject Matter
Claims 1-20 contain allowable subject matter. Note Claims 1 & 16 are rejected under statutory double patenting while Claim 18 is rejected under nonstatutory double patenting.
The following is a statement of reasons for the indication of allowable subject matter:
No prior art is found to disclose, alone or in combination, the blood oxygenator as claimed. The currently claimed blood oxygenator comprises a top/first chamber, a middle rotatable chamber for blood to interface with oxygen gas, and a bottom/second chamber through which the blood and gas exit the oxygenator. The blood oxygenator requires that the blood flow along the walls of the rotatable chamber, thereby effectively surrounding the oxygen gas flow that goes from the top/first chamber into the middle rotatable chamber and out the bottom/second chamber.
Federspiel et al. (US 2007/0020142, provided by Applicant in IDS) discloses a blood oxygenator (e.g., Fig. 7) comprising a first chamber (empty space immediately under gas inlet 740), a rotatable chamber (occupied by rotating fiber bundle 750 and sealed at top and bottom by sealing mechanisms 790), and second chamber (empty space immediately above gas outlet 745). Federspiel fails to disclose that the second chamber comprises a blood outlet and a gas outlet. More importantly Federspiel’s oxygenator requires the blood to flow into the rotating fiber bundle and be forced centripetally outward due to the spinning and thereby exiting through a blood outlet port (735) located in the rotatable chamber.
Farhangia et al. (US 6,454,999, provided by Applicant in IDS) discloses a device for blood oxygenation comprising a rotating chamber but fails to teach the first and second chambers having inlets and outlets as claimed, but the blood flow channel is through a center of the rotating chamber.
Knoll et al. (US 2020/0129687) and Wei (CN 109224164) also disclose oxygenators where the blood is directed through a center of a chamber and forced radially outward to pass through layers of membranes to thereby enable oxygen exchange.
Conclusion
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/SUSAN S SU/Primary Examiner, Art Unit 3781 26 February 2026