CTNF 18/598,503 CTNF 92966 DETAILED ACTION Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia 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 08-33 AIA 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. 08-34 AIA Claim s 1-5 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 13 of U.S. Patent No. 10,799,675 B2 . Although the claims at issue are not identical, they are not patentably distinct from each other because patent 10,799,675 B2 teaches a catheter assembly for controlling a position of a prosthetic device (interpreted as a mere intended use that does not result in a structural difference between the claimed invention and the patent, see MPEP 2111.02), the catheter assembly comprising: a gimbal assembly (gimbal mechanism, c 13 ln 32) comprising an outer gimbal (gimbal ring, c 13 ln 32-33) and an inner gimbal (gimbal plate, c 13 ln 33); a catheter (catheter, c 12 ln 52) coupled to the gimbal assembly; and a plurality of control lines (pull wires, c 12 ln 50) that extend proximally from the gimbal assembly, double back, and extend distally through the catheter (pull wires are looped around wire guides fixed relative to the housing proximal to the gimbal mechanism, c 14 ln 6-7, and pull wires extend distally out of the handle and into the steerable catheter, c 12 ln 50-52), wherein movement of the gimbal assembly changes tension on the plurality of control lines (pull wires that are coupled to the at least one follower (gimbal mechanism, c 13 ln 21-32) and that extend distally out of the handle and into a steerable catheter to effect flexion of the catheter based on the position of the at least one follower relative to the housing, c 12 ln 50-54) . Claim 10,799,675 Citation 1 13 2 10 3 10 4 13 5 13 6 - 7 - 8 - 9 - 10 - 11 - 12 - 13 - 14 - 15 - 16 - 17 - 18 - 19 - 20 - Allowable/Potentially Allowable Subject Matter Claims 1-5 are potentially allowable subject to the double patenting rejections above . 12-151-07 AIA 07-97 12-51-07 Claim s 8-20 are allowed. 12-151-08 AIA 07-43 12-51-08 Claim s 6-7 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. Reasons for Allowance 13-03 AIA The following is an Examiner's statement of reasons for allowance: the claims in this application are allowed because the prior art of record fails to disclose either singularly or in combination the claimed catheter assembly of claim 1, system of claim 8 and method of claim 16. The closest prior art is Dillon US 2013/00413314 A1, Figs. 7-8. Regarding claim 1, Dillon fails to teach among all the limitations or render obvious a catheter assembly as claimed, which includes the plurality of control lines extending proximally from the gimbal assembly, and doubling back, in combination with the total structure and function of the catheter assembly as claimed. Regarding claim 8, Dillon fails to teach among all the limitations or render obvious a system as claimed, which includes the plurality of control lines extending proximally from the gimbal assembly, and doubling back, as well as a prosthetic device, in combination with the total structure and function of the system as claimed. Regarding claim 16, Dillon fails to teach among all the limitations or render obvious a method as claimed, which includes controlling the prosthetic device, wherein the plurality of control lines extend proximally from the gimbal assembly, and double back, in combination with the total structure and function of the method as claimed . Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.” Conclusion 07-96 AIA The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US 2010/0069834 A1 to Schultz is made of record because it teaches control lines that extends proximally, double back, and extend distally through the catheter. However, the control lines of Schultz do not extend proximally from a gimbal assembly . Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN A DOUBRAVA whose telephone number is (408)918-7561. The examiner can normally be reached M-F 9-5 Pacific Time. 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, Bhisma Mehta can be reached at 571-272-3383. 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. /J.A.D./Examiner, Art Unit 3783 /James D Ponton/Primary Examiner, Art Unit 3783 Application/Control Number: 18/598,503 Page 2 Art Unit: 3783 Application/Control Number: 18/598,503 Page 3 Art Unit: 3783 Application/Control Number: 18/598,503 Page 4 Art Unit: 3783 Application/Control Number: 18/598,503 Page 5 Art Unit: 3783 Application/Control Number: 18/598,503 Page 6 Art Unit: 3783 Application/Control Number: 18/598,503 Page 7 Art Unit: 3783
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