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 .
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 1-3 and 9-10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 5, 15, and 17 of U.S. Patent No. 11944736 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because they both claim a system that removes targeted materials on a collection plate with electrochemical power and identical voltages.
Patented claim 1 recites all limitations in the current claim 1. The parent claim 1 is narrower and directed to treating a specific disease, Alzheimer’s disease, and requires the removal of positively charged proteins whereas the current claim 1 more broadly claims a method for electrochemically filtering a bodily fluid in the treatment of a disease and removing charged biological materials.
Further, patented claims 2, 5, 15, and 17 correspond to current claims 2, 3, 9, and 10 respectively.
Allowable Subject Matter
Claims 1-11 contain allowable subject matter. However, note the non-statutory double patenting rejection on claims 1-3 and 9-10.
The following is a statement of reasons for the indication of allowable subject matter:
There is no art alone or in combination that discloses the claimed method for electrochemically filtering a bodily fluid wherein a cathode and anode are connected to either a collection plate or to the patient to be treated and carries out the application of a predetermined voltage to remove a charged material on the collection plate. Those closest prior art is discussed below. The closest prior art is discussed below.
Chen (US 20190009014 A1) teaches a method for treating a disease by circulating fluid from the patient to electromagnetically remove charged parties on a collection filter/membrane. However, Chen does not teach where the anode and cathode are connected to.
Peyman (US 20210220480 A1) teaches using an electric field by connecting anode and cathode leads to a patient, but Peyman is not analogous art because the anode and cathode need to be connected to different locations—one at the connection plate and one at the patient. Further, the application of the electric field in Peyman is geared towards stimulating injected particles for imaging, not for targeting and collecting charged particles.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ERIN A KIM whose telephone number is (703)756-4738. The examiner can normally be reached Monday - Friday 8:00 am - 5:00 pm (EST).
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/ERIN A KIM/Examiner, Art Unit 3781
/SUSAN S SU/Primary Examiner, Art Unit 3781 5 March 2026