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 .
Response to Arguments
The Examiner has withdrawn most of the rejections. However, the Examiner is maintaining two of the Double Patenting Rejection, since, the Examiner believes that those two rejections read on the claimed subject matter.
Rejections:
US Patent 12,011,378 – The Applicant’s representative discloses that the patent does not disclose: “the at least two separation regions being a pre-formed break or gap within the some of the plurality of circumferential rings”. The Examiner disagrees with the above statement. For example, see col. 220, lines 39-41 disclosing the claimed subject matter, except for the words: “in a strut”, however, the strut is part of the circumferential rings, therefore, it reads on the claimed subject matter of this application.
US Patent 9,943,426 --- The Applicant’s representative discloses that the patent does not disclose: “wherein at least some of the plurality of circumferential rings have at least two separation regions”. The Examiner disagrees with the above statement. For example, see col. 232, lines 63-65 discloses “at least one separation region” and this application discloses: “at least two separation region”. The Examiner believes that the broad term “at least one” reads on two separation regions, therefore, US Patent 9,943,426B2 reads on the claimed subject matter.
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 1-28 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-28 of U.S. Patent No. 12,011,378 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because an endoluminal prosthesis comprising a scaffold having a tubular body comprising a plurality of circumferential rings patterned from a non- degradable material, said scaffold being configured to expand from a crimped configuration to an expanded configuration; wherein at least some of the circumferential rings comprise struts joined by crowns; wherein at least some circumferential rings are axially joined to adjacent circumferential rings wherein at least some of the circumferential rings have at least two separation regions, said separation regions being a pre-formed break or gap in a strut, wherein the separation regions are immobilized during expansion but configured to move apart after expansion in a physiologic environment to form discontinuities in said circumferential rings; wherein the scaffold is configured to circumferentially separate into two to five separate axially linked segments extending from one end of the scaffold to the other end of the scaffold after all discontinuities are formed, said segments having at least some intact axial links between adjacent circumferential rings in each said segments.
Claims 1-3, 5, 10, 13-15, 17, 18 and 20-24 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3, 4, 6, 9, 10, 12-17, 26, 27 and 29 of U.S. Patent No. 9,943,426 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because an endoluminal prosthesis comprising a scaffold having a tubular body comprising a plurality of circumferential rings patterned from a non- degradable material, said scaffold being configured to expand from a crimped configuration to an expanded configuration; wherein at least some of the circumferential rings comprise struts joined by crowns; wherein at least some circumferential rings are axially joined to adjacent circumferential rings wherein at least some of the circumferential rings have at least two separation regions, said separation regions being a pre-formed break or gap in a strut, wherein the separation regions are immobilized during expansion but configured to move apart after expansion in a physiologic environment to form discontinuities in said circumferential rings; wherein the scaffold is configured to circumferentially separate into two to five separate axially linked segments extending from one end of the scaffold to the other end of the scaffold after all discontinuities are formed, said segments having at least some intact axial links between adjacent circumferential rings in each said segments.
Allowable Subject Matter
The claims will be allowable if the Double Patenting Rejection is overcome.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALVIN J STEWART whose telephone number is (571)272-4760. The examiner can normally be reached Monday-Friday 8:30AM-6PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Thomas Barrett can be reached at 571-272-4746. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ALVIN J STEWART/Primary Examiner, Art Unit 3799 2/10/25