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 and Amendment Filed
Applicant’s response and amendment, filed May 13, 2026, has been entered and made of record. Accordingly, the status of the claims is as follows: Claims 1, 3, 4, 9, 11, 21, 23, 31 and 32 are amended; claims 12-14, 22, 30, 33, 34 and 35 remain as originally presented or previously amended; claims 2, 5-8, 20, 15-20 and 24-29 are canceled; claims 36-43 are newly presented.
Previously Set Forth Objections and Rejections
The status of the objections and rejections set forth in the previous Office action (mailed March 27, 2026) is as follows:
The objection to claim 32 has been overcome by amendments to claim 32.
The 35 USC 103 rejection of claims 1-4, 9, 11, 12, 21-23, 30, 34 and 35 as being unpatentable over Maurice (U.S. Patent Application Publication No. 2005/0038422) in view of Skorich et al. (U.S. Patent No. 11,628,007) is hereby withdrawn.
The 35 USC 103 rejection of claims 13 and 14 as being unpatentable over Maurice (U.S. Patent Application Publication No. 2005/0038422) in view of Skorich et al. (U.S. Patent No. 11,628,007) and further in view of Beckman et al. (U.S. Patent No. 4,995,403) is hereby withdrawn.
The provisional double patenting rejection of claims 1-4, 6, 9, 11-14, 21-23 and 30-35 as being unpatentable over claims 1-19 of copending application no. 19/381,653 is hereby maintained and is reiterated below.
The following new and reiterated grounds of rejection are set forth:
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1, 3, 4, 9, 11-14, 21-23, 30, 34, 35 and 43 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
In claim 1, lines 5-6 recite “the shell” and “the exhaust conduit” when these features are not recited until later in claim 1. As claims 3, 4, 9, 11-14 and 31-33 depend from claim 1, they are likewise rejected.
In claim 21, line 7-8 recites “wherein the shell and the exhaust conduit cooperate to delimit a vacuum insulating layer.” As the term “delimit” is not in the specification, it is unclear what applicant is intending to claim. It was assumed that applicant intended to recite that the shell and the exhaust conduit cooperate to form a space (insulating layer 130?) that is at least partially occupied by the thermal barrier, as shown in Fig. 5. As claims 22, 23 and 35 depend from claim 21 they are likewise rejected. In addition, claim 34 recites “vacuum insulating jacket” which lacks proper antecedent basis as this recitation has been removed from claim 23.
In claim 43, the phrase “a convoluted portion of the shell and a convoluted portion of the exhaust conduit” lack proper antecedent basis.
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, 3-4, 6, 9, 11-14 and 30-35 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of copending Application No. 19/381,653 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1, 3-4, 6, 9, 11-14 and 30-35 of the instant application are broader than claims 1-19 of copending application as claims 1, 3-4, 6, 9, 11-14 and 30-35 do not recite a nozzle with a lumen.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 21, 22 and 36-42 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of copending Application No. 19/381,653 in view of Yu et al. (U.S. Patent No. 6,936,045). Claims 1-19 of copending Application No. 19/381,653 teach all of the features of claims 36-42 with the exception of a thermal barrier. However, Yu et al. teach a similar cryosurgical probe where the elongated shaft includes a thermally insulating element 38 that defines a thermally insulated portion (see Figs. 1 and 2 and col. 4, lines 53-55). Yu et al. thus demonstrate that thermal barriers on cryogenic probes are well known in the art to create thermally insulated portions. Accordingly, it would have been obvious for one of ordinary skill in the art at the effective filing date of the invention to provide the device of copending Application No. 19/381,653 with the thermal barrier disclose by Yu et al. in order to equip the device with a thermal barrier to create a thermally insulated portion.
This is a provisional nonstatutory double patenting rejection.
Claims 23 and 43 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of copending Application No. 19/381,653 in view of Yu et al. (U.S. Patent No. 6,936,045) and further in view of Goddard (GB 2289413). Claims 1-19 of copending Application No. 19/381,653 in view of Yu et al. teach all of the features of claims 23 and 43 with the exception of the shell and exhaust conduit being convoluted. Goddard teaches a cryosurgical instrument having a flexible tube structure 30 comprised of two concentric tubes 100 that are convoluted (see Fig. 2). Goddard thus demonstrates that the use of convoluted tubes in a cryogenic instrument are well known in the art. Accordingly, it would have been obvious for one of ordinary skill in the art at the effective filing date of the invention to make the shell and exhaust conduit of copending Application No. 19/381,653 as convoluted tubes, in the manner disclosed by Goddard, as changes in the shape of a prior art device are well known in the art.
This is a provisional nonstatutory double patenting rejection.
Response to Arguments
Applicant’s arguments, filed May 13, 2026, with respect to the prior art rejections have been fully considered and are persuasive. Accordingly, the rejections have been withdrawn as noted above. However, applicant’s argument that the double patenting rejection is not ripe for response is not persuasive. Thus, the double patenting rejection set forth in the previous Office action has been maintained and new double patenting rejections have been applied to claims 21-23 (due to their amendments) and newly filed claims 36-43.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 BEVERLY MEINDL FLANAGAN whose telephone number is (571)272-4766. The examiner can normally be reached Mon-Fri 7:30AM to 5:00PM.
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, Joanne Rodden can be reached at (303) 297-4276. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BEVERLY M FLANAGAN/Primary Examiner, Art Unit 3794
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