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 .
Allowable Subject Matter
Claims 1-18 are allowable over the prior art.
The following is a statement of reasons for the indication of allowable subject matter: Most pertinent prior art, including U.S. Patent Pub. No. 2006/0224165 to Surti et al., U.S. Patent No. 5,669,885 to Smith, and U.S. Patent No. 6,814,742 to Kimura et al. disclose a tissue engagement device. The device comprises a sheath, a first arm of which at least a proximal portion thereof is within the sheath, the first arm comprising a first piercing surface, a second arm of which at least a proximal portion thereof is within the sheath, the second arm comprising a second piercing surface, and an actuation cannula within the sheath, the actuation cannula being configured to move within the sheath between a retracted position and an extended position, wherein the actuation cannula moves at least a portion of each of the first and second arms.
The prior art fails to teach or disclose, however, the structural relationship including but not limited to wherein the actuation cannula is configured to move between a retracted position and an extended position, moving at least a portion of each of the first and second arms into a region between an exterior surface of the actuation cannula and an interior surface of the sheath as the actuation cannula moves distally to the extended position, and wherein each of the first and second tissue engaging members comprises a first face and a second face, wherein the first face is proximal-facing relative to the sheath and the second face is distally-facing relative to the sheath.
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 1-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 10,631,840. Although the claims at issue are not identical, they are not patentably distinct from each other because both the present application and granted patent disclose a tissue engagement device. The device comprises a sheath, a first arm of which at least a proximal portion thereof is within the sheath. The first arm comprises a first piercing surface, a second arm of which at least a proximal portion thereof is within the sheath, the second arm comprising a second piercing surface, and an actuation cannula configured to move distally from a retracted position to an extended position, wherein the actuation cannula moves at least a portion of each of the first and second arms into a region between an exterior surface of the actuation cannula and an interior surface of the sheath as the actuation cannula moves distally to the extended position.
Conclusion
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/CHRISTOPHER J BECCIA/Primary Examiner, Art Unit 3775