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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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 21-38 and 40 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 5, and 11 of U.S. Patent No. 11819631 (see table below).
Regarding claims 21, 34, and 40, although the claims at issue are not identical, they are not patentably distinct from each other because all of the claimed elements of claims 21, 34, and 40 of the instant application can be found in claims 1, 5, 11, respectively, of the issued patent. The difference between the claims of the instant application and the claims of the issued patent lie in the fact that the issued patent claims include more elements and is thus more specific. Thus, the invention of claims 1, 5, and 11 of the issued patent is in effect a “species” of the “generic” inventions of claims 21, 34, and 40 of the instant application. It has been held that the generic invention is anticipated by the species. See In re Goodman. 29 USPQ2d 2010 (Fed. Cir. 1993). Since claims 21, 34, and 40 of the instant application is anticipated by claim 1, 5, and 11 of the issued patent, it is not patentably distinct from claim 1, 5, and 11 of the issued patent.
Instant Claims
Patent Claims
21
1
See discussion above
22
1
23
1
24
1
25
1
26
1
27
1
28
1
29
1
30
1
31
1
32
1
33
1
34
5
See discussion above
35
1
36
1
37
1
38
1
40
11
See discussion above
Claim 39 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 5 of U.S. Patent No. 11819631 in view of McFerran (US 20060089618).
Regarding claim 39, claims 1 and 5 of the issued patent claim all of the limitations set forth in claim 39 except that a radiopaque marker positioned along the distal portion distal of a distal terminus of the coil.
McFerran teaches a catheter having a radiopaque marker positioned along the distal portion distal of a distal terminus of the coil (radiopaque marker 70 in fig. 2). Therefore, it would have been obvious to one of ordinary skill before the effective filing date of the claimed invention to have modified the issued patent to claim a radiopaque marker positioned along the distal portion distal of a distal terminus of the coil, as taught by McFerran, to permit the physician to radiographically visualize the distal end of the catheter (paragraph 29).
Claims 21-40 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12070558.
Regarding claims 21, 34, and 40, although the claims at issue are not identical, they are not patentably distinct because all of the claimed elements of claims 21, 34, and 40 of the instant application can be found in claims 1, 13, and 20, respectively, of the issued patent. The difference between the claims of the instant application and the claims of the issued patent lie in the fact that the issued patent claims include more elements and is thus more specific. Thus, the invention of claims 1, 13, and 20 of the issued patent is in effect a “species” of the “generic” inventions of claims 21, 34, and 40 of the instant application. It has been held that the generic invention is anticipated by the species. See In re Goodman. 29 USPQ2d 2010 (Fed. Cir. 1993). Since claims 21, 34, and 40 of the instant application is anticipated by claim 1, 13, and 20 of the issued patent, it is not patentably distinct from claim 1, 13, and 20 of the issued patent.
Instant Claims
Patent Claims
21
1
See discussion above
22
1
23
2
24
3
25
4
26
5
27
6
28
7
29
8
30
9
31
10
32
11
33
12
34
13
See discussion above
35
13
36
14
37
16
38
18
39
19
40
20
See discussion above
Allowable Subject Matter
Excepting the double patenting rejections above, Claims 21-40 are allowable over the prior art of record.
The following is an examiner’s statement of reasons for indicating allowable subject matter: The prior art of record fails to disclose either singly or in combination the claimed catheter.
The closest prior art of record is Evard (US 4981478).
Regarding independent claims 21, 34, and 40, Evard fails to teach among all the limitations or render obvious a proximal terminus of the coil is at a border between the proximal region and the overlapping region, in combination with the total structure and function as claimed.
Evard discloses the claimed catheter substantially in that Evard discloses an elongated shaft (tubular member 13 in fig. 1) having a proximal portion, a distal portion, and an intermediate portion therebetween; wherein: the intermediate portion has a proximal region, an overlapping region, and a distal region (the claimed portions/regions can be delimited from the inner tubular member 13 in fig. 1), a first braid (fibrous layer 30 in fig. 1 and 4), a second braid coextensive with at least a portion of the first braid (fibrous layer 26 in fig. 1 and 4); and a coil (fibrous layer 23 in fig. 1 and 4). However, the coil extends the entire length of the catheter (figs. 1 and 2) so that a proximal terminus, which is interpreted to mean a proximal-most end point, of the coil is not at a border between the proximal and overlapping regions, as required by the claim.
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
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Bishop (US 20110152763) discloses a catheter (fig. 3A) comprising two braided layers and one coil layer (paragraph 20).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to COURTNEY FREDRICKSON whose telephone number is (571)270-7481. The examiner can normally be reached Monday-Friday (9 AM - 5 PM EST).
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.
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/COURTNEY FREDRICKSON/Primary Examiner, Art Unit 3783
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