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 .
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim 1 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Dillon US 2013/0041314.
Regarding claim 1, Dillon discloses a steerable catheter handle (Figs. 7-8) comprising: a housing (handle 148, P0028); a first follower (control wire 20a, P0028) disposed in the housing; a second follower (control wire 20b, P0028) disposed in the housing; a first driver (knob 128a, P0028) rotatably coupled to the housing and coupled to the first and second followers, wherein rotation of the first driver moves the first and second followers in opposite directions; a third follower (control wire 20c, P0028) disposed in the housing; a fourth follower (control wire 20d, P0028) disposed in the housing; and a second driver (knob 128b, P0028) rotatably coupled to the housing and coupled to the third and fourth followers, wherein rotation of the second driver moves the third and fourth followers in opposite directions.
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 4-10 and 12 of U.S. Patent No. 11,040,174. Although the claims at issue are not identical, they are not patentably distinct from each other because the patent 11,040,174 discloses a steerable catheter handle comprising: a housing (handle, c 20 ln 65); a first follower (first follower, c 20 ln 67) disposed in the housing; a second follower (second follower, c 21 ln 1) disposed in the housing; a first driver (first driver, c 21 ln 2) rotatably coupled to the housing and coupled to the first and second followers, wherein rotation of the first driver moves the first and second followers in opposite directions; a third follower (third follower, c 21 ln 7) disposed in the housing; a fourth follower (fourth follower, c 21 ln 8) disposed in the housing; and a second driver (second driver, c 21 ln 9) rotatably coupled to the housing and coupled to the third and fourth followers, wherein rotation of the second driver moves the third and fourth followers in opposite directions (c 21 ln 11-13).
Claim
11,040,174
Citation
1
1
2
2
3
4
4
5
5
8
6
6
7
7
8
9
9
10
10
12
11
1
12
2
13
4
14
5
15
8
16
6
17
7
18
9
19
10
20
12
Potentially Allowable Subject Matter
Claims 11-20 are potentially allowed, subject to the double patenting rejection above.
Claims 2-10 are objected to as being dependent upon a rejected base claim, but are potentially allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims, as well as by addressing the double patenting rejection above.
Reasons for Potential Allowance
The following is an Examiner's statement of reasons for potential allowance: the claims in this application are potentially allowed because the prior art of record fails to disclose either singularly or in combination the claimed steerable catheter handle of claims 2-10 and the steerable catheter assembly of claims 11-20.
The closest prior art is Dillon US 2014/0107623 A1.
Regarding claim 2, Dillon fails to teach among all the limitations or render obvious a steerable catheter handle as claimed, which includes wherein the first driver comprises: a first drive ring; a first drive screw coupled to the first drive ring; and a second drive screw coupled to the first drive ring, in combination with the total structure and function of the steerable catheter handle as claimed.
Regarding claim 11, Dillon fails to teach among all the limitations or render obvious a steerable catheter assembly as claimed, which includes a first and second follower, wherein rotation of the first driver moves the first and second followers in opposite directions, and a third and fourth follower, wherein rotation of the second driver moves the third and fourth followers in opposite directions, in combination with the total structure and function of the steerable catheter assembly as claimed.
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. Schultheis et al. (Schultheis) US 2019/0038873 A1 Fig. 5 teaches a steering assembly having a drive ring 540 coupled to first and second screws 552 s/f and first and second followers 551 s/f. However, it does not teach a second driver coupled to third and fourth screws and third and fourth followers.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN A DOUBRAVA whose telephone number is (408)918-7561. The examiner can normally be reached M-F 9-5 Pacific Time.
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/J.A.D./Examiner, Art Unit 3783 /James D Ponton/Primary Examiner, Art Unit 3783
Prosecution Insights