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 Objections
Claim 1 is objected to because of the following informalities: the claim should be amended to recite “tube frame” in line 5 to correct for spelling. Appropriate correction is required.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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(s) 1 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Petersen (US 20140052097).
Regarding claim 1, Petersen discloses a guide catheter extension (fig. 1), comprising:
a push member having a proximal end and a distal end (proximal shaft 16 in fig. 3); and
a tube frame coupled to the distal end of the push member (collar 142 in fig. 5), the tube frame defining a lumen having a diameter sufficient to receive an interventional vascular device therethrough (absent any other limitations regarding the specific device, the lumen is capable of receiving some kind of interventional vascular device), wherein the tune frame includes at least one segment having a plurality of cut patterns (cuts 150 in fig. 5), wherein the cut patterns are selected from the group consisting of interconnected rings, interrupted spirals, zones or combinations thereof (fig. 5 shows interconnected rings).
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.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 5 of U.S. Patent No. 10617847.
Although the claims at issue are not identical, they are not patentably distinct from each other because all of the claimed elements of claim 1 of the instant application can be found in claim 5, 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 claim 5 of the issued patent is in effect a "species" of the "generic" inventions of claim 1 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 claim 1 of the instant application is anticipated by claim 5 of the issued patent, it is not patentably distinct from claim 5 of the issued patent.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 15 of U.S. Patent No. 11744988 in view of Petersen.
Regarding claim 1, issued claim 15 claims all of the limitations set forth in instant claim 1 except that the cut patterns are selected from the group consisting of interconnected rings, interrupted spirals, zones or combinations thereof.
Petersen teaches that the cut pattern is formed of interconnected rings (fig. 5). Therefore, it would have been obvious to one of ordinary skill before the effective filing date of the claimed invention to have modified the cut patterns to be interconnected rings, as taught by Petersen, for the purpose of providing a desired level of flexibility (6:59-61).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Di Caprio (US 20140276618) discloses a similar guide catheter extension (fig. 20D) comprising a push member (manipulation shaft 16 in fig. 20D) and a tubular member (shaft 14 in fig. 20D) comprising a plurality of cut patterns (holes 32/132 in fig. 20D; paragraph 123). The examiner notes that Di Caprio appears capable of being used in a 102(a)(1) rejection.
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).
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/COURTNEY FREDRICKSON/ Primary Examiner, Art Unit 3783
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