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 .
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 1 of U.S. Patent No. US 10,258,356. Although the claims at issue are not identical, they are not patentably distinct from each other because the patent claim 1 recites the identical limitations of the application claim 1 as follows:
A system for removing objects from an interior lumen of an animal, the system comprising: a pull wire having a proximal end and a distal end (patent claim 1, lines 1-3); a distal body attached to the pull wire, the distal body comprising an interior, a perimeter, a proximal end, a distal end (patent claim 1, lines 4-6), a distal body length extending from the proximal end to the distal end, a proximal junction forming the proximal end of the distal body (patent claim 1, lines 6-8), a plurality of proximal strips (patent claim 1, lines 8-9), a basket comprised of a plurality of cells formed by a plurality of basket strips, and a distal junction forming a distal end of the basket (patent claim 1, lines 9-11), the basket comprising a basket interior, each proximal strip having a distal end attached to a cell and a proximal end, the proximal ends of the proximal strips converging at the proximal junction (patent claim 1, lines 11-15), the distal body having a relaxed state wherein the distal body has a first height and a first width, and a collapsed state wherein the distal body has a second height and a second width, the second height less than the first height, the second width less than the first width (patent claim 1, lines 15-20).
Therefore the patent claim 1 is in essence a “species” of the generic invention of the application claim 1. It has been held that a generic invention is “anticipated” by a “species” within the scope of the generic invention. See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Since the application claim 1 is anticipated by the patent claim 1, it is not patentably distinct from the patent claim 1.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. US 10,420,572. Although the claims at issue are not identical, they are not patentably distinct from each other because the patent claim 1 recites the identical limitations of the application claim 1 as follows:
A system for removing objects from an interior lumen of an animal, the system comprising: a pull wire having a proximal end and a distal end (patent claim 1, lines 1-3); a distal body attached to the pull wire, the distal body comprising an interior, a perimeter, a proximal end, a distal end (patent claim 1, lines 4-6), a distal body length extending from the proximal end to the distal end, a proximal junction forming the proximal end of the distal body (patent claim 1, lines 6-9), a plurality of proximal strips (patent claim 1, line 9), a basket comprised of a plurality of cells formed by a plurality of basket strips, and a distal junction forming a distal end of the basket (patent claim 1, lines 9-12), the basket comprising a basket interior, each proximal strip having a distal end attached to a cell and a proximal end, the proximal ends of the proximal strips converging at the proximal junction (patent claim 1, lines 12-16), the distal body having a relaxed state wherein the distal body has a first height and a first width, and a collapsed state wherein the distal body has a second height and a second width, the second height less than the first height, the second width less than the first width (patent claim 1, lines 16-21).
Therefore the patent claim 1 is in essence a “species” of the generic invention of the application claim 1. It has been held that a generic invention is “anticipated” by a “species” within the scope of the generic invention. See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Since the application claim 1 is anticipated by the patent claim 1, it is not patentably distinct from the patent claim 1.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 or claim 13 of U.S. Patent No. US 9,173,668. Although the claims at issue are not identical, they are not patentably distinct from each other because the patent claims 1 or 13 recite the identical limitations of the application claim 1 as follows:
A system for removing objects from an interior lumen of an animal, the system comprising: a pull wire having a proximal end and a distal end (patent claims 1 or 13, lines 1-3); a distal body attached to the pull wire, the distal body comprising an interior, a perimeter, a proximal end, a distal end (patent claims 1 or 13, lines 4-5), a distal body length extending from the proximal end to the distal end, a proximal junction forming the proximal end of the distal body (patent claims 1 or 13, lines 5-8), a plurality of proximal strips (patent claims 1 or 13, line 8), a basket comprised of a plurality of cells formed by a plurality of basket strips, and a distal junction forming a distal end of the basket (patent claims 1 or 13, lines 8-12), the basket comprising a basket interior, each proximal strip having a distal end attached to a cell and a proximal end, the proximal ends of the proximal strips converging at the proximal junction (patent claims 1 or 13, lines 12-16), the distal body having a relaxed state wherein the distal body has a first height and a first width, and a collapsed state wherein the distal body has a second height and a second width, the second height less than the first height, the second width less than the first width (patent claims 1 or 13, lines 16-21).
Therefore the patent claims 1 or 13 are in essence a “species” of the generic invention of the application claim 1. It has been held that a generic invention is “anticipated” by a “species” within the scope of the generic invention. See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Since the application claim 1 is anticipated by the patent claims 1 or 13, they are not patentably distinct from the patent claims 1 or 13.
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 Bonnette et al. (US 2010/0268264; cited in parent application 17/741673).
Regarding claim 1, Bonnette et al. disclose a system for removing objects from an interior lumen of an animal (¶[0009]; Figures 4-9), the system comprising: a pull wire (22) having a proximal end and a distal end; a distal body (24) attached to the pull wire (¶[0090]), the distal body comprising an interior, a perimeter, a proximal end, a distal end, a distal body length extending from the proximal end to the distal end (evident from Figure 4), a proximal junction (42) forming the proximal end of the distal body, a plurality of proximal strips (48), a basket (47) comprised of a plurality of cells (52) formed by a plurality of basket strips (“further divided” strands 48; ¶[0090]), and a distal junction (44) forming a distal end of the basket, the basket comprising a basket interior, each proximal strip having a distal end attached to a cell (evident from Figure 4) and a proximal end, the proximal ends of the proximal strips converging at the proximal junction (evident from Figure 4), the distal body having a relaxed state wherein the distal body has a first height and a first width (Figure 6), and a collapsed state wherein the distal body has a second height and a second width, the second height less than the first height, the second width less than the first width (evident from Figure 8).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Thomas McEvoy whose telephone number is (571) 270-5034 and direct fax number is (571) 270-6034. The examiner can normally be reached on Monday-Friday, 9:00 am – 6:00 pm.
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/THOMAS MCEVOY/Primary Examiner, Art Unit 3771
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