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 .
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 obviousness-type 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); and 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 a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Claims 1-19 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-21 of Nagy; Elizabeth K. (US 12097347 B2).
Regarding pending claim 1, Nagy claims all limitations in patented claim 1, namely a shunt assembly for a subject to shunt fluid from a first location to a second location (claim 1, A shunt assembly … to a second location);
comprising: an inlet catheter having a wall defining an external surface and an internal surface and extending from a proximal end to a distal terminal end (claim 1, an inlet catheter … to a distal terminal end);
an internal passage defined by the internal surface of the inlet catheter (claim 1, an internal passage defined by the internal surface);
a through-bore formed through the wall from the external surface to the internal passage (claim 1, a through-bore formed through the wall from the external surface to the internal passage to receive the fluid;); and
a spacer member positioned relative to the wall and having a projection configured to be moved between a first position to form a barrier relative to the through-bore and a second position extending past the distal terminal end of the inlet catheter (claim 1, a spacer member immovably fixed relative to the external surface of the wall and having a projection configured to be moved between a first position to position tissue away from the through-bore and a second position extending past the distal terminal end of the inlet catheter).
Regarding the first position that forms a barrier relative to the through-bore, Nagy claims that the projection extends in a plane to overlay the through-bore (claim 1, wherein when the projection is in the first position a distal end of the projection is angled radially toward the wall and extends to a plane to overlay relative to the through-bore).
Regarding pending claim 9, Nagy claims all limitations in patented claims 10 and 11, namely a shunt assembly for a subject to shunt fluid from a first location to a second location (claim 10, a shunt assembly … to a second location);
comprising: an inlet catheter having a catheter wall defining an external surface and an internal surface and extending from a proximal end to a distal terminal end; an internal passage defined by the internal surface of the inlet catheter (claim 10, an inlet catheter … an internal surface … an internal passage defined by the internal surface);
a through-bore formed through the catheter wall from the external surface to the internal passage (claim 10, a through-bore formed through the catheter wall from the external surface to the internal passage to receive the fluid); and
a spacer member having (i) a fixation portion fixed to the catheter wall and (ii) a projection extending from the fixation portion and configured to be moved between a first position to form a barrier relative to the through-bore and a second position extending past the distal terminal end of the inlet catheter (claim 10, a spacer member having (i) a fixation portion immovably fixed to the catheter wall and (ii) a projection extending from the fixation portion and configured to be moved between a first position to position tissue away from the through-bore and a second position extending past the distal terminal end of the inlet catheter).
Regarding the first position that forms a barrier, Nagy claims that the projection extends over the through-bore (claim 11, wherein the projection includes a plurality of projections extending from the fixation portion and over the plurality of through-bores).
Regarding pending claim 15, Nagy claims all limitations in patented claim 17, namely a method of placing a shunt assembly within a subject to shunt fluid from a first location to a second location (claim 17, a method of placing a shunt assembly … to a second location);
comprising: providing an inlet catheter having (i) a catheter wall defining an external surface and an internal surface and extending from a proximal end to a distal terminal end, (ii) an internal passage defined by the internal surface of the inlet catheter (claim 17, providing an inlet catheter having (i) a catheter wall defining an external surface and an internal surface and extending from a proximal end to a distal terminal end, (ii) an internal passage defined by the internal surface); and
(iii) a through-bore formed through the catheter wall from the external surface to the internal passage (claim 17, (iii) a through-bore formed through the catheter wall from the external surface to the internal passage); and
a spacer member on the catheter wall having (i) a fixation portion fixed to the catheter wall (claim 17, (i) a fixation portion immovably fixed to the catheter wall); and
(ii) a projection extending from the fixation portion and configured to be moved between a first position to form a barrier relative to the through-bore and a second position extending past the distal terminal end of the inlet catheter (claim 17, (ii) a projection extending from the fixation portion and configured to be moved between a first position to position tissue away from the through-bore and a second position extending past the distal terminal end of the inlet catheter;).
Regarding the first position that forms a barrier, Nagy claims that the projection overlays the through-bore (claim 17, wherein when the projection is in the first position a distal end of the projection is angled radially toward the wall and extends to a plane to overlay relative to the through-bore and position the projection proximal the distal terminal end of the inlet catheter).
Regarding pending claims 2-8, 10-14 and 16-19, Nagy claims all limitations in patented claims 1-8 and 10-21 as shown in table 1.
Table 1: Nagy double patenting
Pending claim
Nagy
Pending claim
Nagy
Pending claim
Nagy
2
1, 2
8
1, 7, 8
16
17, 18
3
1, 3
10
10, 11
17
17, 18, 19
4
1, 4
11
10, 11, 12
18
17, 18, 19, 20
5
1, 4, 5
12
10, 11, 12, 13
19
17, 18, 19, 21
6
1, 4, 5, 6
13
10, 14
7
1, 7
14
10, 15, 16
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to:
Tel 571-272-2590
Fax 571-273-2590
Email Adam.Marcetich@uspto.gov
The Examiner can be reached 8am-4pm Mon-Fri.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Rebecca Eisenberg can be reached at 571-270-5879. The fax phone number for the organization where this application is assigned is 571-273-8300.
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.
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.
/Adam Marcetich/
Primary Examiner, Art Unit 3781
Prosecution Insights