CTNF 18/909,481 CTNF 95423 DETAILED ACTION Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia 1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. 07-06 AIA 15-10-15 2. 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. Double Patenting 08-33 AIA 3. 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). 4. 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). 5. 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. 6. 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. 08-34 AIA 7. Claim s 1, 2, 4-13, 16, 17, 19, and 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim s 1-9 and 11 of U.S. Patent No. 12,137,970 . Although the claims at issue are not identical, they are not patentably distinct from each other because the reference patent anticipates the claims of the instant application . 8. Here, the more specific patent claim, i.e., Claim 1, encompasses the broader instant application claims, such as instant application Claims 1, 2, 4, and 16. For example, Claim 1 of the instant application discusses a generic method for treating a stenosis with a lumen of a previously implanted metallic stent, comprising: advancing an endoscope, advancing an elongate shaft comprising at least one electrode proximate a distal end of the elongate shaft and into the lumen of the previously implanted metallic stent, advancing a probe that is spaced apart from the elongate shaft from the endoscope and into electrical contact with the previously implanted metallic stent, and energizing the bipolar ablation device to ablate the stenosis, which is a broader recitation compared to the limitations outlined in the reference patent. Specifically, the reference patent includes the more specific limitation of an exposed metallic distal portion of the elongate shaft forms the at least one electrode. Following the rationale in In re Goodman cited in the preceding paragraph, wherein the applicant has once been granted a patent containing a claim for the specific narrow invention, the applicant may not obtain a second patent with a claim for the generic or broader invention without first submitting an appropriate terminal disclaimer . 08-34 AIA 9. Claim s 1, 2, 4-10, 12, 14, and 16-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim s 1-9, 15, and 19 of U.S. Patent No. 11,813,018 . Although the claims at issue are not identical, they are not patentably distinct from each other because the reference patent anticipates the claims of the instant application . 10. Here, the more specific patent claims, i.e., Claim 1 and 15, encompass the broader instant application claims, such as instant application Claims 1, 2, 4, and 16. For example, Claim 1 of the instant application discusses a generic method for treating a stenosis with a lumen of a previously implanted metallic stent, comprising: advancing an endoscope, advancing an elongate shaft comprising at least one electrode proximate a distal end of the elongate shaft and into the lumen of the previously implanted metallic stent, advancing a probe that is spaced apart from the elongate shaft from the endoscope and into electrical contact with the previously implanted metallic stent, and energizing the bipolar ablation device to ablate the stenosis, which is a broader recitation compared to the limitations outlined in the reference patent. Specifically, the reference patent includes the more specific limitation that the electrode lead is detached from the previously implanted metallic stent. Following the rationale in In re Goodman cited in the preceding paragraph, wherein the applicant has once been granted a patent containing a claim for the specific narrow invention, the applicant may not obtain a second patent with a claim for the generic or broader invention without first submitting an appropriate terminal disclaimer. Allowable Subject Matter 11. Claims 3 and 15 are allowable, but objected to as being dependent upon a rejected base claim. Conclusion 12. Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANNIE L SHOULDERS whose telephone number is (571)272-3846. The examiner can normally be reached Monday-Friday (alternate Fridays) 8AM-5PM 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, Joseph Stoklosa can be reached at 571-272-1213. 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. /ANNIE L SHOULDERS/Examiner, Art Unit 3794 Application/Control Number: 18/909,481 Page 2 Art Unit: 3794 Application/Control Number: 18/909,481 Page 3 Art Unit: 3794 Application/Control Number: 18/909,481 Page 4 Art Unit: 3794 Application/Control Number: 18/909,481 Page 5 Art Unit: 3794 Application/Control Number: 18/909,481 Page 6 Art Unit: 3794 Application/Control Number: 18/909,481 Page 7 Art Unit: 3794
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