DETAILED ACTION
Status of Application
Receipt of the Claim set filed 7/30/2026, is acknowledged.
Claims 20-21 are newly added.
Claim 8 is cancelled.
Claims 1-7 and 9-21 are pending and currently under consideration.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendments/Arguments
The amendments are sufficient to overcome the objection to the specification, which is now withdrawn. The amendment to claim 13 is sufficient to overcome the 35 112(b) rejection which is now withdrawn. The amendments to claims 1 and 14 along with the arguments are sufficient to overcome the previous rejections under 35 USC 103 which are now withdrawn. The claims are free of the art.
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 claims at issue 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 reference 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. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form 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 http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-7, and 9-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of US Patent 11,590,072 B2.
Although the claims at issue are not identical, they are not patentably distinct from each other because instant claim 1 requires an implantable device, comprising: a tubular body defining a first opening and a reservoir, and a nanochanneled membrane disposed within the first opening, wherein the tubular body has a length of less than 5 mm. However, claim 1 of the ‘072 patent is obvious over the device of instant claim 1 as they both have the same components because claim 1 of the ‘072 patent requires an implantable fiducial marker device, comprising: a tubular body made of a radiopaque material, with a length of less than 5 mm, defining a first opening, a reservoir, and a nanochanneled membrane disposed within the first opening.
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have arrived at the claimed system.
This is a nonstatutory double patenting rejection.
Claims 1-7, and 9-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of US Patent 12,151,021 B2.
Although the claims at issue are not identical, they are not patentably distinct from each other because instant claim 1 requires an implantable device, comprising: a tubular body defining a first opening and a reservoir, and a nanochanneled membrane disposed within the first opening, wherein the tubular body has a length of less than 5 mm. However, claim 1 of the ‘021 patent is obvious over the device of instant claim 1 as they both have the same components because claim 1 of the ‘021 patent requires implantable fiducial marker device, comprising: a tubular body made of a radiopaque material, with a length of less than 5 mm, defining a first opening, a reservoir, and a nanochanneled membrane disposed within the first opening.
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have arrived at the claimed system.
This is a nonstatutory double patenting rejection.
Conclusion
No claims are allowed.
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/QUANGLONG N TRUONG/Examiner, Art Unit 1615
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