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 .
Response to Amendment
Applicant’s amendment filed 12/16/2026 is acknowledged.
Claims 21-40 remain pending in the current application.
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.
Claims 21-40 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12/239,410 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because they both disclose a scintillator configured to produce light in the presence of radiation emitted from a radiation source, an optical fiber, a velocity of the radiation source is determined according to a plurality of electrical signals from a plurality of light detection units, and the velocity of the radiation source is different than a velocity of the radiation emitted from the radiation source.
Regarding claim 21, the prior patent teaches a system, the system comprising a scintillator configured to produce light in a presence of radiation emitted from a radiation source ([claim 1] A urinary catheter, the urinary catheter comprising: a plurality of scintillators; … wherein: each scintillator is configured to produce light in a presence of radiation emitted from a radiation source)
an optical fiber configured to propagate the light ([claim 1] a plurality of optical fibers)
and a light detection unit configured to generate an electrical signal according to the propagated light, wherein: a velocity of the radiation source is determined according to the electrical signal ([claim 1] a velocity of the radiation source is determined according to a plurality of electrical signals from a plurality of light detection units)
and the velocity of the radiation source is different than a velocity of the radiation emitted from the radiation source ([claim 1] and the velocity of the radiation source is different than a velocity of the radiation emitted from the radiation source).
Regarding claim 22, the prior patent teaches wherein the system comprises a urinary catheter ([claim 1] a urinary catheter)
Regarding claim 23, the prior patent teaches the urinary catheter comprises one or more fiducial markers embedded into walls of the urinary catheter in proximity to the scintillator ([claim 5] the urinary catheter comprises a plurality of fiducial markers embedded into walls of the urinary catheter in proximity to the plurality of scintillators).
Regarding claim 24, the prior patent teaches the one or more fiducial markers are located via an MRI machine after the urinary catheter is placed in a patient and prior to radiation therapy ([claim 6] the plurality of fiducial markers are located via an MRI machine after the urinary catheter is placed in a patient and prior to radiation therapy).
Regarding claim 25, the prior patent teaches a balloon configured to maintain one end of the urinary catheter in a patient's bladder ([claim 8] the urinary catheter comprises a balloon for maintaining one end of the urinary catheter in a patient's bladder).
Regarding claim 26, the prior patent teaches a balloon configured to maintain one end of the urinary catheter in a patient's bladder. ([claim 9] the urinary catheter comprises a balloon for expanding the urinary catheter according to a tumor location)
Regarding claim 27, the prior patent teaches the system comprises a processor configured to determine the velocity of the radiation source ([0018] A processor 337 is configured to calculate a location of the radiation source according to the electrical signals from the plurality of light detection units 313, 323, 333. The processor 337 may be configured to calculate the location of the radiation source by triangulation according to the electrical signals from the plurality of light detection units 313, 323, 333. The processor may also be configured to calculate a velocity of the radiation source 119 according to the electrical signals from the plurality of light detection units.)
Regarding claim 28, the prior patent teaches the light detection unit is a photodetector ([claim 4] the plurality of light detection units are photodetectors).
Regarding claim 29, the prior patent teaches the system comprises three scintillators and three optical fibers ([claim 7] the plurality of scintillators is three scintillators and the plurality of optical fibers is three optical fibers).
Regarding claim 30, the prior patent teaches the system comprises a balloon, and upon inflation the balloon is configured to move the scintillators and the optical fiber ([claim 10] the plurality of scintillators and the plurality of optical fibers are spread out when the balloon is expanded).
Regarding claim 31, the prior patent teaches a system, the system comprising: an afterloader catheter operable to carry a radiation source ([claim 11] A urinary catheter, the urinary catheter comprising: an afterloader catheter operable to carry a radiation source)
a scintillator configured to produce light in a presence of radiation emitted from a radiation source ([claim 1] A urinary catheter, the urinary catheter comprising: a plurality of scintillators; … wherein: each scintillator is configured to produce light in a presence of radiation emitted from a radiation source)
an optical fiber configured to propagate the light ([claim 1] a plurality of optical fibers)
and a light detection unit configured to generate an electrical signal according to the propagated light, wherein: a velocity of the radiation source is determined according to the electrical signal ([claim 1] a velocity of the radiation source is determined according to a plurality of electrical signals from a plurality of light detection units)
and the velocity of the radiation source is different than a velocity of the radiation emitted from the radiation source ([claim 1] and the velocity of the radiation source is different than a velocity of the radiation emitted from the radiation source).
Regarding claim 32, the prior patent teaches wherein the system comprises a urinary catheter ([claim 1] a urinary catheter)
Regarding claim 33, the prior patent teaches the urinary catheter comprises one or more fiducial markers embedded into walls of the urinary catheter in proximity to the scintillator ([claim 5] the urinary catheter comprises a plurality of fiducial markers embedded into walls of the urinary catheter in proximity to the plurality of scintillators).
Regarding claim 34, the prior patent teaches the one or more fiducial markers are located via an MRI machine after the urinary catheter is placed in a patient and prior to radiation therapy ([claim 6] the plurality of fiducial markers are located via an MRI machine after the urinary catheter is placed in a patient and prior to radiation therapy).
Regarding claim 35, the prior patent teaches a balloon configured to maintain one end of the urinary catheter in a patient's bladder ([claim 8] the urinary catheter comprises a balloon for maintaining one end of the urinary catheter in a patient's bladder).
Regarding claim 36, the prior patent teaches a balloon configured to maintain one end of the urinary catheter in a patient's bladder. ([claim 9] the urinary catheter comprises a balloon for expanding the urinary catheter according to a tumor location)
Regarding claim 37, the prior patent teaches the system comprises a processor configured to determine the velocity of the radiation source ([0018] A processor 337 is configured to calculate a location of the radiation source according to the electrical signals from the plurality of light detection units 313, 323, 333. The processor 337 may be configured to calculate the location of the radiation source by triangulation according to the electrical signals from the plurality of light detection units 313, 323, 333. The processor may also be configured to calculate a velocity of the radiation source 119 according to the electrical signals from the plurality of light detection units.)
Regarding claim 38, the prior patent teaches the light detection unit is a photodetector ([claim 4] the plurality of light detection units are photodetectors).
Regarding claim 39, the prior patent teaches the system comprises three scintillators and three optical fibers ([claim 7] the plurality of scintillators is three scintillators and the plurality of optical fibers is three optical fibers).
Regarding claim 40, the prior patent teaches the system comprises a balloon, and upon inflation the balloon is configured to move the scintillators and the optical fiber ([claim 10] the plurality of scintillators and the plurality of optical fibers are spread out when the balloon is expanded).
Allowable Subject Matter
Claims 21-40 would be allowable over prior art should a terminal disclaimer be filed as laid out in the double patenting rejection above.
The following is a statement of reasons for the indication of allowable subject matter: newly presented claim 21 contains limitations reading "a velocity of the radiation source is determined according to the electrical signal, and the velocity of the radiation source is different than a velocity of the radiation emitted from the radiation source" which were the limitations that pushed the parent case to allowance. Furthermore, an updated search has not turned up any additional art that would teach these limitations.
Response to Arguments
Applicant's arguments filed 12/16/2025 have been fully considered but they are not persuasive. Applicant alleges that the previous rejection is moot on the grounds that claims 1-20 had previously been cancelled by a preliminary amendment. However, after careful consideration of the history for this particular application, no such preliminary amendment appears to exist. While it is possible this preliminary amendment was made for a different case within the patent family for this application, this application only contained claims 1-20 until the amendment filed 12/16/2025. Claims 21-40 are thus considered to be new claims filed on 12/16/2025, which are also subject to a double patenting rejection. Thus, in order to advance prosecution, applicant is required to submit a terminal disclaimer.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GABRIEL VICTOR POPESCU whose telephone number is (571)272-7065. The examiner can normally be reached M-F 8AM-5PM.
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/GABRIEL VICTOR POPESCU/Examiner, Art Unit 3798
/JOEL LAMPRECHT/Primary Examiner, Art Unit 3798