DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions. 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.
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Claims 2, 3 and 5-15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of U.S. Patent No. 11,350,964 to Ajuri et al.,(hereinafter Aljuri “Pat. No. 964”).
Regarding Claim 2 of the instant application, claim 1 of the “Pat. No. 964” discloses a tissue treatment device comprising: a shaft having a proximal end and a distal end; at least one energy source positioned in an energy delivery region on the shaft configured to deliver energy radially outwardly; an aspiration lumen on the shaft configured to remove tissue products; and
a lumen in the shaft configured to flush with a fluid to help remove the tissue; wherein the energy source is adapted to be translated and rotated relative to the shaft.
Regarding claim 3 of the instant application, Claim 6 of the Pat. No. 964 teaches the energy source comprises a laser energy source. Therefore, the reference teaches at least one optical energy source.
Regarding claim 5 of the application, Claim 2 of the Pat. No. 964 teaches the shaft has a width in the range from 1mm to 10mm and a length in the range from 15cm to 25cm.
Regarding claim 6 of the application, Claim 4 of the of the Pat. No. 964 teaches the treatment device of claim 1 further comprises an expandable anchor near the distal end for anchoring in a blader.
Regarding claim 7 of the application, Claim 5 of the of the Pat. No. 964 teaches the expandable anchor comprises a balloon adapted to expand to anchor to occupy the interior of the blader when inflated.
Regarding claim 8 of the application, Claim 6 of the Pat. No. 964 teaches the energy source comprises a laser source.
Regarding claim 9 of the application, Claim 7 of the Pat. No. 964 teaches the treatment device of claim 8, wherein the energy source further comprises a mirror for reflecting a laser energy.
Regarding Claim 10 of the application, Claim 8 of Pat. No. 964 teaches treatment device of claim 1, wherein the energy source comprises a conductive fluid source and a radiofrequency energy source.
Regarding claim 11 of the instant application, Claim 9 of Pat. No. 964 teaches the treatment device of claim 1 wherein the energy source comprises and electrode.
Regarding claim 12 of the application, Claim 10 of Pat. No. 964 teaches treatment device of claim 11, wherein the electrode comprises a laterally projecting electrode configured to engage against tissue and deliver radio frequency energy to ablate the tissue.
Regarding claim 13 of the application, Claim 11 of Pat. No. 964 teaches the treatment device of claim 9, wherein the electrode projects literally from a tube.
Regarding claim 14 of the application, Claim 12 of Pat. No. 964 teaches treatment device of claim 9, wherein the electrode is configured to ablate tissue and to cauterize tissue after ablation by changing a radiofrequency energy.
Regarding claim 15 of the application, Claim 13 of Pat. No. 964 teaches treatment device of claim 9, wherein the electrode is configured to deliver electrical energy in either a monopolar or bipolar mode.
Allowable Subject Matter
Claim 4 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. U.S. Patent No. 12,108,964 to Aljuri (herein “Pat. No. 8964”.
“Pat. No. 964” discloses a tissue treatment device comprising: a shaft having a proximal end and a distal end; at least one energy source positioned in an energy delivery region on the shaft configured to deliver energy radially outwardly; an aspiration lumen on the shaft configured to remove tissue products; and a lumen in the shaft configured to flush with a fluid to help remove the tissue; wherein the energy source is adapted to be translated and rotated relative to the shaft.
Aljuri “Pat. No. 8964” further discloses a tissue treatment device comprising a shaft having a proximal end and a distal end ; and an energy source positioned in an energy delivery region on the shaft to configured to deliver an energy radially outwardly; wherein the energy source is adapted to be translated and rotated relative to the shaft to selectively direct the energy source to treat different regions of the tissue wherein the tissue comprises a prostate tissue. Aljuri “Pat. No. 8964” further teaches in claim 8 the energy source is one or more of a laser, radiofrequency source, a thermal mechanical, vibration, acoustic, optical or electrical energy source.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AHMED M FARAH whose telephone number is (571)272-4765. The examiner can normally be reached Mon - Fri. 9:30AM -10:30 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Niketa Patel can be reached at 571-272-4156. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/AHMED M FARAH/Primary Examiner, Art Unit 3792
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