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 Arguments
Applicant's arguments filed 9/4/26 have been fully considered but they are not persuasive. Applicant indicated that a terminal disclaimer had been filed to obviate the double patenting rejection. However, no terminal disclaimer has been filed in the present application. Examiner attempted to make contact by telephone on 9/21/26 and 9/23/26, and a message was left for applicant. However, no response was received regarding this manner. Accordingly, the double patenting rejection is maintained.
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 1-30 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-30 of U.S. Patent No. 12,329,386 in view of Konstantino US 7513886.
Claims 1, 10, 19 and 26 are rejected over claims 1, 10, 19 and 26 of Golshan U.S. Patent No. 12,329,386 which claims all the limitations set forth in the instant claim except for “at least one coil, wherein the at least one coil is arranged on the distal balloon” and “engagement of the at least one coil with an inner wall of the incompetent pelvic vein”.
Konstantino discloses at least one coil, wherein the at least one coil is arranged on the distal balloon (figure 9, helical scoring element 550) or may comprise another external structure over the balloon for treatment of hardened or calcified plaque or other purposes (column 4, lines 63-67).
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the invention to modify Golshan with a coil placed on the distal balloon, for engagement with the vein for treatment of hardened or calcified plaque.
Although the claims at issue are not identical, they are not patentably distinct from each other because of the overlapping subject matter as disclosed in the table below.
Golshan U.S. Patent No. 12,329,386 in view of Konstantino US 7513886
US Application Number 18968212
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Allowable Subject Matter
Claims 1-30 are rejected on the ground of nonstatutory double patenting as being unpatentable over the claims of 1-30 as discussed above in more detail, but would be allowable if a proper terminal disclaimer is filed and the claims are rewritten to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
Gat et al. US 2010/0268076 discloses two balloons 908 and 910 which are selectively
inflatable to delivery sclerosant (figure 9a).
Drasler et al. US 2013/0030410 discloses inflating a distal balloon to the vessel size, the
balloon having a roughened surface for contact with a vein (figure 9c, paragraph 0103).
Lary et al. US 2002/0010418 discloses distal balloon 24 fully inflated for occlusion and a proximal
balloon 28 being inflated to a treatment volume to transverse the vein (figures 4-6).
Lary US 6306151 discloses a balloon being partially inflated with an abrasive member 29 within
the folds of the balloon and moved back and forth along the vessel.
Konstantino US 7513886 discloses a balloon with a coil placed around the balloon.
However, Gat et al., Drasler et al. Lary et al., Lary, and Konstantino fail to disclose partially inflating the distal balloon to a mechanical treatment volume for engagement with an inner wall of the incompetent pelvic vein, wherein the distal balloon is in a partially inflated state, wherein a volume of the distal balloon in the partially inflated state is less than a volume of the distal balloon in a fully inflated occlusion state; while maintaining the distal balloon at the mechanical treatment volume, advancing the device along the incompetent pelvic vein to a distal end of a closure zone; inflating the distal and proximal balloons to the fully inflated occlusion state.
No combination of Gat et al., Drasler et al. Lary et al., Lary and prior art of record or prior art at
large serves to rectify the deficiencies of Gat et al., Drasler et al. Lary et al., and Lary in regard to the
limitations of the claim. Further, the prior art of record, as well as the prior art at large, alone or in
combination, fails to remedy those deficiencies listed above.
Conclusion
THIS ACTION IS MADE FINAL. 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 CHRISTINA C LAUER whose telephone number is (571)270-5418. The examiner can normally be reached Monday-Thursday 7:00 AM-4:00 PM.
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, Darwin Erezo can be reached at (571) 272-4695. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHRISTINA C LAUER/Examiner, Art Unit 3771
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