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 .
Election/Restrictions
Applicant’s election of Group I, claims 1-19, in the reply filed on 6/1/2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
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 1-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 11510680.
Although the claims at issue are not identical, they are not patentably distinct from each other because the elements of claims 1-19 of the instant application are to be found in claims 1-19 of the patent. Thus the difference between claims 1-19 of the instant application and claims 1-19 of the patent lies in the fact that the patent claims include many more elements and is thus much more specific. Thus, the invention of claims 1-19 of the patent is in effect a “species” of the “generic” invention of claims 1-19 of the instant application. It has been held that the generic invention is “anticipated” by the “species”. See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Since claims 1-19 are anticipated by claims 1-19 of the patent, it is not patentably distinct from claims 1-19 of the patent.
Allowable Subject Matter
Claims 1-19 would be allowable if the above double patenting rejection is obviated.
The following is a statement of reasons for the indication of allowable subject matter: The closest prior arts of record include Ferrera et al (US 2006/0241686) and Bowman et al (US 2015/0173772).
Ferrera discloses an endovascular instrument (Figs. 2-3) for filing a hollow body structure (Paragraphs [0037], [0039]), the endovascular instrument comprising: an elongated member configured to exhibit differing coiling properties along a length of the elongated member (1), the elongated member having: a first region configured to bend in a first manner within the hollow body structure to form a stabilizing frame (8); and a second region proximal to the first region (9 or 9’), wherein the second region is configured to bend, alter formation of the frame, in a second manner substantially within the frame, thereby formed a curved mass substantially within the frame (Paragraph [0040], [0041]), wherein the first region and the second region are interconnected (see Figs. 3A, 3B) and wherein at least one structure property differs between the first region and the second region (J shape, helical coil shape). However, Ferrera does not disclose or make obvious at least the first region is configured to be detached from the second region following delivery of the first region to the hollow body structure. Further, there is no suggestion or motivation to modify Ferrera in order to arrive at the claimed feature.
Bowman et al discloses an endovascular instrument for filling a hollow body structure, the endovascular instrument comprising: an elongated member (10) having: a first region (first segment 12); and a second region (second segment 12) proximal to the first region; wherein the first region and the second region are interconnected (via link 14) ([paragraph [0061]); wherein the first region is configured to be detached from the second region following delivery of the first region to the hollow body structure ([0061], [0063]). However, Bowman et la does not disclose or make obvious at least the elongated member is configured to exhibit differing coiling properties along a length of the elongated member, the first region configured to bend in a first manner within the hollow body structure to form a stabilizing frame; and the second region configured to bend, after formation of the frame, in a second manner substantially within the frame, thereby forming a curved mass substantially within the frame; wherein at least one structural property differs between the first region and the second region. Further, there is no suggestion or motivation to modify Bowman et al in order to arrive at the claimed feature.
When one of ordinary skill in the art views Ferrera et al in view of the detachment mechanism of Bowman et al, the prior art would not suggest that the detachment is between the first region which forms a stabilizing frame and a second region that forms a curved mass substantially within the frame. Instead, the detachment of Bowman et al occurs at links (14) between the same type of regions (12).
Therefore, in view of the prior art and its deficiencies, Applicant’s invention is rendered novel and non-obvious, and thus, is allowable as claimed.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KATHERINE M SHI whose telephone number is (571)270-5620. The examiner can normally be reached Mon-Thurs, 8-5 EST.
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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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/KATHERINE M SHI/Primary Examiner, Art Unit 3771
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