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.
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, 5, 11, and 15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 21 of U.S. Patent No. 10,029,039 B2 (hereinafter “the ‘039 patent”). Although the claims at issue are not identical, they are not patentably distinct from each other for the reasons set forth below.
Claim 21 of the ‘039 patent is directed to an implantable blood pump with a percutaneous cable including a plurality of lead sets to alternately provide power and data to an implantable internal controller such that power provided from one or more of the lead sets is temporarily discontinued while data is provided from one or more of the lead sets to the implantable internal controller, where each of the lead sets are configured to alternately provide power and data to the implantable internal controller such that data provided from one or more of the lead sets is temporarily discontinued while power is provided from one or more of the lead sets to the implantable internal controller.
Similarly, instant claim 1 is directed to a percutaneous cable in a blood pump system including transmitting energy over a pair of conductors of the percutaneous cable to power an implantable blood pump, discontinuing the energy transmission to accommodate data transmission, then transmitting data over the first pair of conductors, discontinuing transmitting data, then recommencing transmitting electrical energy to power the implantable blood pump. Claim 21 of the ‘039 patent encompasses the scope of instant claim 1.
Claim 21 of the ‘039 patent further includes an external power source. Similarly, instant claim 5 requires a power source external to the patient. Claim 21 of the ‘039 patent encompasses the scope of instant claim 5.
Claim 21 of the ‘039 patent is directed to an implantable blood pump with a percutaneous cable including a plurality of lead sets to alternately provide power and data to an implantable internal controller such that power provided from one or more of the lead sets is temporarily discontinued while data is provided from one or more of the lead sets to the implantable internal controller, where each of the lead sets are configured to alternately provide power and data to the implantable internal controller such that data provided from one or more of the lead sets is temporarily discontinued while power is provided from one or more of the lead sets to the implantable internal controller.
Similarly, instant claim 11 is directed to a ventricular assist device and percutaneous cable in a blood pump system including transmitting energy over a pair of conductors of the percutaneous cable to power an implantable blood pump, discontinuing the energy transmission to accommodate data transmission, then transmitting data over the first pair of conductors, discontinuing transmitting data, then recommencing transmitting electrical energy to power the implantable blood pump. Claim 21 of the ‘039 patent encompasses the scope of instant claim 11.
Claim 21 of the ‘039 patent further includes an external power source. Similarly, instant claim 15 requires a power source external to the patient. Claim 21 of the ‘039 patent encompasses the scope of instant claim 15.
Allowable Subject Matter
Claims 2-4,6-10,12-14 and 16-18 are 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
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Lindsey G Wehrheim whose telephone number is (571)270-5181. The examiner can normally be reached Monday - Friday 9 a.m. - 5 p.m. EST.
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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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Lindsey G Wehrheim
Primary Examiner
Art Unit 3799
/LINDSEY G WEHRHEIM/Primary Examiner, Art Unit 3799
Prosecution Insights