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 .
Priority
Acknowledgment is made of applicant's claim for foreign priority under 35 U.S.C. 119(a)-(d). A certified copy of Parent Application 1701027.3, filed in The United Kingdom on 20 January 2017 has been received in parent Application 16479701 on 22 July 2019.
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 obviousness-type 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); and 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 a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Claims 1-20 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-20 of Havard ‘468; John et al. (US 11446468 B2).
Regarding pending claim 1, Havard ‘468 claims all limitations in patented claim 1. Havard ‘468 claims additional features including a drainage opening and the balloon comprising first and second regions secured to the shaft (claim 1). However, Havard ‘468 claims all features of pending claim 1.
Regarding pending claims 2-20, Havard ‘468 claims all limitations in patented claims 1-20 as shown in Table 1.
Table 1: Havard ‘468 double patenting
Pending claim
Havard ‘468
Pending claim
Havard ‘468
Pending claim
Havard ‘468
2
1
9
1, 9
16
1, 16
3
1, 2, 3
10
1, 10
17
1, 17
4
1, 4
11
1, 11
18
1, 18
5
1, 5
12
1, 12
19
1, 19
6
1, 6
13
1, 13
20
1, 20
7
1, 7
14
1, 14
8
1, 8
15
1, 15
Claims 1-20 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-20 of Havard ‘142; John et al. (US 12214142 B2).
Regarding pending claim 1, Havard ‘142 claims all limitations in patented claim 1. Havard ‘142 claims additional features including a drainage opening that communicates with a drainage lumen in the shaft (claim 1). However, Havard ‘142 claims all features of pending claim 1.
Regarding pending claims 2-20, Havard ‘142 claims all limitations in patented claims 1-20 as shown in Table 2.
Table 2: Havard ‘142 double patenting
Pending claim
Havard ‘142
Pending claim
Havard ‘142
Pending claim
Havard ‘142
2
1, 2
9
1, 10, 11
16
1, 17
3
1, 2, 3
10
1, 12
17
1, 18
4
1, 9
11
1, 13
18
1, 2, 8
5
1, 2, 4
12
1, 14
19
1, 19
6
1, 2, 5
13
1, 15
20
1, 20
7
1, 2, 6
14
1, 16
8
1, 10
15
1, 2, 7
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Harada, Kinya EP 0351734 B1
Hannon; David et al. WO 2010090671 A2
Kieturakis; Maciej J. et al. US 20060173483 A1
Gim; Chang Uk US 20120215053 A1
Gobel; Fred US 20140296831 A1
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/Adam Marcetich/
Primary Examiner, Art Unit 3781
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