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 .
Status of the Claims
Claims filed 01/17/2025 has been entered. At entry, Claims 1-24 are pending and under consideration.
Drawings
Figures 1-4 should be designated by a legend such as --Prior Art-- because only that which is old is illustrated. See MPEP § 608.02(g). Corrected drawings in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. The replacement sheet(s) should be labeled “Replacement Sheet” in the page header (as per 37 CFR 1.84(c)) so as not to obstruct any portion of the drawing figures. If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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 1-24 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-24 of U.S. Patent No. 12274813.
The claims of the instant application are identical to claims 1-24 of the patent. Accordingly the claims of the instant application are unpatentable over the patent.
Allowable Subject Matter
Claims 1-24 are allowable over the prior art but are rejected under double patenting as discussed supra.
The following is a statement of reasons for the indication of allowable subject matter: The prior art, alone or in combination, could be found to teach (claim 1) a hydrophilic material deposited on at least an insertable part of the opposite outer surface of the tubular wall, where the hydrophilic material is configured to change from anon-swelled condition to a swelled condition by contact with a swelling medium, the hydrophilic material defining a coating thickness measured from the opposite outer surface of the tubular wall to an exposed hydrophilic surface; and
a plurality of drainage openings formed through the hydrophilic material and through the tubular wall, where formation of each of the plurality of drainage openings provides a drain opening wall extending between the inner surface and the opposite outer surface of the tubular wall with a projection encircling each of the plurality of drainage openings;
wherein the formation of each of the plurality of drainage openings removes the hydrophilic material from an entirety of each of the drain opening walls extending from the inner surface of the tubular wall to an outermost radial end of the projection encircling each of the plurality of drainage openings;
wherein the projection extends above the hydrophilic surface when the hydrophilic material is in the non-swelled condition.
The closest prior art Lazarus (US 4391276 A) teaches the device as claimed including a projection encircling each of the plurality of drainage openings (figure 2a, protrusions 14a and 14c encircling opening 14b) having a thickness of 0.01 to 1 mm (Lazarus; col 2 lines 35-45), but Lazarus fails to teach the device comprising a hydrophilic material as claimed. Sahatjian (US 5674192 A) teaches the hydrophilic material deposited on at the outer surface of the tubular wall (col 2 lines 55-65), having thickness in the range of 10 to 50 um. Although Lazarus and Sahatjian may individually teach the feature above could arrive, if combined, at a projection extending above the hydrophilic surface as claimed, however, it would have not have been obvious to a person of ordinary skill in the art to combine the prior art above to arrive at the instant invention, as Sahatjian teaches the hydrophilic surface coating disposed entire surface of the catheter and does not address the hydrophilic coating arrangement relative to the catheter opening or suggest modifying Lazarus so that the projection extends beyond above the hydrophilic surface in the non-swelled condition as claimed. There is not an apparent/obvious reason/motivation for this modification as this modification increases the complexity of the system in the prior art in terms of structure, function, and design without an improvement.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Orr et al (US 20170348512 A1).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SETH HAN whose telephone number is (571)272-2545. The examiner can normally be reached M-F 0900-1700.
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, Sarah Al-Hashimi can be reached at (571) 272-7159. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SETH HAN/Examiner, Art Unit 3781
