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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted February 10th, 2025 has been considered by the Examiner.
Claim Objections
Claims 1, 3-5, 8 & 13 objected to because of the following informalities:
Claim 1, line 11: “selectable movable” should read –is configured to be selectably movable--,
Claim 1, line 16: “is movable” should read –is configured to be movable--,
Claim 1, line 20: “is movable” should read –is configured to be movable--,
Claim 3, line 6: “is movable” should read –is configured to be movable--,
Claim 4, line 3: “is movable” should read –is configured to be movable--,
Claim 5, line 3: “is movable” should read –is configured to be movable--,
Claim 8, line 2: “is rotatable” should read –is configured to be rotatable--,
Claim 13, line 10: “selectably movable” should read –is configured to be selectably movable--,
Claim 13, line 18: “is movable” should read –is configured to be movable--,
Claim 13, line 22: “is movable” should read –is configured to be movable--,
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-15 rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 1, the claim recites “is movable” in line 5 and it is unclear if this is to be interpreted as functional language or as an active method step as the preamble of the claim reads “a device” and is being interpreted as an apparatus claim. For examination purposes, the limitation will be interpreted as “is configured to be moveable”. For similar active method step recitations, see Claim Objections section.
Regarding claim 1, the claim recites “a distal end of the distal portion” in line 12 and it is unclear if this is the same distal end of the distal portion or is a different distal end of the distal portion as recited in line 4. For examination purposes, these are the same distal end of the distal portion and the limitation will be interpreted as “the distal end of the distal portion”.
Claims 2-12 are also rejected by virtue of their dependency on claim 1.
Regarding claim 13, the claim recites “is movable” in line 4 and it is unclear if this is to be interpreted as functional language or as an active method step as the preamble of the claim reads “a device” and is being interpreted as an apparatus claim. For examination purposes, the limitation will be interpreted as “is configured to be moveable”. For similar active method step recitations, see Claim Objections section.
Regarding claim 13, the claim recites “a distal end of the distal portion” in line 11 and it is unclear if this is the same distal end of the distal portion or is a different distal end of the distal portion as recited in line 3. For examination purposes, these are the same distal end of the distal portion and the limitation will be interpreted as “the distal end of the distal portion”.
Claims 14-15 are also rejected by virtue of their dependency on claim 13.
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 1-20 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12256977. Although the claims at issue are not identical, they are not patentably distinct from each other because they each recite a device for closing a puncture in a blood vessel, comprising: a housing comprising a longitudinal axis, a distal portion, and a proximal portion; an inner housing slidably disposed within the proximal portion of the housing; a forceps mounted at a distal end of the distal portion and comprising a first jaw pivotably coupled to a second jaw, the forceps is movable between an open position and a closed position; an electrical conductor electrically coupled to the forceps, the electrical conductor is configured to transmit an electrical current to one or more of the first jaw and the second jaw; a positioning wire extending through the distal portion of the housing and selectably movable between (i) a retracted position in which a distal end of the positioning wire is proximal to a distal end of the distal portion, and (ii) an extended position in which the distal end of the positioning wire is distal to the distal end of the distal portion; a positioning lever mounted inside the inner housing and coupled to the positioning wire, wherein the positioning lever is movable between (a) a first position that places the positioning wire in the retracted position, and (b) a second position that places the positioning wire in the extended position; and a forceps lever coupled to the inner housing and coupled to the forceps, wherein the forceps lever is movable between (I) a first position that places the forceps in the closed position, and (II) a second position that places the forceps in the open position. They also recite a device for closing a puncture in a blood vessel, comprising: a housing comprising a longitudinal axis, a distal portion, and a proximal portion; a forceps mounted at a distal end of the distal portion and comprising a first jaw pivotably coupled to a second jaw, wherein the forceps is movable between an open position and a closed position; an electrical conductor electrically coupled to the forceps, wherein the electrical conductor is configured to transmit an electrical current to one or more of the first jaw and the second jaw; a positioning wire extending through the distal portion of the housing and selectably movable between (i) a retracted position in which a distal end of the positioning wire is proximal to a distal end of the distal portion, and (ii) an extended position in which the distal end of the positioning wire is distal to the distal end of the distal portion; and an actuation assembly comprising: an inner housing slidably disposed within the proximal portion of the housing; a positioning lever mounted inside the inner housing and coupled to the positioning wire, wherein the positioning lever is movable between (a) a first position that places the positioning wire in the retracted position, and (b) a second position that places the positioning wire in the extended position; and a forceps lever coupled to the inner housing and coupled to the forceps, wherein the forceps lever is movable between (I) a first position that places the forceps in the closed position, and (II) a second position that places the forceps in the open position. Finally, they each recite a method of using a closure device, the method comprising: advancing the closure device along a guidewire to approach a puncture in a blood vessel, wherein the closure device comprises a housing comprising a longitudinal axis, a distal portion, and a proximal portion, an inner housing slidably disposed within the proximal portion of the housing, a forceps mounted at a distal end of the distal portion, an electrical conductor electrically coupled to the forceps, and a positioning wire extending through the distal portion of the housing; advancing a positioning lever of the closure device that is coupled to the positioning wire and that is mounted inside the inner housing from (i) a first position in which the positioning wire is in a retracted position to (ii) a second position in which the positioning wire is in an extended position; locking the positioning lever in the second position to place a distal end of the positioning wire inside the blood vessel, wherein the distal end of the positioning wire comprises a lateral profile in which the distal end extends transverse to the longitudinal axis; partially withdrawing the closure device along the guidewire so that the distal end of the positioning wire centers the puncture with respect to the forceps, wherein the forceps comprises first and second jaws electrically coupled to first and second conductors, respectively; advancing a forceps lever of the closure device that is coupled to the forceps and that is mounted to the inner housing from (a) a first position in which the first and second jaws are in a closed position to (b) a second position in which the first and second jaws are in an open position; locking the forceps lever in the second position to allow the first and second jaws to span the puncture when the forceps is in the open position; grasping the blood vessel across the puncture by moving the forceps from the open position to the closed position; and activating an electrical current through the first and second conductors to thermally heat the blood vessel grasped between the first and second jaws.
Allowable Subject Matter
Claims 1-15 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
Claims 1-20 would be allowable if a properly filed Terminal Disclaimer is submitted, set forth in this Office action.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Abigail M Ziegler whose telephone number is (571) 272-1991. The examiner can normally be reached M-F 8:30 a.m. - 5 p.m. EST.
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/ABIGAIL M ZIEGLER/Examiner, Art Unit 3794
/BEVERLY M FLANAGAN/Primary Examiner, Art Unit 3794
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