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 .
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 17-25 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 6, 8, 10 and 12-16 of U.S. Patent No. 12,239,804. Although the claims at issue are not identical, they are not patentably distinct from each other because they are directed to analogous devises. With respect to claim 17 of the application, claim 1 of the patent discloses an umbilical arterial catheterization device configured for catheterization of an artery of a human's umbilical cord, the umbilical arterial catheterization device comprising: a brace comprising a body adapted to support and stabilize a free end of the umbilical cord; and a dilator comprising: a hook having a tip dimensioned for receipt within the artery of the umbilical cord; and a dilator comprising: a hook having a tip dimensioned for receipt within the artery of the umbilical cord; and a catch joined to said hook and operable to fix said dilator to said brace; wherein the hook of said catch may be positioned within a lumen of the artery of the umbilical cord to dilate said artery while said brace is supporting and stabilizing the free end of the umbilical cord, and said catch may be secured to said brace in a desired position relative to said brace to maintain the artery in a dilated position.
With respect to claim 18 of the application, claim 6 of the patent recites the umbilical arterial catheterization device of claim 4, wherein said fastener comprises an elongated strap.
With respect to claim 19 of the application, claim 8 of the patent recites the umbilical arterial catheterization device of claim 4, wherein said fastener comprises a field of one of a hook-type fastener and a loop-type fastener of a hook-and-loop fastener system, and wherein said body comprises a respective field of another one of the hook-type fastener and the loop-type fastener.
With respect to claim 20 of the application, claim 10 of the patent recites the umbilical arterial catheterization device of claim 1, wherein said hook defines a loop providing a mounting point for attachment of said hook to said catch.
With respect to claim 21 of the application, claim 12 of the patent recites the umbilical arterial catheterization device of claim 11, wherein said second fastener comprises a field of one of a hook-type fastener and a loop-type fastener.
With respect to claim 22 of the application, claim 13 of the patent recited the umbilical arterial catheterization device of claim 1, further comprising: a lighting element supported on said brace.
With respect to claim 23 of the application, claim 14 of the patent recites the umbilical arterial catheterization device of claim 13, wherein said lighting element comprises a light source.
With respect to claim 24 of the application, claim 15 of the patent recites the umbilical arterial catheterization device of claim 14, wherein said lighting element comprises a light pipe for transmitting light emitted from a remotely-located light source.
With respect to claim 25 of the application, claim 16 of the application recites the umbilical arterial catheterization device of claim 14, wherein said brace defines a recess open to a surface of said body and dimensioned to receive said lighting element, wherein said lighting element is disposed within said recess.
Allowable Subject Matter
Claims 26-31 are allowed. The following is a statement of reasons for the indication of allowable subject matter: the prior art of record, alone or in combination, does not disclose, imply, suggest or anticipate an umbilical arterial catheterization device comprising the combination of structures and steps recited in independent claim 26 in its entirety, or provide a properly motivated combination to make obvious the presently claimed invention. Claims 27-31 are allowable by the virtue of dependence on the allowed claim 26.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AHMED M FARAH whose telephone number is (571)272-4765. The examiner can normally be reached Mon - Fri. 9:30AM -10:30 PM.
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/AHMED M FARAH/Primary Examiner, Art Unit 3792
