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 45-59 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4, 9, and 11 of U.S. Patent No. 12,251,525. Although the claims at issue are not identical, they are not patentably distinct from each other because the patent anticipates the application with respect to claim 1. Claim 1 of the patent includes the features of the application’s claim 45 with additional features related to inflation.
Claims 46-50 are related to particular cardiac locations. Because the patent is also directed to a cardiac procedure, a person having ordinary skill in the art would find using the device in these particular locations obvious.
Claim 51 is directed to making the incision. The patent includes a subxiphoidal incision in claim 1. A person having ordinary skill in the art would know that such incisions are made during the procedure.
Claims 52-55 and 57 include features about inflation. The patent’s claims 1 and 4 have details about inflation and inflatable members reading on the claim.
Claim 56 can also be found in claim 1 of the patent.
Claims 58-59 relate to the nature of the ablation. The patent includes ablation in claim 1 and indicates that this is performed on the beating heart in claim 11. Adjusting the length or making certain shapes during the procedure would be obvious to a person having ordinary skill in the art to address the condition being treated.
Allowable Subject Matter
The Examiner notes that upon further review of the parent application, the combination of references required to reject a claim like claim 45 does not establish the claim as properly rejected when looking at the preponderance of the evidence. Yeung, for example, is directed to colonoscopy, not cardiac procedure. As far as a device is concerned, the Examiner thinks Yeung is relevant, but not so for the method. A practitioner would not use a device designed for the GI system on the heart, even if it is capable of being used there. For at least these reasons, the obviousness rejection is not being applied to this application.
Assuming a proper Terminal Disclaimer is filed, the application would be allowable.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TIMOTHY JAY NEAL whose telephone number is (313)446-4878. The examiner can normally be reached Mon-Fri 7:30-5:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Anhtuan Nguyen can be reached at (571)272-4963. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/TIMOTHY J NEAL/ Primary Examiner, Art Unit 3795
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