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 1-2 and 4-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5, 7, 11, 14-16, 18-21, and 23 of U.S. Patent No. 11,717,139. Although the claims at issue are not identical, they are not patentably distinct from each other because patent ‘139 anticipates the instant claims. Claim 1 recites a catheter system for treating a treatment site within or adjacent to a blood vessel, the catheter system comprising: a power source (encompassed by power source in claim 1 of ‘139); a light guide that receives power from the power source, the light guide having a distal tip, the light emitting light energy in a direction away from the distal tip (encompassed by light guide in claim 1 ‘139); an inflatable balloon that encircles the distal tip of the light guide (encompassed by inflatable balloon in claim 3 of ‘139); a guidewire lumen that is positioned at least partially within the inflatable balloon (encompassed by guidewire lumen in claim 7 of ‘139); and a plasma target that is secured to one of the guidewire lumen and the inflatable balloon, the plasma target being spaced apart from the distal tip of the light guide by a target gap distance, the plasma target being positioned within the inflatable balloon, the plasma target being configured to receive light energy from the light guide so that a plasma bubble is generated at the plasma target upon receiving the light energy from the light guide (encompassed by plasma target in claim 1 of ‘139). Claim 2 is encompassed by claim 1 of ‘139. Claim 4 is encompassed by claim 15 of ‘139. Claim 5 is encompassed by claim 14 of ‘139. Claim 6 is encompassed by claim 4 of ‘139. Claim 7 is encompassed by claim 5 of ‘139. Claim 8 is encompassed by claim 2 of ‘139. Claim 9 is encompassed by claim 7 of ‘139. Claims 10-11 is encompassed by claim 18 of ‘139. Claim 12 is encompassed by claim 16 of ‘139. Claim 13 is encompassed by claim 11 of ‘139. Claim 14 is encompassed by claim 8 of ‘139. Claim 15 is encompassed by claim 19 of ‘139. Claim 16 is encompassed by claim 20 of ‘139. Claim 17 is encompassed by claim 21 of ‘139. Claim 18 is encompassed by claim 23 of ‘139. Claim 19 is encompassed by claim 3 of ‘139. Claim 20 is encompassed by claim 11 of ’139.
Claims 1-15 and 19-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,402,946. Although the claims at issue are not identical, they are not patentably distinct from each other because patent ‘946 anticipates the instant claims. Claim 1 recites a catheter system for treating a treatment site within or adjacent to a blood vessel, the catheter system comprising: a power source (encompassed by power source in claims 1 or 11 of ‘946); a light guide that receives power from the power source, the light guide having a distal tip, the light emitting light energy in a direction away from the distal tip (encompassed by light guide in claims 1 or 11 of ‘946); an inflatable balloon that encircles the distal tip of the light guide (encompassed by inflatable balloon in claims 1 or 11 of ‘946); a guidewire lumen that is positioned at least partially within the inflatable balloon (encompassed by guidewire lumen in claims 7 or 17 of ‘946); and a plasma target that is secured to one of the guidewire lumen and the inflatable balloon, the plasma target being spaced apart from the distal tip of the light guide by a target gap distance, the plasma target being positioned within the inflatable balloon, the plasma target being configured to receive light energy from the light guide so that a plasma bubble is generated at the plasma target upon receiving the light energy from the light guide (encompassed by plasma target in claims 1 or 11 of ‘946). Claim 2 is encompassed by claims 9, 11, or 20 of ‘946. Claim 3 is encompassed by claims 1 or 11 of ‘946. Claim 4 is encompassed by claims 10 or 19 of ‘946. Claim 5 is encompassed by claims 9 or 18 of ‘946. Claim 6 is encompassed by claims 4 or 14 of ‘946. Claim 7 is encompassed by claims 5 or 15 of ‘946. Claim 8 is encompassed by claims 2-3 or 12-13 of ‘946. Claims 9-10 are encompassed by claims 7 or 17 of ‘946. Claim 11 is encompassed by claims 6 or 16 of ‘946. Claim 12 is encompassed by claims 7 or 17 of ‘946. Claim 13 is encompassed by claims 1 or 11 of ‘946. Claims 14-15 are encompassed by claims 8 or 11 of ‘946. Claims 19-20 is encompassed by claims 1 or 11 of ‘946.
Allowable Subject Matter
The following is a statement of reasons for the indication of allowable subject matter: the prior art of record fails to disclose or render obvious the claimed combination of subject matter a catheter system comprising: a plasma target that is secured to one of the guidewire lumen and the inflatable balloon, particularly, the plasma target being spaced apart from the distal tip of the light guide by a target gap distance, the plasma target being positioned within the inflatable balloon.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PETER LUONG whose telephone number is (571)270-1609. The examiner can normally be reached M-F 9-6.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Anhtuan T 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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/PETER LUONG/Primary Examiner, Art Unit 3797
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