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, 10, and 17 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3 - 5, 9 - 12, and 15 - 19 of copending Application No. 18/367853 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both set of claims are directed to systems and methods involving using graphical user interfaces to visualize and interact with stent expansion data based on intravascular ultrasound imaging frames.
Claims 1, 10, and 17 are suggested by reference claims 1, 9 - 11, and 17. In particular, reference claims 1, 9 - 11, and 17recite an intravascular ultrasound (IVUS) system (reference claims 1, 11, 17), comprising:
a processor (reference claims 1, 11, 17); and
a memory storage device coupled to the processor, the memory storage device comprising instructions executable by the processor, which when executed cause the processor to (reference claims 1, 11, 17):
receive a series of IVUS images of a vessel of a patient, the series of IVUS images comprising a plurality of frames (reference claims 1, 11, 17),
receive an indication of a location of a stent in the vessel (reference claims 1, 11, 17),
receive an indication of a lumen border (reference claims 1, 11, 17. Note that the reference “lumen area” is delineated by the lumen border),
receive designation of at least two of the plurality of frames as key frames (reference claims 1, 11, 17),
derive an expansion ratio of the stent based at least on the key frames (reference claims 1, 9 - 11, 17),
generate a graphical user interface (GUI) (reference claims 1, 11, 17) comprising:
a longitudinal vessel depiction comprising at least a portion of the lumen border and the stent (reference claims 1, 11, 17),
a distal bracket and a proximal bracket (reference claims 9 - 10 i.e., the “line”), a slider (reference claims 9 - 10, i.e., the ‘indication to move the frames’), a stent expansion ratio icon (reference claims 9 - 10), and a visualization of the expansion ratio (reference claims 9 - 10), and render the GUI for display on a display (reference claims 1, 11, 17),
wherein the longitudinal vessel depiction and the slider are disposed between the distal bracket and the proximal bracket (reference claims 9 - 10).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant’s arguments, see page 9, filed 7/6/2026, with respect to the art rejections have been fully considered and are persuasive. The art rejections have been withdrawn.
Applicant’s arguments on page 9 are acknowledged. A phone call was placed to applicant’s representative on 9/16/2026 to request a terminal disclaimer. However, the representative’s voicemail was unable to accept a message due to being full. Examiner suggests fling an after-final response including a terminal disclaimer.
Allowable Subject Matter
Claims 2 - 9, 11 - 16, and 18 - 20 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AMELIE R DAVIS whose telephone number is (571)270-7240. The examiner can normally be reached Monday-Friday, 9:30 - 6:00 PST.
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, Pascal Bui-Pho can be reached at (571)272-2714. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/AMELIE R DAVIS/Primary Examiner, Art Unit 3798
Prosecution Insights