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, 4-5, 8, and 11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2 of U.S. Patent No. 11,925,505. Although the claims at issue are not identical, they are not patentably distinct from each other because patent ‘505 anticipates the subject matter in the instant claims. Claim 1 recites a system comprising: one or more logic modules stored within a non-transitory storage medium (encompassed by “memory having instructions stored thereon” in claim 1 of ‘505), the one or more logic modules, when executed by one or more processors, perform operations including: generating an ultrasound image screen including an ultrasound image, the ultrasound image screen including a first user selection element configured to receive a first user input for selecting a blood vessel for display in the ultrasound image (encompassed by “generating a first display screen” in claim 1 of ‘505); generating a parameter input screen (encompassed by “generating a second display screen” in claim 1 of ‘505), comprising: a second user selection element configured to receive a second user input for selecting an angle of insertion of a medical device (encompassed by “user selection element…angle” in claim 1 of ‘505); a third user selection element configured to receive a third user input for increasing or decreasing a minimum dwell length of the medical device (encompassed by “user input...increasing or decreasing” in claim 1 of ‘505); and a graphical representation of the medical device depicting a selected angle of insertion and a selected minimum dwell length of the medical device (encompassed by “graphical representation” in claim 1 of ‘505); determining a depth of a selected blood vessel (encompassed by “determining depth” in claim 1 of ‘505); and determining a selection of medical devices that satisfy conditions based on one or both of the selected angle of insertion and the selected minimum dwell length (encompassed by “determining a selection” in claim 1 of ‘505). Claim 4 is encompassed by claim 2 of ‘505. Claim 5 is encompassed by claim 2 of ‘505. Claim 8 is encompassed by claim 1 of ’505. Claim 11 is encompassed by claim 1 of ‘505.
Claims 1-12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 8-10 and 12-14 of U.S. Patent No. 12,285,286. Although the claims at issue are not identical, they are not patentably distinct from each other because patent ‘286 anticipates the subject matter in the instant claims. Claim 1 recites a system comprising: one or more logic modules stored within a non-transitory storage medium (encompassed by “one or more logic modules” in claim 8 of ‘286), the one or more logic modules, when executed by one or more processors, perform operations including: generating an ultrasound image screen including an ultrasound image, the ultrasound image screen including a first user selection element configured to receive a first user input for selecting a blood vessel for display in the ultrasound image (encompassed by “generating a first display screen” in claim 8 of ‘286); generating a parameter input screen (encompassed by “generating a second display screen” in claim 8 of ‘286), comprising: a second user selection element configured to receive a second user input for selecting an angle of insertion of a medical device (encompassed by “user selection element…angle” in claim 8 of ‘286); a third user selection element configured to receive a third user input for increasing or decreasing a minimum dwell length of the medical device (encompassed by “user input...increasing or decreasing” in claim 8 of ‘286); and a graphical representation of the medical device depicting a selected angle of insertion and a selected minimum dwell length of the medical device (encompassed by “graphical representation” in claim 8 of ‘286); determining a depth of a selected blood vessel (encompassed by “determining depth” in claim 8 of ‘286); and determining a selection of medical devices that satisfy conditions based on one or both of the selected angle of insertion and the selected minimum dwell length (encompassed by “determining a selection” in claim 8 of ‘286). Claim 2 is encompassed by claim 12 of ‘286. Claim 3 is encompassed by claim 12 of ‘286. Claim 4 is encompassed by claim 9 of ‘286. Claim 5 is encompassed by claim 9 of ‘286. Claim 6 is encompassed by claim 11 of ‘286. Claim 7 is encompassed by claim 13 of ‘286. Claim 8 is encompassed by claim 11 of ‘286. Claim 9 is encompassed by claim 10 of ‘286. Claim 10 is encompassed by claim 11 of ‘286. Claim 11 is encompassed by claim 14 of ‘286. Claim 12 is encompassed by claim 9 of ‘286.
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.
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, 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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/PETER LUONG/Primary Examiner, Art Unit 3797
Prosecution Insights