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 .
This Office Action supersedes the Non-Final Rejection dated 05/14/2026.
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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 2, 4, and 11-13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 15 of U.S. Patent No. 12318638.
Although the claims at issue are not identical, they are not patentably distinct from each other because Claim 2 of the instant application correspond to the parent claim 1. Specifically, claim 1 of U.S. Patent No. 12318638 recites the “method of reducing of at least one of excess mucosa production or excess mucosa secretion in the respiratory tract, comprising:
introducing into a respiratory tract lumen a device configured for damaging nerve tissue or blocking neural conduction in the surroundings of said lumen, said device comprising a plurality of ultrasound emitting transducers;
positioning said ultrasound emitting transducers of said device inside said respiratory tract lumen at a distance from walls of said lumen, wherein said positioning comprises positioning said ultrasound emitting transducers within the lumen of the bronchi at a distance of between 0.5 cm to 20 cm from the trachea bifurcation; and
activating said ultrasound emitting transducers to emit non-focused ultrasound energy suitable to damage said nerve tissue enough to suppress parasympathetic nerve activity which causes said at least one of excess mucosa production or excess mucosa secretion.”
Instant case
2. (new) A method of treating one or more conditions associated with a respiratory disorder, comprising:
introducing into a respiratory tract lumen a device configured for damaging nerve tissue or blocking neural conduction in surroundings of the lumen, the device comprising a plurality of energy emitters;
US12318638
1. A method of reducing of at least one of excess mucosa production or excess mucosa secretion in the respiratory tract, comprising:
introducing into a respiratory tract lumen a device configured for damaging nerve tissue or blocking neural conduction in the surroundings of said lumen, said device comprising a plurality of ultrasound emitting transducers;
Instant case
positioning the plurality of energy emitters of the device within a lumen of a bronchi of a respiratory tract at least a distance of 0.5 cm from a trachea bifurcation at a distance from one or more walls of the lumen;
Claim 1 of US12318638
positioning said ultrasound emitting transducers of said device inside said respiratory tract lumen at a distance from walls of said lumen, , wherein said positioning comprises positioning said ultrasound emitting transducers within the lumen of the bronchi at a distance of between 0.5 cm to 20 cm from the trachea bifurcation;
Instant case
and activating the plurality of energy emitters to emit energy to damage the nerve tissue enough to suppress parasympathetic nerve activity which causes the one or more conditions associated with the respiratory disorder.
Claim 1 of US12318638
and activating said ultrasound emitting transducers to emit non-focused ultrasound energy suitable to damage said nerve tissue enough to suppress parasympathetic nerve activity which causes said at least one of excess mucosa production or excess mucosa secretion.
Other clams correspond to each other as follows.
Claim 4 of the instant application corresponds to claim 1 of U.S. Patent No. 12318638.
Claims 11-13 of the instant application correspond to claim 15 of U.S. Patent No. 12318638.
Allowable Subject Matter
Claims 2-21 are allowed over prior art.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEXEI BYKHOVSKI whose telephone number is (571)270-1556. The examiner can normally be reached on Monday-Friday: 8:30am - 5:00pm.
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/ALEXEI BYKHOVSKI/
Primary Examiner, Art Unit 3798
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