DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 and 13-19 of U.S. Patent No. 9,254,210 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the scope of the instant applications are claimed in the claims of U.S. Patent No. 9,254,210, as outlined below.
Claims of instant application
US 9,254,210 B2
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Allowable Subject Matter
Claims 1-20 would be allowable if a terminal disclaimer is filed or if the claims are rewritten or amended to overcome the double patenting rejection, set forth in this Office action.
The following is a statement of reasons for the indication of allowable subject matter: the prior art, alone or in combination, fails to teach or render obvious (in addition to the other limitations of claim 1): a first delivery catheter with discrete proximal first and distal second stents over proximal and distal expandable members; a second delivery catheter with a third expandable member; a distal portion of the proximal first stent comprises a notched region, and a proximal portion of the distal second stent comprises a notched region, the notched regions being cut out portions of the distal portion of the proximal first stent and the proximal portion of the distal second stent, respectively, and the notched regions being adjacent one another to form a side hole; positioning the proximal first stent and the distal second stent at the bifurcation such that the proximal first stent is disposed in the main branch and the distal second stent is disposed in the side branch.
The closest prior art includes: Shaked et al. (US 20060271090 A1), Seguin et al. (US 7,344,556 B2) and Dibie (US 6,183,509 B1).
Shaked teaches a first delivery catheter with discrete proximal first and distal second stents over proximal and distal expandable members. Shaked fails to teach a second delivery catheter with a third expandable member; a distal portion of the proximal first stent comprises a notched region, and a proximal portion of the distal second stent comprises a notched region, the notched regions being cut out portions of the distal portion of the proximal first stent and the proximal portion of the distal second stent, respectively, and the notched regions being adjacent one another to form a side hole.
Seguin teaches a first delivery catheter with discrete proximal first and distal second stents over proximal and distal expandable members; a second delivery catheter with a third expandable member; positioning the proximal first stent and the distal second stent at the bifurcation such that the proximal first stent is disposed in the main branch and the distal second stent is disposed in the side branch. Seguin fails to teach a distal portion of the proximal first stent comprises a notched region, and a proximal portion of the distal second stent comprises a notched region, the notched regions being cut out portions of the distal portion of the proximal first stent and the proximal portion of the distal second stent, respectively, and the notched regions being adjacent one another to form a side hole.
Dibie teaches a notched region in two stents but teaches the notched region in the proximal first stent and a third stent.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KATHERINE H MENDEZ whose telephone number is (571)272-9503. The examiner can normally be reached Monday - Friday 8 am-4:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Darwin Erezo can be reached at (571) 272-4695. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KATHERINE H MENDEZ/Primary Examiner, Art Unit 3771
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