DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 1, 4, 5, 7-9, 13, and 14 are rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 4-6, 8, 9, 13, and 14 of prior U.S. Patent No. 10,406,010 B2. This is a statutory double patenting rejection.
Claims of instant application
Claims of 10,406,010
1
1
4
4
5
5
7
8
8
9
9
6
13
13
14
14
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 2, 3, 6, 10-12, and 15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 2, 3, 7, 10-12, and 15 of U.S. Patent No. 10,406,010 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the scope of the claims of the instant application are claimed by the claims of 10,406,010 as outlined below:
Claims of instant application
Claims of 10,406,010
2
2 (the first delivery catheter is capable of delivering the proximal and distal stents to the side branch)
3
3 (the second delivery catheter is capable of delivering the second stent to the main branch)
6
7
10
10
11
11
12
12
15
15
Allowable Subject Matter
Claims 2, 3, 6, 10-12, and 15 would be allowable if a terminal disclaimer is filed or if the claims are rewritten or amended to overcome the double patenting rejections set forth in this Office action.
The following is a statement of reasons for the indication of allowable subject matter: the prior art made of record or otherwise brought to The Office’s attention, alone or in combination, fails to teach the combination of: a first delivery shaft having proximal and distal discrete stents disposed over proximal and distal expandable members, a second delivery shaft having a second discrete stent disposed over a second expandable member, wherein a proximal end of the distal stent has a notched region and a distal end of the proximal stent has notched region such that when the notched regions are adjacent one another a side hole is formed, and wherein the second delivery shaft is slidably disposed in the lumen of the first delivery shaft and passes through the side hole when the proximal and distal stents and proximal and distal expandable members are in the collapsed configuration.
The closest prior art references include Nanavati (US 20090182270 A1), Brucker et al. (US 20030097169 A1), Vardi et al. (US 20010003161 A1), Richter et al. (US 5,755,735), Goldman (US 20060100694 A1). Nanavati, Brucker, Vardi, Richter and Goldman all teach a first delivery shaft carrying a first stent disposed over a first expandable member and a second delivery catheter carrying a second stent disposed over a second expandable member, the second delivery catheter extending through a side hole in the first stent. Eidenschink et al. (US 20070055351 A1) teaches a proximal and distal stent each comprising a notched region to form the side hole. Van Oepen et al. (US 20070260217 A1) and Jennings et al. (US 20080171975 A1) each teach a second delivery catheter extends through a lumen in a first delivery shaft but fail to teach that the second delivery shaft (having a second stent disposed over a second expandable member) extends through a side hole (formed by notched regions of the proximal and distal stents) in the first stent when the proximal and distal stents and the proximal and distal expandable members are in their collapsed configuration.
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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