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
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 23, 36 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 17 of U.S. Patent No. 12, 390, 123. Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claim discloses all of the claimed features [see column 17 lines 50-68].
Allowable Subject Matter
Claims 23-42 would be allowed pending the double patenting rejection.
The following is an examiner’s statement of reasons for allowance: No prior arts of record alone or in combination discloses the following:
“an elongate flexible catheter, the elongate flexible catheter defining a central lumen having a first longitudinal axis; a support structure mounted on a proximal portion of the elongate flexible catheter such that a proximal surface of the support structure is coupled to a distal surface of the proximal portion of the elongate flexible catheter, wherein the support structure is more rigid than the elongate flexible catheter;
a first alignment feature configured to mate with a first sensor component; and a second alignment feature configured to mate with a second sensor component, wherein the first alignment feature and the second alignment feature are offset from and extend parallel to a central longitudinal axis of the support structure and wherein the first alignment feature is configured to fix the first sensor component relative to the second alignment feature in at least one degree of freedom at the support structure”
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Prior arts:
Jenkins et al (Pub. No.: US 2010/0317962).
Jenkins et al disclose RF tracking coils 412, 414 are supported within respective coil holders 415 that are secured to the catheter shaft 402 and one or more than two RF tracking coils (e.g., 1, 3, 4, etc.) may be located at distal end portion 406 [see 0226, figs 33-36, 50, 53];
each coil 412, 414 may be recessed within each respective coil holder 415 [see 0227];
each coil 412, 414 may be recessed within each respective coil holder 415 [see 0227];
RF tracking coils 412, 414 may be embedded within the shaft 402 and Each coil 412, 414 may be recessed within each respective coil holder 415 such that the layer of material overlying the coils 412, 414 is substantially flush with the outer surface 402a of the catheter 80 [see 0227].
ablation catheter 80 includes an elongated flexible housing or shaft 402 having at least one lumen 404 (FIG. 34) therethrough [see 0221].
at least one lumen extending between the proximal and distal end portions [see 0007]
disclosing a plurality (e.g., two closely spaced) of adjacent tracking coils are fixed on a substantially rigid material, the tuned RF tracking coils can provide a substantially constant spatial difference with respect to the corresponding tracking position signals [see 0110].
The RF tracking coils 412, 414 are each electrically connected to a respective channel of an MRI scanner for tracking the location of the catheter 80 in 3-D space [see 0226] and calculate the position of the tip of the device 80t as well as the shape and orientation of the flexible device [see 0101].
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOEL F BRUTUS whose telephone number is (571)270-3847. The examiner can normally be reached Mon-Sat, 11:00 AM to 7:00 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Anne Kozak can be reached at 571-270-0552. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOEL F BRUTUS/ Primary Examiner, Art Unit 3797
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