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 .
Preliminary Amendment
Acknowledgement is hereby made to the Preliminary Amendment filed 4 December 2025. Claims 19-32 are pending for examination. Claims 1-18 are cancelled.
The specification amendments have been entered.
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 19-32 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of U.S. Patent No. 12,420,079 (‘079). Although the claims at issue are not identical, they are not patentably distinct from each other because they claim common identical subject matter.
As to claim 19 of the instant application, this is a slightly broader version of claim 1 of the ‘079 patent. The difference being the treating and injecting steps of the instant claim are simplified compared to the steps recited in the patented claim(s). The instant method does not appear to result in a materially different structural configuration of the blood pump motor produced by the method recited in the patent. With this in mind, if issued, the instant claim(s) would be fully anticipated by the patented claim(s).
As to claims 20-32, these claims are covered by claims 2-14 of the ‘079 patent, each reciting essentially identical subject matter.
Allowable Subject Matter
Claims 19-32 would be allowable provided that the nonstatutory double patenting rejections are overcome.
The following is an examiner’s statement of reasons for allowance:
The prior art of record either alone or in combination does not teach or fairly suggest a method of reducing moisture ingress in a blood pump motor with each limitation recited in claim 19, the method specifically comprising assembling the blood pump motor comprising a rotor portion having a proximal portion and a distal portion and a stator portion having a proximal portion and a distal portion, wherein the stator portion comprises a yoke, a coil and a coil holding sleeve, and wherein the yoke, the coil and the coil holding sleeve each have an interior surface and an exterior surface, treating the interior surface of the yoke with the primer, injecting an epoxy between the yoke and the coil such that the primer is interposed between the interior surface of the yoke and the epoxy, and reduces moisture ingress in the blood pump motor.
It is the Examiner’s opinion that modifying the prior art of record so that the method includes applying primer to the specific yoke surfaces and injecting epoxy between the yoke and coil of the blood pump motor in the manner claimed is neither contemplated nor would have been reasonably foreseeable without benefit of the disclosure of the instant invention.
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.”
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Kirchoff (European Patent Application No. 3542835)1 teaches a blood pump manufacturing method representing the general state of the art as applied in the prior art rejections in the Office-actions in parent application no. 17/144,570.
Morita (Japan Patent Publication No. JP 2014121222)1 and Tamaoka (U. S. Patent Application Publication No. 2008/0024024) teach motors stators including embedded epoxy components with primer coatings as detailed in the prior art rejections in the Office-actions in parent application no. 17/144,570. Neither of these references contemplate applying primer to the specific yoke surfaces of the instant invention.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KENNETH J HANSEN whose telephone number is (571)272-6780. The examiner can normally be reached Monday - Friday 7:00 AM - 4:00 PM (EST).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Laurenzi can be reached at (571) 270-7878. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KENNETH J HANSEN/Primary Examiner, Art Unit 3746
1 Cited in the IDS filed 29 August 2025 with copies provided in parent appl. no. 17/144,570.
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