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 .
Response to Amendment
The amendment filed 03/12/2026 presents claims 6, 11, and 14 as amended. Claims 15-20 remain withdrawn. Claims 1-14 remain pending examination.
The amendment obviates the previously indicated objection to claim 11.
The previously indicated rejections under 35 USC 112 (b) are withdrawn.
Further grounds of rejection, necessitated by the amendment, are presented herein.
Response to Arguments
Applicant’s arguments, see Remarks, filed 03/12/2026, with respect to rejections under 35 USC 112 (b) have been fully considered and are persuasive. Such rejections are withdrawn.
Applicant's arguments with respect to the prior art rejections under 35 USC 103 have been fully considered but they are not persuasive.
Applicant traverses, with respect to independent claim 1, the combination of Cooper and Johnson in that:
“…the weld material disposed between the adjacent coils of the wire are not a surface of the coil that faces the interior of the conduit. On the contrary, the welds are between the coils and are not on the inner surface of the conduit, and are provided specifically to prevent stretching of the conduit, unrelated to the interior of the conduit.”
Applicant continues in that:
“Moreover, the welds are not provided to be any sort of locally hardened region improving the conveyance of a core along the surface of the conduit formed by the coiled wire. The welds are not in any position to even contact the wire. Rather, the welds are provided axially between the adjacent coils to limit the coil from stretching axially, limiting the coil from acting as a coil by joining adjacent coils together. This may be a concern for a medical device delivery system, but such concerns are not present in Cooper's conduit. Still, the structure recited in the claims is not present or suggested by Johnson's between-coil welds.”
In response, the Examiner respectfully disagrees. The claim language is the wire “includes periodically spaced locally hardened regions having a surface hardness greater than areas of the wire outside of the locally hardened regions wherein the locally hardened regions are disposed on an inside surface of the conduit…” (emphasis added). Under broadest reasonable interpretation, the scope of the claim language merely requires the locally hardened regions to be on an inside surface. Conversely, the scope does not require, nor is limited to, the locally hardened regions being disposed directly on the inside surface. In this case, the locally hardened regions being indirectly on an inside surface reads on the scope of the claim.
Additionally, in response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., “improving conveyance of a core along the surface of the conduit”) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). When reading the preamble in the context of the entire claim, the recitation “adapted for allowing movement of a core” is not limiting because the body of the claim describes a complete invention and the language recited solely in the preamble does not provide any distinct definition of any of the claimed invention’s limitations. Thus, the preamble of the claim(s) is not considered a limitation and is of no significance to claim construction. See Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See MPEP § 2111.02.
Applicant concludes in that:
“In addition to the structural deficiencies described above with respect to the position of the hardened regions, it is also the case that a skilled artisan would not modify Cooper's coiled wire to have Johnson's welds, as doing so would restrict the coil-based functionality provided by Cooper in the first place. Even so, to the extent that Cooper's coiled conduit were to be modified based on Johnson's teachings, the skilled person would follow the teachings of Johnson and place the welds in the location axially between adjacent coils, and not on the radially inner facing surface of the wire.”
In response, the Examiner respectfully disagrees. Cooper is concerned with providing a flexible conduit “which is able to bend and move as the weld wire 106 is moved through the flexible conduit 100” and finds that the “bendability and moveability of the flexible conduit 100 allows the weld wire 106 to be moved along a variety of different shaped paths without damage to the welding wire” (para. 0026). Additionally, Cooper states, in paragraph 0029, that wire 12 having an oval or elliptical cross sectional shape results in “less area of contact between the conduit…and the weld wire…” and that, as a result, the conduit “can be bent or flexed into any shape and in any direction without creating sharp edges.” Cooper, therefore, is concerned with providing a weld wire conduit that is formed from a coiled wire having an oval or elliptical cross section that improves conduit flexibility, thereby preventing damage to the weld wire passing therethrough.
Johnson, similarly, is concerned with controlling the stretchability of a coiled wire while only minimally reducing flexibility (para. 002 and 0019). Johnson teaches providing locally hardened regions (welds) on the coiled wire for this purpose (see also 0021-0024). Here, modifying Cooper with Johnson, to include the locally hardened regions on the inner surface of the wire conduit, would not restrict the functionality of the weld wire conduit of Cooper. Rather, such a modification would improve upon Cooper’s design by preventing unwanted separation when the conduit is stretched, while substantially maintaining conduit flexibility. In other words, the Examiner disagrees that the proposed combination would restrict the functionality of the conduit of Cooper.
For the reasons detailed above, the Examiner maintains the rejections of claims 1-14 under 35 USC 103.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 6 and 14 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 6 is amended to require that the wire has a pre-coiled configuration prior to being coiled and includes locally hardened regions that are “disposed on an inside surface of the conduit facing the internal passageway when the wire is coiled.” Claim 6 also requires “when the wire is coiled in the helical manner the locally hardened regions of the wire are on a radially inner surface of the conduit.” It is unclear if the “inside surface” of the conduit and the “radially inner surface” of the conduit refer to the same surface or to different surfaces.
Claim 14 is amended to require that the wire has a straight configuration prior to being coiled and includes locally hardened regions that are “disposed on an inside surface of the conduit facing the internal passageway when the wire is coiled.” Claim 14 also requires that the locally hardened regions “are disposed on a radially inward facing surface…of the conduit.” It is unclear if the “inside surface” of the conduit and the “radially inward facing surface” of the conduit refer to the same surface or to different surfaces. Claim 14 further states “wherein the inside surface of the conduit, on which the locally hardened regions are disposed is a radially facing inside surface of the conduit such that the locally hardened regions face radially inward.” However, this limitation does not address the above ambiguity as it merely identifies that the inside surface is a radially facing inside surface, but does not indicate whether the above inside surface and radially inward facing surface are the same surface or not.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cooper (US20100276407) in view of Johnson et al. (US 20170367712).
Regarding claim 1, Cooper teaches a wire guide conduit adapted for allowing movement of a core (para. 0004) (Figures 1-4; conduit 10, weld wire 106), the conduit comprising:
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Figure 1 of Cooper
a wire coiled in a helical manner to define the conduit and form an internal passageway of the conduit, the passageway defining a longitudinal axis (Fig. 1 and para. 0025; wire 12 is wound into a helical coil to form the conduit and an internal passageway 10a),
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Figure 2 of Cooper
wherein the wire has a cross-section (Fig. 2) with a major axis (A-A) and a minor axis (B-B), wherein a thickness of the wire along the major axis is greater than a thickness of the wire along the minor axis (elliptical shape; para. 0025) (see also paragraph 0028 for dimensions of the major and minor axes),
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Figure 1 of Cooper (annotated)
wherein the wire (12) is coiled in the helical manner to present the major axis (A-A) generally parallel (Fig. 1, annotated above, which illustrates the major axis, A-A, extending parallel along the longitudinal axis of 10A) with the longitudinal axis of the passageway (10A), the passageway adapted for receiving the core (Fig. 3; 106).
Cooper is silent on wherein the wire has a straight configuration prior to being coiled and includes periodically spaced locally hardened regions having a surface hardness greater than areas of the wire outside of the locally hardened regions and wherein the locally hardened regions are disposed on an inside surface of the conduit facing the internal passageway when the wire is coiled in the helical manner.
With respect to the limitation of “wherein the wire has a straight configuration prior to being coiled,” Cooper teaches that the wire (12) “is wound into a helical coil” and that the wire “is formed by drawing the source material through a special die” (para. 0025). While not explicit, one of ordinary skill in the art would understand that drawing a wire through a die and, later, winding the drawn wire into a helical shape would mean that the wire has a configuration that is straight prior to the winding step. For this reason, Cooper is understood to implicitly teach the claimed limitation.
Further, the aforementioned limitation can be understood to refer to the process of making a coiled wire (i.e., winding a straight wire in a helical manner to make a coil). “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). In this case, the coiled wire of Cooper having a elliptical cross sectional shape matches that of the claim regardless of the manner in which the coiled wire is produced.
Johnson relates to a coiled guide wire (para. 0002; Figures 1A/B; coil 1) and teaches using periodically spaced locally hardened regions (weld regions 12) having a surface hardness greater than areas of the wire outside of the locally hardened regions (the regions of the wire that are welded would have a surface hardness greater than regions of the wire that are not welded) and wherein the locally hardened regions are disposed on an inside surface of the conduit facing the internal passageway when the wire is coiled in the helical manner (See Figures 1a/b and paragraphs 0021-0024; welded regions all formed on the same side of the wire).
Therefore, it would have been obvious to someone with ordinary skill in the art at the time the invention was filed to modify Cooper with Johnson, by adding to the inner surface of the coiled wire of Cooper, with the locally hardened regions taught by Johnson, for in doing so would provide a helical coil with improved flexibility and linear separation (as detailed in Johnson), which would further aid in dispensing/conveying the core through the conduit (see para. 0026 of Cooper discussing moving the wire along different paths as a result of the flexibility of the conduit).
Regarding claim 2, the primary combination teaches each claimed limitation, as applied in claim 1, and further teaches wherein the wire consists of a single wire coiled in the helical manner (Cooper teaches a single wire 12).
Regarding claim 3, the primary combination teaches each claimed limitation, as applied in claim 1, and further teaches wherein the wire has a generally elliptical cross-section (see Cooper, as applied in claim 1).
Regarding claim 4, the primary combination teaches each claimed limitation, as applied in claim 1, and further teaches wherein [Cooper] the internal passageway (10A) of the wire guide conduit (10) defines an inner diameter, and wherein the inner diameter is constant along substantially the entire length of the conduit (See Fig. 1).
Regarding claim 5, the primary combination teaches each claimed limitation, as applied in claim 1, and further teaches wherein [Cooper] the internal passageway (10A) of the wire guide conduit (10) defines an inner diameter, and wherein the inner diameter is adapted to closely receive the core in the form of a wire (106) having a circular cross-sectional shape (A claim is only limited by positively recited elements. Thus, "[i]nclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims." In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963); see also In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935). Here, the core/wire is not positively recited. Rather, the core/wire is recited as the object that the claimed guide conduit functions to receive. As such, the wire having a circular cross sectional shape does not impart patentability to the claim.).
Regarding claim 6, Cooper teaches a wire guide conduit adapted for allowing movement of a core (para. 0004) (Figures 1-4; conduit 10, weld wire 106), the conduit comprising:
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Figure 1 of Cooper
a wire coiled in a helical manner to define the conduit and form an internal passageway of the conduit, the passageway defining a longitudinal axis (Fig. 1 and para. 0025; wire 12 is wound into a helical coil to form the conduit and an internal passageway 10a),
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Figure 2 of Cooper
wherein the wire has a cross-section (Fig. 2) with a major axis (A-A) and a minor axis (B-B), wherein a thickness of the wire along the major axis is greater than a thickness of the wire along the minor axis (elliptical shape; para. 0025) (see also paragraph 0028 for dimensions of the major and minor axes),
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Figure 1 of Cooper (annotated)
wherein the wire (12) is coiled in the helical manner to present the major axis (A-A) generally parallel (Fig. 1, annotated above, which illustrates the major axis, A-A, extending parallel along the longitudinal axis of 10A) with the longitudinal axis of the passageway (10A), the passageway adapted for receiving the core (Fig. 3; 106).
Cooper is silent on wherein the wire has a pre-coiled configuration prior to being coiled and includes periodically spaced locally hardened regions having a surface hardness greater than areas of the wire outside of the locally hardened regions and wherein the locally hardened regions are disposed on an inside surface of the conduit facing the internal passageway when the wire is coiled in the helical manner.
With respect to the limitation of “wherein the wire has a pre-coiled configuration prior to being coiled,” Cooper teaches that the wire (12) “is wound into a helical coil” and that the wire “is formed by drawing the source material through a special die” (para. 0025). While not explicit, one of ordinary skill in the art would understand that drawing a wire through a die and, later, winding the drawn wire into a helical shape would mean that the wire has a configuration that is straight prior to the winding step. For this reason, Cooper is understood to implicitly teach the claimed limitation.
Further, the aforementioned limitation can be understood to refer to the process of making a coiled wire (i.e., winding a straight wire in a helical manner to make a coil). “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). In this case, the coiled wire of Cooper having a elliptical cross sectional shape matches that of the claim regardless of the manner in which the coiled wire is produced.
Johnson relates to a coiled guide wire (para. 0002; Figures 1A/B; coil 1) and teaches using periodically spaced locally hardened regions (weld regions 12) having a surface hardness greater than areas of the wire outside of the locally hardened regions (the regions of the wire that are welded would have a surface hardness greater than regions of the wire that are not welded) and wherein the locally hardened regions are disposed on an inside surface of the conduit facing the internal passageway when the wire is coiled in the helical manner (See Figures 1a/b and paragraphs 0021-0024; welded regions all formed on the same side of the wire).
Therefore, it would have been obvious to someone with ordinary skill in the art at the time the invention was filed to modify Cooper with Johnson, by adding to the inner surface of the coiled wire of Cooper, with the locally hardened regions taught by Johnson, for in doing so would provide a helical coil with improved flexibility and linear separation (as detailed in Johnson), which would further aid in dispensing/conveying the core through the conduit (see para. 0026 of Cooper discussing moving the wire along different paths as a result of the flexibility of the conduit).
Cooper further teaches wherein the wire (Cooper; wire 12) has opposed first and second sides on opposite sides of the major axis and extending along the major axis (See Fig. 1; first and second sides on opposite side of the major axis A-A is taken as the sides that define the inner and outer sides of the conduit with the inner side forming passageway 10A), wherein the wire defines a plurality of adjacent coil windings when in the coiled configuration that defines the conduit, wherein the adjacent coil windings contact each other when in the coiled configuration (as shown in Figure 1).
Cooper, as modified to include the hardened regions of Johnson on the inner surface, further suggests wherein the locally hardened surfaces are provided on the first side of the wire so that when the wire is coiled to form the wire guide conduit, the first side of the wire forms the inner passageway of the conduit so that the hardened surfaces are provided on the inner passageway of the conduit (Cooper, as modified by Johnson, to include the locally hardened, or welded regions, on the first side), wherein the wire in the pre-coiled straight configuration includes the locally hardened regions formed thereon, wherein when the wire is coiled in the helical manner the locally hardened regions of the wire are on a radially inner surface of the conduit, wherein the radially inner surface is defined by the first side of the wire, wherein the locally hardened regions are disposed on the radially inner surface of the conduit when the adjacent coil windings contact each other (Cooper, as modified by Johnson, seeks to include the hardened regions on the inner surface of the wire forming the internal passageway).
Regarding claim 7, the primary combination teaches each claimed limitation, as applied in claim 1, and further teaches [Cooper] wherein the wire guide conduit (10) is configured to be used in a weld wire dispensing system (para. 0004) with the core in the form of a welding electrode wire (106).
Regarding claim 8, the primary combination teaches each claimed limitation, as applied in claim 1, and further teaches wherein the locally hardened regions form a pattern along the wire when the wire is in the straight configuration (Cooper, as modified by Johnson, to include the locally hardened, or welded regions, only on the first side forms a pattern along the wire in the coiled state. If the coiled wire is straightened the locally hardened regions would still form a pattern. Furthermore, the use of “when the wire is in the straight configuration” does not impart patentability as the claimed requires the wire to be coiled in a helical manner. The inclusion of the straight configuration, as detailed above in claim 1, is interpreted to refer to the process of forming the wire guide).
Regarding claim 9, the primary combination teaches each claimed limitation, as applied in claim 8, and further teaches wherein locally hardened regions are equally spaced (Johnson as cited above) when the wire is in the straight configuration (see above).
Regarding claim 10, the primary combination teaches each claimed limitation, as applied in claim 8, and further teaches wherein the pattern includes one of a series of dots, a series of stripes, a series of alternatingly inclined stripes, a series of inter-locking circles along the length of the wire, or a series of interlocking circles forming stripes across the surface of the wire (see Johnson; Figures 1A/B).
Regarding claim 11, the primary combination teaches each claimed limitation, as applied in claim 1, and further teaches wherein the locally hardened region is disposed within a profile of the wire (Cooper, as modified by Johnson, to include the locally hardened, or welded regions, only on the first side) when the wire is in a straight configuration such that the locally hardened region does not substantially project relative to adjacent non-hardened regions (If the coiled wire is straightened the locally hardened regions would still be disposed within a profile of the weld. Furthermore, the use of “when the wire is in the straight configuration” does not impart patentability as the claimed requires the wire to be coiled in a helical manner. The inclusion of the straight configuration, as detailed above in claim 1, is interpreted to refer to the process of forming the wire guide).
Regarding claim 12, the primary combination teaches each claimed limitation, as applied in claim 1, and further teaches wherein an outside surface of the wire guide conduit does not include any locally hardened regions (Cooper, as modified by Johnson, to include the locally hardened, or welded regions, only on the first side).
Regarding claim 13, the primary combination teaches each claimed limitation, as applied in claim 1, and further teaches wherein the locally hardened regions are disposed at various circumferential and longitudinal locations on the inside surface of the conduit (differential welding pattern, as detailed in Johnson).
Regarding claim 14, Cooper teaches a wire guide conduit adapted for allowing movement of a core (para. 0004) (Figures 1-4; conduit 10, weld wire 106), the conduit comprising:
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Figure 1 of Cooper
a wire coiled in a helical manner to define the conduit and form an internal passageway of the conduit, the passageway defining a longitudinal axis (Fig. 1 and para. 0025; wire 12 is wound into a helical coil to form the conduit and an internal passageway 10a),
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Figure 2 of Cooper
wherein the wire has a cross-section (Fig. 2) with a major axis (A-A) and a minor axis (B-B), wherein a thickness of the wire along the major axis is greater than a thickness of the wire along the minor axis (elliptical shape; para. 0025) (see also paragraph 0028 for dimensions of the major and minor axes),
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Figure 1 of Cooper (annotated)
wherein the wire (12) is coiled in the helical manner to present the major axis (A-A) generally parallel (Fig. 1, annotated above, which illustrates the major axis, A-A, extending parallel along the longitudinal axis of 10A) with the longitudinal axis of the passageway (10A), the passageway adapted for receiving the core (Fig. 3; 106).
Cooper is silent on wherein the wire has a straight configuration prior to being coiled and includes periodically spaced locally hardened regions having a surface hardness greater than areas of the wire outside of the locally hardened regions, wherein the locally hardened regions are disposed on an inside surface of the conduit facing the internal passageway when the wire is coiled in the helical manner, wherein the locally hardened regions do not extend fully across the wire along the major axis and therefore do not extend into contact with adjacent coils of the conduit when the wire is coiled.
With respect to the limitation of “wherein the wire has a straight configuration prior to being coiled,” Cooper teaches that the wire (12) “is wound into a helical coil” and that the wire “is formed by drawing the source material through a special die” (para. 0025). While not explicit, one of ordinary skill in the art would understand that drawing a wire through a die and, later, winding the drawn wire into a helical shape would mean that the wire has a configuration that is straight prior to the winding step. For this reason, Cooper is understood to implicitly teach the claimed limitation.
Further, the aforementioned limitation can be understood to refer to the process of making a coiled wire (i.e., winding a straight wire in a helical manner to make a coil). “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). In this case, the coiled wire of Cooper having a elliptical cross sectional shape matches that of the claim regardless of the manner in which the coiled wire is produced.
Johnson relates to a coiled guide wire (para. 0002; Figures 1A/B; coil 1) and teaches using periodically spaced locally hardened regions (weld regions 12) having a surface hardness greater than areas of the wire outside of the locally hardened regions (the regions of the wire that are welded would have a surface hardness greater than regions of the wire that are not welded), wherein the locally hardened regions are disposed on an inside surface of the conduit facing the internal passageway when the wire is coiled in the helical manner, and wherein the locally hardened regions do not extend fully across the wire along the major axis and therefore do not extend into contact with adjacent coils of the conduit when the wire is coiled (See Figures 1a/b and paragraphs 0021-0024; welded regions all formed on the same side of the wire).
Therefore, it would have been obvious to someone with ordinary skill in the art at the time the invention was filed to modify Cooper with Johnson, by adding to the inner surface of the coiled wire of Cooper, with the locally hardened regions taught by Johnson, for in doing so would provide a helical coil with improved flexibility and linear separation (as detailed in Johnson), which would further aid in dispensing/conveying the core through the conduit (see para. 0026 of Cooper discussing moving the wire along different paths as a result of the flexibility of the conduit).
Cooper, as modified to include the hardened regions of Johnson on the inner surface, further suggests wherein the locally hardened regions are disposed on a radially inward facing surface of a plurality of coil portions of the conduit, such that the locally hardened regions are arranged in an axially overlapping manner with the coil portions on a radially inner surface of each of the coil portions (when viewed axially along the longitudinal axis, the locally hardened regions of Johnson, disposed on the inner surface of the coil of Cooper, would appear, at least partially, to overlap), wherein the inside surface of the conduit, on which the locally hardened regions are disposed, is a radially facing inside surface of the conduit such that the locally hardened regions face radially inward (as explained above), wherein a core passing through the conduit bears against the radially inside surface and the locally hardened regions that face radially inward [Claim analysis is highly fact-dependent. A claim is only limited by positively recited elements. Thus, “[i]nclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims.” In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963); see also In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935). Here, the “core” is not positively recited as a structural component of the claimed wire guide conduit. Rather the preamble of the claim states that the conduit is “adapted for allowing movement of a core.” In other words, the “core” is recited functionally as the article worked upon by the wire guide conduit. As such, the core bearing against the radially inside surface and the locally hardened regions does not impart patentability over modified Cooper.]
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JUSTIN C DODSON whose telephone number is (571)270-0529. The examiner can normally be reached Mon.-Fri. 1:00-9:00 PM (ET).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Steven Crabb can be reached at (571)270-5095. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JUSTIN C DODSON/Primary Examiner, Art Unit 3761
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