DETAILED ACTION
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
This office action is in response to the remarks filed on 03/18/2026.
The amendment filed 06/30/2025 has been entered. Claims 1, 3-7, 21-22, and 32-36 are pending in the application, claim 2, 8-20, and 21-31 have been previously canceled.
The 112(b) rejections on the non-final rejection dated 12/18/2025 have been withdrawn in light of claim amendments.
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 1, 3-7, 21-22, and 32-36 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.
Regarding claim 1, the phrase "can be" in line 23 renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d). Examiner suggests amending claim to recite “the at least one first LED and the at least one second LED provide two points of light that [[can be]] are configured to triangulated to provide a location over distance” in order to overcome this limitation.
Regarding claim 34, the phrase "can be" in line 17 renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d). Examiner suggests amending claim to recite “the at least one first LED and the at least one second LED provide two points of light that [[can be]] are configured to triangulated to provide a location over distance” in order to overcome this limitation.
Claims 3-7, 21-22, and 32-33 are rejected due to dependency on claim 1.
Claims 35-36 are rejected due to dependency on claim 34.
Claim Rejections - 35 USC § 103
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.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1, 3, 4, 7, and 32-36 are rejected under 35 U.S.C. 103 as being unpatentable over Dimmer (US 20030122653 A1) in view of Müller et al (US 20220175232 A1, hereinafter “Mueller”) and Greene (US 20170252124 A1).
Regarding claim 1, Dimmer teaches a tissue marking beacon comprising:
a first resonating capacitor (energy storage device 42 has multiple coils as disclosed in [0035]-[0036]; The above systems employ a resonator circuit energized with a pulsed excitation signal and the resonator response signal is measured with sensing coils [0010]; The system 10 includes a pulsed source generator 18 that generates a pulsed magnetic excitation field or signal 20 that energizes the marker assemblies 14 [0022])
a second resonating capacitor (energy storage device 42 has multiple coils as disclosed in [0035]-[0036], which discloses 3 coils; The above systems employ a resonator circuit energized with a pulsed excitation signal and the resonator response signal is measured with sensing coils [0010]; The system 10 includes a pulsed source generator 18 that generates a pulsed magnetic excitation field or signal 20 that energizes the marker assemblies 14 [0022]);
an onboard power coil, configured to wirelessly receive energy from a radio frequency (RF) field generator to charge the first and second resonating capacitors ([0028]-[0029] creating resonant frequencies/resonant circuit with the generator and [0034]-[0036] further teach the charging the resonating capacitor 42 using the pulsed source generator, [0090] further teaches how the resonating capacitor 42 is charged wirelessly).
The combined invention still does not teach:[a first resonating capacitor] disposed at a first end of the tissue marking beacon;
[a second resonating capacitor] disposed at a second end of the tissue marking beacon opposite to the first end;
at least one first light-emitting diode (LED) disposed at the first end of the tissue marking beacon and configured to emit pulsatile near-infrared (NIR) light upon receiving a current from the first resonating capacitor;
at least one second LED in opposite polarity to the at least one first LED, the at least one second LED disposed at the second end of the tissue marking beacon and configured to emit pulsatile NIR light upon receiving a current from the second resonating capacitor; and
a logic circuit onboard the tissue marking beacon and configured to control an emission pattern of the pulsatile NIR light emitted by the at least one first LED and the at least one second LED, wherein:
the at least one first LED and the at least one second LED are pulsed with different identifiable emission patterns,
the at least one first LED and the at least one second LED provide two points of light that can be triangulated to provide a location over distance, and
the at least one first LED and the at least one second LED provide a relative orientation of the tissue marking beacon in free space.
Mueller is considered analogous to the instant application as “Light-powered light-emitting tissue marker” is disclosed (title). Mueller teaches:
at least one first light-emitting diode (LED) (The voltage drawn from the power source PS1 in beacon mode power may be provided by an LED driver circuit DCR which enables the light source LS1 to illuminate [0128]) and configured to emit pulsatile light upon receiving a current from the first … capacitor (marker's illumination source LS1 can be operated in a pulsed on/off mode. During the switch on period, the sensor LXS captures photons and charges the energy storage element PS1, such as capacitor [0128]; preset frequency of the light source of the imaging device is set in dependence on a pulsed frequency of the light source of the marker-device [0057])
at least one second LED (light source LS2 [0087]) and configured to emit pulsatile light upon receiving a current from the second .. capacitor (capacitors may be used and charged before deployment of the marker implementation [0065]; The proposed marker can be operated in a pulsating mode or continuous wave mode to facilitate its detection by the user [0028];and
a logic circuit onboard the tissue marking beacon and configured to control an emission pattern of the pulsatile NIR light emitted by the at least one first LED and the at least one second LED, wherein (the synchronizer logic comprises a light sensitive sensor, the light sensitive sensor operable to effect the switching into the two intensities of the first or the second light source, in dependence on incident light received from second or the first light source, respectively [0019]):
the at least one first LED and the at least one second LED are pulsed with different identifiable emission patterns ([0106] discloses the two separate LEDs having two separate light sources),
the at least one first LED and the at least one second LED provide two points of light that can be triangulated to provide a location over distance ([0130] discloses using the pulse sequence to determine/compute the distance), and
the at least one first LED and the at least one second LED provide a relative orientation of the tissue marking beacon in free space ([0158] discloses finding the position of the beacon while imaging)
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the resonant circuit in Dimmer to include at least one first light-emitting diode (LED) configured to emit pulsatile light upon receiving a current from the first resonating capacitor and at least one second LED configured to emit pulsatile NIR light upon receiving a current from the second resonating capacitor, and a logic circuit onboard the tissue marking beacon and configured to control an emission pattern of the pulsatile NIR light emitted by the at least one first LED and the at least one second LED, wherein the at least one first LED and the at least one second LED are pulsed with different identifiable emission patterns, the at least one first LED and the at least one second LED provide two points of light that can be triangulated to provide a location over distance, and the at least one first LED and the at least one second LED provide a relative orientation of the tissue marking beacon in free space, as taught by Muller. Doing so would allow for the marker location may hence by found more reliably by the user, as suggested by Mueller ([0070]).
The combined invention still does not teach:[a first resonating capacitor] disposed at a first end of the tissue marking beacon;
[a second resonating capacitor] disposed at a second end of the tissue marking beacon opposite to the first end;
[at least one first light-emitting diode (LED)] disposed at the first end of the tissue marking beacon [and configured to emit pulsatile] near-infrared (NIR) [light upon receiving a current from the first resonating capacitor];
[at least one second LED] in opposite polarity to the at least one first LED, the at least one second LED disposed at the second end of the tissue marking beacon [and configured to emit pulsatile] NIR [light upon receiving a current from the second resonating capacitor].
Greene is considered analogous to the instant application as “Implantable markers, and systems and methods for using them” is disclosed (title).
Greene, however teaches:a first….capacitor including disposed at a first end tissue marking beacon (capacitor 22 [0026]; capacitor 22 is on one end of the tissue marking beacon as shown in fig. 1 below)
a second …capacitor disposed at a second end of the tissue marking beacon opposite to the first end (capacitor 16a [0027]; fig. 1; is on opposite end of the capacitor as shown in fig. 1 below);
at least one first light… disposed at the first end of the tissue marking beacon and configured to emit … near-infrared (NIR) light upon receiving a current from the first… capacitor (the light source is an infrared light source, e.g., capable of delivering near infrared light between, for example, eight hundred and nine hundred fifty nanometers (800-950 nm) wavelength [0036]; LED on first end is depicted in fig. 1 below); and
at least one second [light] in opposite polarity to the at least one first [light] (IR diodes 12, fig 1; [0026]; fig. 1 below shows LEDs 12 with the positive anodes connected to the negative anodes, i.e. in opposite polarity), and configured to emit… NIR light upon receiving a current from the …. capacitor (the light source is an infrared light source, e.g., capable of delivering near infrared light between, for example, eight hundred and nine hundred fifty nanometers (800-950 nm) wavelength [0036]).
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Fig. 1 of Greene reproduced above
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the resonant circuit in Dimmer to include a first capacitor disposed at a first end of the tissue marking beacon, a second resonating capacitor disposed at a second end of the tissue marking beacon opposite to the first end, at least one second [light] in opposite polarity to the at least one first [light], and configured to emit NIR light upon receiving a current from the capacitor as taught by Greene. Doing so would facilitate localization of a lesion or other target tissue region and/or to facilitate dissection and/or removal of a specimen from a breast or other body structure, as suggested by Greene.
While Greene is silent on the at least one second LED disposed at the second end of the tissue marking beacon, it is noted that the Applicant’s specification does not impute any significance and/or criticality to the claimed the at least one second LED disposed at the second end of the tissue marking beacon. Accordingly, it is herein asserted that the claimed one second LED disposed at the second end of the tissue marking beacon is neither significant nor critical, therefore, it would have been obvious to one of the ordinary skill in the art before the effective filing date, to change the positioning of the light emitters/detectors of Greene such that the claimed one second LED disposed at the second end of the tissue marking beacon of Greene, in order to achieve having the capability of tracking the entire implantable marker. See MPEP 2144.04.VI.C.
Regarding claim 4, modified Dimmer teaches the tissue marking beacon of claim 3, as modified above. Dimmer, however, does not teach wherein the tissue marking beacon is configured to be implanted using a syringe. Greene however, teaches wherein the tissue marking beacon is configured to be implanted using a syringe (The delivery device 60 may include a lumen 64 extending at least partially between the proximal and distal ends 62 a, 62 b of the shaft 62, and a pusher member 66 slidable within the shaft 62 for selectively delivering one or more markers 10 successively or otherwise independently from the lumen 64 [0030]).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the resonant circuit in Dimmer to include wherein the tissue marking beacon is configured to be implanted using a syringe. Green however, teaches wherein the tissue marking beacon is configured to be implanted using a syringe, as taught by Greene. Doing so would facilitate localization of a lesion or other target tissue region and/or to facilitate dissection and/or removal of a specimen from a breast or other body structure, as suggested by Greene.
Regarding claim 7, modified Dimmer teaches the tissue marking beacon of claim 1, as modified above. Dimmer, however, does not teach wherein the emitted NIR light is observed by a NIR camera. Greene, however, teaches the tissue marking beacon of wherein the emitted NIR light is observed by a NIR camera ([0022] s a plurality of photosensitive diodes 12 a, e.g., connected in series, capable of transforming incident light striking them into electrical energy [0022]; the light source is an infrared light source, e.g., capable of delivering near infrared light between, for example, eight hundred and nine hundred fifty nanometers (800-950 nm) wavelength [0036]).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the resonant circuit in Dimmer to include the tissue marking beacon of wherein the emitted NIR light is observed by a NIR camera, as taught by Greene. Doing so would facilitate localization of a lesion or other target tissue region and/or to facilitate dissection and/or removal of a specimen from a breast or other body structure, as suggested by Greene.
Regarding claim 32 modified Dimmer teaches the tissue marking beacon of claim 1, as modified above. Dimmer, however, does not teach different identifiable emission patterns include different frequencies.
Muller, however, teaches different identifiable emission patterns include different frequencies ([0109] discloses different emission frequencies between the light sources).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the invention of Dimmer to include different identifiable emission patterns include different frequencies, as suggested by Mueller. Doing so would for the marker location may hence by found more reliably by the user, as suggested by Mueller ([0070]).
Regarding claim 33 modified Dimmer teaches the tissue marking beacon of claim 1, as modified above. Dimmer, however, does not teach wherein the different identifiable emission patterns include different emission timing.
Muller, however, teaches wherein the different identifiable emission patterns include different emission timing ([0057], [0157] discloses adjusting of pulse timing).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the invention of Dimmer to include wherein the different identifiable emission patterns include different emission timing, as suggested by Mueller. Doing so would for the marker location may hence by found more reliably by the user, as suggested by Mueller ([0070]).
Regarding claim 34, Dimmer teaches a tissue marking beacon, comprising:
a resonating capacitor (energy storage device 42 has multiple coils as disclosed in [0035]-[0036]; The above systems employ a resonator circuit energized with a pulsed excitation signal and the resonator response signal is measured with sensing coils [0010]; The system 10 includes a pulsed source generator 18 that generates a pulsed magnetic excitation field or signal 20 that energizes the marker assemblies 14 [0022]);
an onboard power coil configured to wirelessly receive energy from a radio frequency (RF) field generator to charge the resonating capacitor ([0028]-[0029] creating resonant frequencies/resonant circuit with the generator and [0034]-[0036] further teach the charging the resonating capacitor 42 using the pulsed source generator, [0090] further teaches how the resonating capacitor 42 is charged wirelessly).
Dimmer, however, does not teach:a first light-emitting diode (LED) configured to emit pulsatile near-infrared (NIR) light upon receiving a current from the resonating capacitor;
a second LED in opposite polarity to the first LED, the second LED configured to emit pulsatile NIR light upon receiving a current from the resonating capacitor; and
a logic circuit onboard the tissue marking beacon and configured to control an emission pattern of the pulsatile NIR light emitted by the first LED and the second LED, wherein:
the first LED and the second LED are pulsed with different identifiable emission patterns,
the first LED and the second LED provide two points of light that can be triangulated to provide a location over distance, and
the first LED and the second LED provide a relative orientation of the tissue marking beacon in free space.
Muller is considered analogous to the instant application as “Light-powered light-emitting tissue marker” is disclosed (title).
Mueller teaches:
a first light-emitting diode (LED) (The voltage drawn from the power source PS1 in beacon mode power may be provided by an LED driver circuit DCR which enables the light source LS1 to illuminate [0128]) configured to emit pulsatile … light upon receiving a current from the … capacitor (marker's illumination source LS1 can be operated in a pulsed on/off mode. During the switch on period, the sensor LXS captures photons and charges the energy storage element PS1, such as capacitor [0128]; preset frequency of the light source of the imaging device is set in dependence on a pulsed frequency of the light source of the marker-device [0057]);
a second LED (light source LS2 [0087]) the second LED configured to emit pulsatile light upon receiving a current from the… capacitor (capacitors may be used and charged before deployment of the marker implementation [0065]; The proposed marker can be operated in a pulsating mode or continuous wave mode to facilitate its detection by the user [0028]; and
a logic circuit onboard the tissue marking beacon and configured to control an emission pattern of the pulsatile NIR light emitted by the at least one first LED and the at least one second LED, wherein (the synchronizer logic comprises a light sensitive sensor, the light sensitive sensor operable to effect the switching into the two intensities of the first or the second light source, in dependence on incident light received from second or the first light source, respectively [0019]):
the at least one first LED and the at least one second LED are pulsed with different identifiable emission patterns ([0106] discloses the two separate LEDs having two separate light sources),
the at least one first LED and the at least one second LED provide two points of light that can be triangulated to provide a location over distance ([0130] discloses using the pulse sequence to determine/compute the distance), and
the at least one first LED and the at least one second LED provide a relative orientation of the tissue marking beacon in free space ([0158] discloses finding the position of the beacon while imaging)
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the resonant circuit in Dimmer to a first light-emitting diode (LED) configured to emit pulsatile light upon receiving a current from the resonating capacitor, a second LED, the second LED configured to emit pulsatile NIR light upon receiving a current from the capacitor, a logic circuit onboard the tissue marking beacon and configured to control an emission pattern of the pulsatile NIR light emitted by the first LED and the second LED, wherein:the first LED and the second LED are pulsed with different identifiable emission patterns, the first LED and the second LED provide two points of light that can be triangulated to provide a location over distance, and the first LED and the second LED provide a relative orientation of the tissue marking beacon in free space, as taught by Muller. Doing so would allow for the marker location may hence by found more reliably by the user, as suggested by Mueller ([0070]).
The combined invention still does not teach:[a first light-emitting diode (LED) configured to emit pulsatile] near-infrared (NIR) light [upon receiving a current from the resonating capacitor],
[a second LED ]in opposite polarity to the first LED, [the second LED configured to emit pulsatile] NIR light [upon receiving a current from the resonating capacitor]; and
Greene is considered analogous to the instant application as “Implantable markers, and systems and methods for using them” is disclosed (title).
Greene, however teaches:
a first light… configured to emit near-infrared (NIR) light upon receiving a current from the …capacitor (the light source is an infrared light source, e.g., capable of delivering near infrared light between, for example, eight hundred and nine hundred fifty nanometers (800-950 nm) wavelength [0036]; LED on first end is depicted in fig. 1 below);
a second [light] in opposite polarity to the first LED (IR diodes 12, fig 1; [0026]; fig. 1 below shows LEDs 12 with the positive anodes connected to the negative anodes, i.e. in opposite polarity), the second LED configured to emit … NIR light upon receiving a current from the … capacitor (the light source is an infrared light source, e.g., capable of delivering near infrared light between, for example, eight hundred and nine hundred fifty nanometers (800-950 nm) wavelength [0036]).
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Fig. 1 of Greene reproduced above
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the resonant circuit in Dimmer to include a first light configured to emit near-infrared (NIR) light upon receiving a current from the capacitor as taught by Greene. Doing so would facilitate localization of a lesion or other target tissue region and/or to facilitate dissection and/or removal of a specimen from a breast or other body structure, as suggested by Greene.
Regarding claim 35, modified Dimmer teaches the tissue marking beacon of claim 34, as discussed above. Dimmer, however, does not teach does not teach different identifiable emission patterns include different frequencies.
Muller, however, teaches different identifiable emission patterns include different frequencies ([0109] discloses different emission frequencies between the light sources).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the invention of Dimmer to include different identifiable emission patterns include different frequencies, as suggested by Mueller. Doing so would for the marker location may hence by found more reliably by the user, as suggested by Mueller ([0070]).
Regarding claim 36, modified Dimmer teaches the tissue marking beacon of claim 34, as discussed above. Dimmer, however does not teach wherein the different identifiable emission patterns include different emission timing.
Muller, however, teaches wherein the different identifiable emission patterns include different emission timing ([0057], [0157] discloses adjusting of pulse timing).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the invention of Dimmer to include wherein the different identifiable emission patterns include different emission timing, as suggested by Mueller. Doing so would for the marker location may hence by found more reliably by the user, as suggested by Mueller ([0070]).
Claims 5 is rejected under 35 U.S.C. 103 as being unpatentable over Dimmer (US 20030122653 A1) in view of Müller et al (US 20220175232 A1, hereinafter “Mueller”), Greene (US 20170252124 A1) and Tanghal (US 20180318036 A1).
Regarding claim 5, modified Dimmer teaches the tissue marking beacon of claim 1, as discussed above. Dimmer, however, does not teach wherein the tissue marking beacon is disposed within a titanium sleeve. Tanghal is considered analogous to the instant application as “Marker delivery device and method of deploying a marker” is disclosed (title).
Tanghal teaches the tissue marking beacon is disposed within a titanium sleeve (The marking element may comprise a stainless steel structure, a titanium structure….rolled about a titanium the marking element to form a substantially cylindraceous marker [0037]).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the invention of Dimmer to include the tissue marking beacon is disposed within a titanium sleeve, as taught by Tanghal. Doing so would allow for the marker to be inserted into the cannula for deployment, as suggested by Tanghal ([0037]).
Claims 6 is rejected under 35 U.S.C. 103 as being unpatentable over Dimmer (US 20030122653 A1) in view of Müller et al (US 20220175232 A1, hereinafter “Mueller”) and Greene (US 20170252124 A1) and Tenne (US 20170095312 A1).
Regarding claim 6, modified Dimmer teaches tissue marking beacon of claim 1, as discussed above. Dimmer however, does not teach wherein the tissue marking beacon is disposed within a glass sleeve. Tenne is considered analogous to the instant application as a wireless marker system is disclosed (abstract).
Tenne teaches wherein the tissue marking beacon is disposed within a glass sleeve (The encapsulation member 110 can be made of plastics, ceramics, glass or other suitable biocompatible materials [0028]).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the invention of Dimmer to include wherein the tissue marking beacon is disposed within a glass sleeve, as suggested by Greene. Doing so would protect the patient's tissues from exposure to any non-biocompatible materials that may be used to optimize the marker signals, as suggested Tenne ([0028]).
Claims 21-22 are rejected under 35 U.S.C. 103 as being unpatentable over Dimmer (US 20030122653 A1) in view of Müller et al (US 20220175232 A1, hereinafter “Mueller”), Greene (US 20170252124 A1), Tanghal (US 20180318036 A1), and Tenne (US 20170095312 A1).
Regarding claim 21, modified Dimmer teaches tissue marking beacon of claim 1, as discussed above. Dimmer, however, does not teach a sleeve having a first open end portion and a second open end portion opposite the first open end portion, wherein the onboard power coil is received within the sleeve. Tanghal is considered analogous to the instant application as “Marker delivery device and method of deploying a marker” is disclosed (title).
Tanghal, however, teaches a sleeve having a first open end portion and a second open end portion opposite the first open end portion (The marking element may comprise a stainless steel structure, a titanium structure….rolled about a titanium the marking element to form a substantially cylindraceous marker [0037]; rolling a sheet would form two open ends).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the invention of Dimmer to include a sleeve having a first open end portion and a second open end portion opposite the first open end portion, as taught by Tanghal. Doing so would allow for the marker to be inserted into the cannula for deployment, as suggested by Tanghal ([0037]).
The combined invention still does not teach wherein the onboard power coil is received within the sleeve.
Tenne is considered analogous to the instant application as a wireless marker system is disclosed (abstract).
Tenne, however, teaches wherein the onboard power coil (coil 124) is received within the sleeve (coil 124 is within sleeve 110 as shown in figs. 1 and 2).
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Fig. 1 and 2 of Tenne reproduced above
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the invention of Dimmer to include wherein the onboard power coil is received within the sleeve, as suggested by Greene. Doing so would protect the patient's tissues from exposure to any non-biocompatible materials that may be used to optimize the marker signals, as suggested Tenne ([0028]).
Regarding claim 22, modified Dimmer teaches the tissue marking beacon of claim 21, as discussed above. Dimmer however, does not teach wherein a free end of the first open end portion of the sleeve is axially spaced from the first end of the tissue marking beacon along a longitudinal axis defined by the tissue marking beacon and a free end of the second open end portion of the sleeve is axially spaced from the second end of the tissue marking beacon along the longitudinal axis defined by the tissue marking beacon.
Tanghal, however teaches wherein a free end of the first open end portion of the sleeve is axially spaced from the first end of the tissue marking beacon along a longitudinal axis defined by the tissue marking beacon and a free end of the second open end portion of the sleeve is axially spaced from the second end of the tissue marking beacon along the longitudinal axis defined by the tissue marking beacon ((The marking element may comprise a stainless steel structure, a titanium structure….rolled about a titanium the marking element to form a substantially cylindraceous marker [0037]; rolling a sheet would form two open ends that are spaced out axially/along the longitudinal axis of the marker).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the invention of Dimmer to include wherein a free end of the first open end portion of the sleeve is axially spaced from the first end of the tissue marking beacon along a longitudinal axis defined by the tissue marking beacon and a free end of the second open end portion of the sleeve is axially spaced from the second end of the tissue marking beacon along the longitudinal axis defined by the tissue marking beacon, as taught by Tanghal. Doing so would allow for the marker to be inserted into the cannula for deployment, as suggested by Tanghal ([0037]).
Response to Arguments
Applicant's arguments filed 03/18/2026 have been fully considered but they are not persuasive.
Regarding the 35 USC § 103 rejection of claim 1, on pages 6-7, applicant’s arguments are premised upon the assertion that the prior art does not teach the newly added amendment regarding “a logic circuit onboard the tissue marking beacon and configured to control an emission pattern of the pulsatile NIR light emitted by the at least one first LED and the at least one second LED, wherein: the at least one first LED and the at least one second LED are pulsed with different identifiable emission patterns, the at least one first LED and the at least one second LED provide two points of light that can be triangulated to provide a location over distance, and the at least one first LED and the at least one second LED provide a relative orientation of the tissue marking beacon in free space”. Examiner first notes that this claim contains an 112(b) rejection regarding the limitation “the at least one first LED and the at least one second LED provide two points of light that can be triangulated to provide a location over distance”. The examiner further notes that the newly added limitations are taught in the newly cited portions of Mueller. Regarding the location of the light sources on opposite ends of the beacon, the examiner notes that the specification does not impute any significance and/or criticality to the claimed the at least one second LED disposed at the second end of the tissue marking beacon, as noted above, and that the LEDs in Mueller are used to track the marker. Accordingly, this argument is not persuasive.
Applicant’s arguments on page 8 are premised upon the assertion that claim 34 is allowable for the same reasons as claim 1, and the claims that depend from claims 1 and 34 are allowable by virtue of dependency. The examine respectfully disagrees for the reasons discussed above.
Conclusion
THIS ACTION IS MADE FINAL. 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.
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/PASCAL M BUI PHO/ Supervisory Patent Examiner, Art Unit 3798
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