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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 2/25/26 has been entered.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
Examiner notes: for brevity, economy, and clarity of reading, select of the claims are addressed jointly herein when instances of limitations with verbatim or near-verbatim similarity are recited in the body of differently numbered claims and/or when multiple different limitations are clearly addressed by a same/similar citation to/within a reference.
Claim(s) 1-20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kinoshita (US 20090163833 A1).
For claim(s) 1 and 20, Kinoshita teaches A guide wire [1] comprising:
a main body portion [2] having an elongated outer shape and having a base [3] and a marker [4] alternately visible on an outer surface along an extending direction of the main body portion;
and a resin layer [5] having light permeability, covering the outer surface of the main body portion, and including a recessed portion and a protruding portion alternately arranged along the extending direction of the main body portion, [Fig. 1]
wherein, in longitudinal cross-section along the extending direction of the main body portion, a width of the marker in the extending direction is wider than a width of the protruding portion in the extending direction. [see annotated Fig(s). 5 below]
and the outermost surface of the marker and the outermost surface of the base are disposed on a common plane. [in Fig(s). 5, elements 4 and 3 are disposed in at least some form of common plane under BRI]
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For claim(s) 2, Kinoshita teaches
wherein a pitch of the marker is different from a pitch of the protruding portion in the extending direction of the main body portion. [Fig. 5 where pitch between individual of 4 is less than width of 82]
For claim(s) 3 and 17, Kinoshita teaches
wherein the width of the marker is further equal to or less than twice the width of the protruding portion in the longitudinal cross-section along the extending direction of the main body portion. [there is at least some dimension by which 4 is less wide than 81 in Fig. 5, thus 4 is less than two widths of 81]
For claim(s) 4, 11, and 14, Kinoshita teaches
wherein, on the outer surface of the main body portion, a surface area of the marker is 35% or less of a surface area of the base in the portion of the base where the marker is formed. [there is at least some amount of a surface area of 4 which is 35% less of some surface area of 3 under BRI]
For claim(s) 5, 8, 12, 15, and 18, Kinoshita teaches
on the outer surface of the main body portion, lightness of the marker is lower than lightness of the base. [¶¶58-60]
For claim(s) 6, 7, 9, 10, 13, 16, and 19, Kinoshita teaches
wherein, on the outer surface of the main body portion, a boundary portion between the base and the marker is flat. [in Figs. 2-9 there is one or more faces of 4 which is flat which constitute(s), under BRI, a form of a ‘boundary’ portion against body 3]
Response to Arguments
Applicant's 8/14/25 arguments with respect to the prior art have been fully considered but they are not persuasive.
Applicant argues in remarks p. 6-7 that Kinoshita fails to teach the width of the marker being wider than the width of the protruding portion in the extending direction. Examiner respectfully disagrees. The BRI of ‘in the extending direction’ can still encompass the Examiner-annotated dimensions shown in Kinoshita Fig(s). 2 — where Wm and Wa are shown in at least some relation with Wm greater than Wa. Examiner respectfully submits that the term ‘in the extending direction’ does not require, under BRI, that the length measurement in question be two collinear / parallel lines of length.
Applicant's 8/14/25 arguments with respect to the prior art have been fully considered but they are not persuasive.
Applicant argues in remarks p. 6-8 that Kinoshita fails to teach a width of the marker being wider than a width of the protruding portion as evidenced by this application’s Fig(s). 6. Examiner respectfully submits that such a position is an attempt to read the disclosure into the claim(s) instead of reading the claim(s) in light of the disclosure. The phrase in question merely limits than one width is greater than another width but does not establish the physical boundaries that define such widths. Accordingly, as shown in the annotated Fig(s). 5 of Kinoshita below, portion 4 of the wire of Kinoshita has at least one dimension which is wider than another dimension (a “width”) of portion 81.
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Applicant then argues in remarks p. 9 that Kinoshita fails to teach the new language of claim(s) 20 (the arrangement in a common plane). Examiner respectfully disagrees. There is at least some form of some plane in which elements 3 and 4 in Kinoshita are “commonly disposed” under BRI.
Applicant then argues in remarks p. 7-8 that Kinoshita fails to teach the marker and the outer surface of the base in a common plane. Examiner respectfully disagrees. The plane forming the cross-section view of Kinoshita Fig(s). 2 constitute(s), under BRI, at least some form of a ‘common plane’ as claimed.
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., the outermost surface of the base and marker are “flush”) 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).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BENJAMIN S MELHUS whose telephone number is (571)272-5342. The examiner can normally be reached Monday - Friday | 9:00 AM - 5:00 PM.
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/BENJAMIN S MELHUS/ Primary Examiner, Art Unit 3791
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