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 responsive to the amendment filed on 2/4/26. As directed by the amendment: 21, 23, 24, 26, 29, 30, 32, 33, 35, 36, 39, and 40 have been amended, claims 1-20, 28, 37, and 38 have been cancelled, and new claims 41-43 have been added. Thus, claims 21-27, 29-36, and 39-43 are presently pending in this application.
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.
Claim(s) 21-23, 29, 33, and 35 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Goode et al. (US 20080208166).
Regarding claim 21, Goode et al. discloses a method of shape control of an elongate instrument (any of catheters 300, 400, 500; see at least par. 0020 and fig. 1C-5C), comprising: advancing at least a first portion of the elongate instrument through a pathway inside a patient (first portion being an initial distal-most section of a catheter 300/400/500 such as shown in fig. 1C as it progresses past one of 17 or 19 as described on par. 0020); inducing a curvature of at least a second portion of the elongate instrument that conforms, adopts, or matches a curvature of the pathway as the elongate instrument is being advanced through the pathway, the second portion of the elongate instrument being proximal to the first portion of the elongate instrument (further advancement past a position illustrated in fig. 1C results in inducing curvature in a subsequent section of the catheter as described in par. 0020 ato begin approaching a final configuration such as the ones shown in fig. 2); and steering at least the first portion of the elongate instrument around one or more other curvatures of the pathway while maintaining the induced curvature of at least the second portion of the elongate instrument (with a first and second section as identified above already released and possessing induced curvature, further progressing the catheter to deliver its fully released shape such as shown in fig. 2 and described in par. 0020; alternatively, push/pull or torque actions described in par. 0021).
Regarding claim 22, Goode et al. discloses decoupling articulation or steering forces of the first portion of the elongate instrument away from the second portion of the elongate instrument (the first portion, once released, conforms to its target shape independent of the second portion doing so, and is thus decoupled from the forces holding the second portion).
Regarding claim 23, Goode et al. discloses the decoupling of the articulation or steering forces of the first portion of the elongate instrument away from the second portion of the elongate instrument comprising releasing an anchor (anchor in the form of either 17 or 19 depending on the embodiment; see par. 0020).
Regarding claim 29, Goode et al. discloses the maintaining of the induced curvature of at least the second portion of the elongate instrument comprising securing an anchor (securing either 17 or 19 at a position proximal to a fully released second portion of the catheter; see par. 0020).
Regarding claim 33, Goode et al. discloses inducing of the curvature of at least the second portion of the elongate instrument comprising allowing the second portion to flex passively as the second portion traverses the pathway (see par. 0020).
Regarding claim 35, Goode et al. discloses the steering of at least the first portion of the elongate instrument around the one or more other curvatures of the pathway comprising bending the first portion in a first direction, the maintaining of the induced curvature of at least the second portion comprising maintaining the second portion to be bent in a second direction while the first portion is bent in the first direction, the second direction being different from the first direction (see various shapes as illustrated in fig. 2-5C).
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.
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.
Claim(s) 34 is/are rejected under 35 U.S.C. 103 as being unpatentable over Goode et al. in view of Middleman et al. (US 5231989).
Regarding claim 34, Goode et al. discloses the method as claimed, except for specifically disclosing the pathway comprising a gastrointestinal tract. However, Middleman et al. teaches steerable cannulas can be utilized for a wide variety of body locations, including digestive system navigation (col. 6, ln. 9-22). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to utilize the method of Goode et al. in the pathway of a gastrointestinal tract, as taught by Middleman et al., since Middleman et al. teaches that catheter steering devices are beneficial in the navigation of the gastrointestinal tract (col. 6, ln. 9-22).
Response to Arguments
Applicant’s arguments with respect to independent claim 21 (referred to as “claim 1” in the Remarks) have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Applicant’s arguments, see pg. 9 of the Remarks, filed 2/4/26, with respect to amendments made to independent claims 36 and 39 to distinguish over Hauck (US 20080033284) as applied in the previous action, have been fully considered and are persuasive. The rejection of those claims has been withdrawn.
Allowable Subject Matter
Claims 36, 39, 40, and 43 are allowed.
Claims 24-27, 30-32, 41, and 42 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
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 NATHAN R PRICE whose telephone number is (571)270-5421. The examiner can normally be reached Mon-Fri 8:00am-4:00pm Eastern time.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Tsai can be reached at 571-270-5246. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NATHAN R PRICE/Primary Examiner, Art Unit 3783
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