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 .
Information Disclosure Statement
The information disclosure statement(s) (IDS) submitted on 1/12/2026 has been received and made of record. Note the acknowledged form PTO-1449 enclosed herewith.
Response to Arguments
This Office action is in response to the applicant’s communication filed on 1/12/2026. Each argument and/or amendment directed towards a maintained rejection is addressed below. Rejections/objections not repeated herein have been withdrawn.
Applicant’s arguments, see page 9, with respect to Applicant’s amendments to the drawings made in view of the previous objections to the drawings have been fully considered and are persuasive. The previous objections to the drawings have been withdrawn.
Applicant’s arguments, see page 9, with respect to Applicant’s amendments to the claims made in view of the previous objections to the claims have been fully considered and are persuasive. The previous objections to the claims have been withdrawn.
Applicant’s arguments, see page 10, with respect to the needle guide of Puppels not being “coupled to the carriage” have been fully considered and are persuasive. Therefore, the previous prior art rejections have been withdrawn. However, upon further consideration, a new ground(s) of rejection is made under Puppels in view of Maudlin, Jr. et al. (US 2012/0296213), as set forth below.
Claim Rejections - 35 USC § 103
Claims 1, 3, 37 and 61 are rejected under 35 U.S.C. 103 as being unpatentable over Puppels et al. (WO 2017/111576) in view of Maudlin, Jr. et al. (US 2012/0296213).
Puppels discloses (see Figs. 1 and 5) a system for measuring a tissue sample comprising the following claim limitations:
(claim 1) A tactile sensing device (100, Fig. 5), comprising: a base (50, Fig. 5) comprising: a scanning track (x and y actuator tracks, as shown in Fig. 5; p. 4, lines 17-19; p. 14, line 25-col. 15, line 21); a carriage (16, Fig. 1) configured to (i.e., capable of) slide along the scanning track (as shown at the x and y actuating movement arrows in Fig. 5), wherein the carriage (16) comprises an alignment guide (i.e., lumen within probe housing 16 for guiding/aligning needle 11, expressly shown in Fig. 1); a scanhead (11, Fig. 1) mounted to the carriage (16) (as shown in Fig. 1); and a sensor array (17, Fig. 1) attached to the scanhead (11) (as shown in Fig. 1), the sensor array (17) comprising one or more pressure sensors (at 17; see claim 5; p. 11, lines 15-20; col. 13, lines 6-8), each pressure sensor configured to (i.e., capable of) output a voltage signal in response to a change in pressure (p. 3, lines 6-11; p. 11, lines 15-20; p. 13, lines 6-8);
(claim 37) wherein the base (50) further comprises a position sensor (p. 2, line 27-p. 3, line 5; p. 3, lines 15-29; p. 9, lines 7-11; depth position sensor expressly disclosed); and
(claim 61) A tactile sensing system (100, Fig. 5), comprising: a base (50, Fig. 5) comprising: a scanning track (x and y actuator tracks, as shown in Fig. 5; p. 4, lines 17-19; p. 14, line 25-col. 15, line 21); a carriage (16, Fig. 1) configured to (i.e., capable of) slide along the scanning track (as shown at the x and y actuating movement arrows in Fig. 5), wherein the carriage (16) comprises an alignment guide (i.e., lumen within probe housing 16 for guiding/aligning needle 11, expressly shown in Fig. 1); a scanhead (11, Fig. 1) mounted to the carriage (16) (as shown in Fig. 1); and a sensor array (17, Fig. 1) attached to the scanhead (11) (as shown in Fig. 1), the sensor array (17) comprising one or more pressure sensors (at 17; see claim 5; p. 11, lines 15-20; col. 13, lines 6-8), each pressure sensor configured to (i.e., capable of) output a voltage signal in response to a change in pressure (p. 3, lines 6-11; p. 11, lines 15-20; p. 13, lines 6-8); and a monitor device, comprising: a display screen (30, Fig. 5) operatively coupled to the sensor array (17) (as shown in Fig. 5), the display screen (30) configured to (i.e., capable of) display: a pressure map representing a target tissue location in an individual based upon the voltage signals output by the one or more pressure sensors (17) (i.e., pressure map shown on display screen 30 in Fig. 5; p. 4, line 20-p. 5, line 3; p. 14, lines 17-23); and a computing device (20, Fig. 5) comprising a processor (p. 14, lines 17-23; interrogator 20 expressly comprises a computer running software for displaying sensed/received data to the display screen 30) operatively coupled to the sensor array (17) (via wire Sp in Fig. 1) and the monitor device (30) (via wire Sd in Fig. 5), and a non-transitory computer readable storage medium with a computer program including instructions executable by the processor causing the processor to: i) convert the voltage signals from the sensor array into the pressure map and display the pressure map on the display screen (as shown on the display screen in Fig. 5) and ii) output an alignment guide (16g, Fig. 1; and/or the lumen disposed within probe housing 16 for guiding/aligning needle 11) location on the display screen (30) (as shown in Fig. 5; p. 14, lines 17-23; p. 15, lines 5-21; interrogator 20 expressly comprises a computer running software for displaying sensed/received data to the display screen 30, wherein the location of a sensed/received data point expressly correlates with the XY position of the needle 11 and housing 16 taking the measurement at that target tissue location).
Puppels, as applied above, discloses a system for measuring a tissue sample comprising all the limitations of the claim except for the alignment guide being coupled to the carriage and a needle guide configured to reversibly attach to the carriage.
However, Maudlin teaches (see Figs. 2A-2B) a similar apparatus for guiding a probe comprising an alignment guide (230) being coupled to the carriage (200) and/or a needle guide (232) configured to reversibly attach to the carriage (200) in order to beneficially provide a removable/replaceable insert tube and/or seal to isolate the probe assembly that can be sterile from other portions of the apparatus that need not be sterile ([0042]). Therefore, it would have been obvious to one having ordinary skill in the art at the time the invention was made to modify the device of Puppels to have an alignment guide being coupled to the carriage and/or a needle guide configured to reversibly attach to the carriage in order to beneficially provide a removable/replaceable insert tube and/or seal to isolate the probe assembly that can be sterile from other portions of the apparatus that need not be sterile, as taught by Maudlin.
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 1 and 61 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 129 of co-pending Application No. 17/239,109. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the instant application are broader variants of the claims of the patent and this anticipate the claims of the patent, as set forth below. See MPEP 2131.02(I).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Present Invention
U.S. App. No. 17/239,109
1
129
61
129
Allowable Subject Matter
Claims 125 and 128-130 are allowed.
Claims 5-6, 20-21, 25, 31, 33, 38, 46 and 52-53 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
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: see Chieng (US 2017/0311978) disclosing a needle guide (5) coupled to a carriage (3) (as expressly shown in at least Figs. 1-4).
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 Robert Lynch whose telephone number is (571)270-3952. The examiner can normally be reached on Monday-Friday (9:00AM-6:00PM, with alternate Fridays off).
If attempts to reach the examiner by telephone are unsuccessful, please contact the examiner’s supervisor, Elizabeth Houston, at (571) 272-7134. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ROBERT A LYNCH/Primary Examiner, Art Unit 3771