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 02/20/26. As directed by the amendment: claims 1, 5, 6, 7, 18 and 19 have been amended. Claims 4, 9, 21, and 23-26 have been cancelled.
Thus, claims 1-3, 5-8, 10-20 & 22 are pending in this application.
Applicant’s amendments to the specification and abstract have overcome each and every objection previously set forth in the Non-final Office Action mailed on 11/24/2025.
Applicant’s amendments to the claims have overcome each and every 112(b) claim rejection previously set forth in the Non-final Office Action mailed on 11/24/2025.
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.
Claims 1-3, 5, 6, 16-20 and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Tal et al (WO 2019087191 A1) in view of Solar et al (US 20120259214 A1).
Regarding claim 1, Tal et al disclose an embolization microcatheter (100, fig 1) comprising: an elongated tubular member (101) forming a lumen (opening of 101, see fig 1), the elongated tubular member terminating with a distal end opening (132), wherein a wall (124) of the elongated tubular member comprises a braid (226, page 17-para 4), a polymer (228) formed around the braid (abstract and page 18-lines 1-3) and an inner liner coating an inner surface of the wall (page 33, lines 1-3 and page 36-para 5); wherein the wall of the part of the elongated tubular member extending between a proximal radiopaque marker (112) and the distal end opening (132) has a thickness of less than or equal to 130 microns (see page 20, para 4: the diameter of the opening at the outer surface of the microcatheter is about 20-40 microns larger, e.g. 30 microns larger than the diameter of the opening at the inner surface of the microcatheter, thus the thickness is about 20-40 microns which is less than 130 microns); and a distal radiopaque (114) marker located in proximity to the distal end opening (see fig 1); and a filter (120) formed in the wall of the elongated tubular member (fig 1), the filter comprising two or more filter segments (fig 1 and 7B), each filter segment comprising a plurality of side openings (122, 722) penetrating the wall (page 15, para 2), the plurality of side openings distributed circumferentially around the elongated tubular member (fig 1, page 26, para 2), the plurality of side openings of a first filter segment (724) circumferentially shifted relative to the plurality of side openings of a neighboring filter segment (726, page 27, lines 1-2, the distribution of the slits may be staggered or zig-zagged meaning arranging an alternating, offset, or non-uniform pattern, rather than all at once or in a straight line and fig 7B).
Tal et al fail to explicitly teach the part of elongated tubular member extending between a proximal end of the distal radiopaque marker and the distal end opening is devoid of the liner.
However, Solar et al disclose a microcatheter (10) comprises an elongated tubular member (12), a distal radiopaque marker (38), a liner (30) and a distal opening (distal opening of 12) wherein the part of elongated tubular member extending between the proximal end of the distal radiopaque marker and the distal end opening is devoid of the liner (see fig 2, distal opening at tip 26 is devoid of liner 30, para 0030).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the microcatheter of Tal et al and incorporate the teachings of Solar et al to have the part of elongated tubular member extending between the proximal end of the distal radiopaque marker and the distal end opening is devoid of the liner. This would provide the benefit of ensuring flexibility of said distal end opening to minimize trauma to the patient's tissues and anatomy during insertion and navigation which enables smooth delivery through the microcatheter (para 0030).
Regarding claim 2, Tal et al in view of Solar et al disclose the embolization microcatheter according to claim 1,
Tal et al further disclose wherein an outer diameter of the elongated tubular member is less than or equal to 1.5 mm (page 10, para 4-lines 7-8, and page 11-lines 14-15) and an inner diameter of the elongated tubular member is 700 microns or more (see claim 13).
Regarding claim 3, Tal et al in view of Solar et al disclose the embolization microcatheter according to claim 1,
Tal et al further disclose wherein the thickness of the distal end of the wall is less than or equal to 120 microns (see page 20, para 4: the diameter of the opening at the outer surface of the microcatheter is about 20-40 microns larger, e.g. 30 microns larger than the diameter of the opening at the inner surface of the microcatheter, thus the thickness is about 20-40 microns which is less than 120 microns)
Regarding claim 5, Tal et al in view of Solar et al disclose the embolization microcatheter according to claim 1, wherein a proximal most of the filter segments comprises fewer side openings than at least two rings distal thereto (see fig 7B-D, proximal segment 724 s has fewer side openings than segment 726).
Regarding claim 6, Tal et al in view of Solar et al fail to expressly disclose the embolization microcatheter according to claim 1, wherein a distal most of the filter segment is positioned 2-4 mm proximally to the distal end opening.
However, Tal et al disclose plurality of axial slits 122 or 722 formed proximal to and at a predetermined distance from distal outlet 132 or 780 (see page 15, para 2).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to cause the microcatheter of Tal et al to have a distal most of the filter segment is positioned 2-4 mm proximally to the distal end opening “where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device” Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 SPQ 232 (1984). In the instant case, the microcatheter of Tal et al would not operate differently with the claimed range and since the plurality of axial slits 122 formed proximal to and at a predetermined distance from distal outlet, the device would function appropriately having the claimed range. Further, applicant places no criticality on the range claimed, indicating simply that the filter section is positioned about 2-5 mm proximally to the distal end opening (specification pp. [0089]).
Regarding claim 16, Tal et al in view of Solar et al disclose the embolization microcatheter according to claim 1, wherein the braid (226) is made of tungsten (page 19, lines 1-2).
Regarding claim 17, Tal et al in view of Solar et al disclose the embolization microcatheter according to claim 1, wherein the inner liner comprises Polytetrafluoroethylene (PTFE) (page 33, lines 2-3).
Regarding claim 18, Tal et al in view of Solar et al disclose the embolization microcatheter according to claim 1,
Tal et al further disclose wherein a radiopaque marker comprises a metal marker band (page 15, lines 6-7).
Regarding claim 19, Tal et al in view of Solar et al disclose the embolization microcatheter according to claim 1,
Tal et al further disclose wherein a radiopaque marker is located 0.5-2 mm proximally to the distal end opening (page 25, lines 5-6, 1 mm is within 0.5-2 mm).
Regarding claim 20, Tal et al in view of Solar et al disclose the embolization microcatheter according to claim 1, being suitable for delivery of embolization beads having a particle size of about 900 microns (page 35, lines 1-6).
Regarding claim 22, Tal et al in view of Solar et al disclose a method for delivering embolization beads, the method comprising: delivering the embolization microcatheter of claim 1 to a target location via a delivery catheter (page 11); and injecting beads through the microcatheter (page 33, para 3).
Claims 7, 8, and 10-15 are rejected under 35 U.S.C. 103 as being unpatentable over Tal et al (WO 2019087191 A1) in view of Solar et al (US 20120259214 A1) and further in view of Periakaruppan et al (US 20040006318 A1).
Regarding claim 7, Tal et al in view of Solar et al disclose the limitations of claims 1 but fail to expressly teach said embolization microcatheter, wherein side openings of the distal most filter segment are essentially square shaped.
However, Periakaruppan et al disclose a catheter (102) comprising a side opening (100) which is essentially square shaped (see fig 10 and para 0038).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the microcatheter of Tal et al in view of Solar et al and incorporate the teachings of Periakaruppan et al to have the distal most filter segment essentially square shaped as alternative design side opening to filter substance though lumen of said microcatheter (see para 0038).
Regarding claim 8, Tal et al in view of Solar et al and Periakaruppan et al fail to expressly disclose the essentially square shaped side openings have a dimension of 50x50 microns.
However, Tal et al disclose any other dimensions or geometries of slit 122 may be adjusted according to the size of the beads used (page 16, lines 1-2).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to cause the microcatheter of Tal et al in view of Solar et al and Periakaruppan et al to have the essentially square shaped side openings have a dimension of 50x50 microns since it has been held that “where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device” Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 SPQ 232 (1984). In the instant case, the microcatheter of Tal et al in view of Solar et al and Periakaruppan et al would not operate differently with the claimed dimension. Further, applicant places no criticality on the dimension claimed, indicating simply that the essentially square shaped side openings have a dimension of 50x50 microns (specification pp. [0019]).
Regarding claim 10, Tal et al in view of Solar et al and Periakaruppan et al disclose the embolization microcatheter according to claim 7, wherein the side openings of the remainder of the at least two filter segments are in a form of axial slits (see figure and page 15, para 3).
Regarding claim 11, Tal et al in view of Solar et al and Periakaruppan et al disclose the embolization microcatheter according to claim 10, wherein the length of the side openings of the remainder of the at least two filter segments varies between the side openings (page 15 and 16) but fail to teach the side openings of the remainder of the at least two filter segments have a width of 20 microns.
However, Tal et al disclose the width of slits 122 may be approximately 50 microns (page 16, lines 7-8).
Therefore, it would have been obvious to one having ordinary skill in the art at the time of the invention to modify the microcatheter of Tal et al in view of Solar et al and Periakaruppan et al by making the side openings of the remainder of the at least two filter segments have a width of 20 microns as a matter of routine optimization since it has been held that “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding claim 12, Tal et al in view of Solar et al and Periakaruppan et al disclose the embolization microcatheter according to claim 11, wherein the side openings of the remainder of the at least two filter segments have a length of at least 200 microns (page 16, lines 7-8, length may be approximately 320 microns which is at least 200 microns).
Regarding claim 13, Tal et al in view of Solar et al and Periakaruppan et al fail to explicitly teach wherein at least some of the side openings of the remainder of the at least two filter segments have dimension of 2700x20 microns.
However, Tal et al disclose any other dimensions or geometries of slit 122 may be adjusted according to the size of the beads used (page 16, lines 1-2).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to cause the microcatheter of Tal et al in view of Solar et al and Periakaruppan et al to have at least some of the side openings of the remainder of the at least two filter segments have dimension of 2700x20 microns since it has been held that “where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device” Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 SPQ 232 (1984). In the instant case, the microcatheter of Tal et al in view of Solar et al and Periakaruppan et al would not operate differently with the claimed dimension. Further, applicant places no criticality on the dimension claimed, indicating simply that the at least some of the side openings of the remainder of the at least two filter segments have dimension of 2700x20 microns (specification pp. [0023]).
Regarding claim 14, Tal et al in view of Solar et al and Periakaruppan et al fail to explicitly teach at least some of the side openings of the remainder of the at least two filter segments have a dimension of 1350x20 microns.
However, Tal et al disclose any other dimensions or geometries of slit 122 may be adjusted according to the size of the beads used (page 16, lines 1-2).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to cause the microcatheter of Tal et al in view of Solar et al and Periakaruppan et al to have at least some of the side openings of the remainder of the at least two filter segments have dimension of 1350x20 microns since it has been held that “where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device” Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 SPQ 232 (1984). In the instant case, the microcatheter of Tal et al in view of Solar et al and Periakaruppan et al would not operate differently with the claimed dimension. Further, applicant places no criticality on the dimension claimed, indicating simply that the at least some of the side openings of the remainder of the at least two filter segments have dimension of 1350x20 microns (specification pp. [0023]).
Regarding claim 15, Tal et al in view of Solar et al and Periakaruppan et al fail to explicitly teach at least some of the side openings of the remainder of the at least two filter segments have a dimension of 300x20 microns.
However, Tal et al disclose any other dimensions or geometries of slit 122 may be adjusted according to the size of the beads used (page 16, lines 1-2).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to cause the microcatheter of Tal et al in view of Solar et al and Periakaruppan et al to have at least some of the side openings of the remainder of the at least two filter segments have dimension of 300x20 microns since it has been held that “where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device” Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 SPQ 232 (1984). In the instant case, the microcatheter of Tal et al in view of Solar et al and Periakaruppan et al would not operate differently with the claimed dimension. Further, applicant places no criticality on the dimension claimed, indicating simply that the at least some of the side openings of the remainder of the at least two filter segments have dimension of 300x20 microns (specification pp. [0023]).
Response to Arguments
Applicant's arguments filed on 02/20/2026 have been fully considered but they are not persuasive.
The applicant argues that the prior arts cited fail to teach "the plurality of side openings of a first filter segment circumferentially shifted relative to the plurality of side openings of a neighboring filter segment", examiner respectfully disagrees.
Tal et al teach the plurality of side openings of a first filter segment (724) circumferentially shifted relative to the plurality of side openings of a neighboring filter segment (726, page 27, lines 1-2, the distribution of the slits may be staggered meaning arranging an alternating, offset, or non-uniform pattern, rather than all at once or in a straight line and fig 7B).
Thus, the rejections of claims 2, 3, 5-8, 10-20 & 22 are maintained.
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 FATIMATA S DIOP whose telephone number is (571)272-3299. The examiner can normally be reached Monday- Friday, 9am to 6pm ET.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Bhisma Mehta can be reached at 571-272-3383. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/FATIMATA SAHRA DIOP/Examiner, Art Unit 3783
/BHISMA MEHTA/Supervisory Patent Examiner, Art Unit 3783
Prosecution Insights