DETAILED ACTION
This action is responsive to the Amendments and Response filed 9 December 2025. The Examiner acknowledges the amendments to claim(s) 10 and 13-14, the cancellation of claim(s) 11-12, and the addition of new claim(s) 41-43. Claims 1-5, 7-10, 13-22 and 41-43 are pending.
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 .
Claim Objections
Claim(s) 10, 14, and 42-43 is/are objected to because of the following informalities:
The Examiner notes that the Applicant appears to use “means for selectively coupling” [claim 10] and “coupling means” [claims 14, 42-43] interchangeably. Each instance of either “means for selectively coupling” and “coupling means” should be amended to only use the language of one or the other of “means for selectively coupling” and “coupling means” to maintain consistency.
Appropriate correction is required.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
The Examiner’s interpretations of the claim limitation(s) that invoke interpretation under § 112(f) are as follows:
Claim(s) 10 and those dependent therefrom recite(s) the limitation “means for selectively coupling the first guidewire to the second guidewire”, which recites a generic placeholder [“means”], modified by functional language [“for selectively coupling the first guidewire to the second guidewire”], wherein the identified generic placeholder is not further modified by sufficient structure, material, or acts for performing the claimed function. Accordingly, the Examiner has interpreted the recited limitation of “means for selectively coupling the first guidewire to the second guidewire” as being a magnetic coupling or a transverse [In one embodiment, the releasable coupling comprises a magnetic coupling. The magnetic coupling may be formed by a plurality of magnets arranged in pairs spaced along the first guidewire and the second guidewire. Alternatively, the releasable coupling may comprise a transverse pin (Applicant’s Specification p. 2:3-6)], or an equivalent thereof. The Examiner notes that claims 14 and 41-43 recite sufficient structure, material, or acts for performing the claimed function of the “means for selectively coupling the first guidewire to the second guidewire”.
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.
Claim(s) 13 and 41 is/are 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.
Claim 13 recites the limitation “the lateral channel” [line 2], which is considered to lack antecedent basis and is further considered to render claim 13 indefinite, as claim 13 lines 2-3 are considered to be directed towards further limiting the recited lateral channel relative to other claimed structures, but as there is no previously defined lateral channel in any of claims 10 and 13 it is unclear what the recited structural limitations of claim 13 are meant to refer to. For examination purposes, the Examiner has interpreted the lateral channel of claim 13 to refer to a lateral channel of the first guidewire, similar to claim 1 and presently cancelled claims 11-12.
Claim 41 recites the limitation “wherein the magnetic coupling is located within the lateral channel” [lines 1-2], which is considered to lack antecedent basis, as neither of claims 10 and 41 previously define a “magnetic coupling” or a “lateral channel”, and is further considered indefinite as it is unclear whether the claim is meant to define new elements of a magnetic coupling and a lateral channel, or whether the previously defined “means for selectively coupling…” of claim 10 [line 6] is meant to be further limited as a “magnetic coupling located within a lateral channel”. For examination purposes, the Examiner has interpreted the indefinite limitation to further limit the previously defined “means for selectively coupling…” of claim 10 [line 6] as a “magnetic coupling located within a lateral channel”.
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) 1, 5, 7-8, 10, 13, 16-18, and 22 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hardin (US-20080154207-A1, previously presented).
Regarding claim 1, Hardin teaches
A detachable guidewire assembly, comprising:
a first guidewire having a first diameter [first wire guide member 112 (Hardin ¶0042, Fig. 11)] and including a lateral channel [keyway 116 (Hardin ¶0042, Fig. 11)];
a second guidewire having a second diameter less than the first diameter [second wire guide member 114 (Hardin ¶0042, Fig. 11)], the second guidewire adapted to be inserted within and removed from the lateral channel [as illustrated in FIG. 11 the keyway 116 is configured to encompass a majority of the perimeter of the second wire guide member 114. Thus, to laterally remove the second wire guide member 114 from the keyway 116 of the first wire guide member 112, the second wire guide member 114 and/or the keyway 116 of the first wire guide member must comprise a material that is sufficiently flexible to permit deformation of one or both of these structures (Hardin ¶0042)]; and
a releasable coupling for selectively connecting the first guidewire to the second guidewire [Hardin ¶0042, wherein the deformability of either of the first wire guide member 112, the second wire guide member 114 and/or the keyway 116 of the first wire guide member is considered to define a releasable coupling].
Regarding claim 5, Hardin teaches
The detachable guidewire assembly of claim 1, wherein the lateral channel includes a lateral open end having a dimension greater than the second diameter [Hardin Fig. 11].
Regarding claim 7, Hardin teaches
The detachable guidewire assembly of claim 1, wherein the first guidewire comprises a C-shaped cross-section [Hardin Fig. 11].
Regarding claim 8, Hardin teaches
The detachable guidewire assembly of claim 1, wherein the second guidewire has a second length equal to or greater than a first length of the first guidewire [FIGS. 5-7 illustrate various methods and/or devices for separating the wire guide 10 of FIG. 2 into separate first and second wire guide members 32, 34. FIG. 5 illustrates the step of separating the wire guide 10 into two separate wire guide members 32, 34, by pulling the individual members in a lateral direction and away from each other (Hardin ¶0036), wherein the wire guide being split from a singular wire guide into two wire guides is considered to define the first length being equal to the second length].
Regarding claim 10, Hardin teaches
A detachable guidewire assembly, comprising:
a first guidewire having a first diameter [first wire guide member 112 (Hardin ¶0042, Fig. 11)];
a second guidewire having a second diameter less than the first diameter [second wire guide member 114 (Hardin ¶0042, Fig. 11)]; and
means for selectively coupling the first guidewire to the second guidewire [More specifically, first wire guide member 112 comprises a keyway 116 having a generally semi-circular shape, and second wire guide member 114 comprises a circular outer shape that is configured to fit within the keyway 116… Thus, to laterally remove the second wire guide member 114 from the keyway 116 of the first wire guide member 112, the second wire guide member 114 and/or the keyway 116 of the first wire guide member must comprise a material that is sufficiently flexible to permit deformation of one or both of these structures (Hardin ¶0042, Fig. 11), wherein the keyway 116 being sufficiently flexible to permit deformation to allow for lateral removal of the second wire guide member 114 from the first wire guide member 112 is considered to be an equivalent § 112(f) interpreted structure, as the keyway 116 is a structural element that identically performs the claimed function and produces the same results as the claimed means of “selectively coupling the first guidewire to the second guidewire”, and there is no language in the Applicant’s Specification that would exclude the keyway 116 as an equivalent (Applicant’s Specification p. 2:3-6 defines exemplary embodiments of the means for selectively coupling)].
Regarding claim 13, Hardin teaches
The detachable guidewire assembly of claim 10, wherein the lateral channel includes a laterally open end having a dimension greater than the second diameter [Hardin ¶0042, Fig. 11].
Regarding claim 16, Hardin teaches
The detachable guidewire assembly of claim 10, wherein the first guidewire comprises a C-shaped cross-section [Hardin Fig. 11].
Regarding claim 17, Hardin teaches
The detachable guidewire assembly of claim 10, wherein the second guidewire has a second length equal to or greater than a first length of the first guidewire [Hardin ¶0036, wherein the wire guide being split from a singular wire guide into two wire guides is considered to define the first length being equal to the second length].
Regarding claim 18, Hardin teaches
A detachable guidewire assembly, comprising:
a first guidewire [first wire guide member 112 (Hardin ¶0042, Fig. 11)] including a receiver [keyway 116 (Hardin ¶0042, Fig. 11)];
a second guidewire adapted to be positioned in the receiver [second wire guide member 114 (Hardin ¶0042, Fig. 11)]; and
a releasable coupling within the receiver for selectively connecting the first guidewire to the second guidewire [Hardin ¶0042, wherein the deformability of either of the first wire guide member 112, the second wire guide member 114 and/or the keyway 116 of the first wire guide member is considered to define a releasable coupling].
Regarding claim 22, Hardin teaches
The detachable guidewire assembly of claim 18, wherein the receiver includes an open end having a dimension greater than a diameter of the second guidewire [keyway 116 (Hardin ¶0042, Fig. 11)].
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.
Claim(s) 2-3, 14, 19-20, and 41-42 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hardin, as applied to claims 1, 10, and 18 above, in view of St. Germain (US-5813996-A, previously presented).
Regarding claims 2-3 [claim 3 written in longhand format to incorporate the subject matter of claim 2 therein], Hardin teaches
The detachable guidewire assembly of claim 1.
However, Hardin fails to explicitly disclose wherein the releasable coupling comprises a magnetic coupling, wherein the magnetic coupling is formed by a plurality of magnets arranged in pairs spaced along the first guidewire and the second guidewire.
St. Germain discloses a detachable guidewire assembly, wherein a first guidewire is releasably coupled to a second guidewire through magnetic coupling, wherein the magnetic coupling is formed by a plurality of magnets arranged in pairs spaced along the first guidewire and the second guidewire [guide wire 11 is connected to extension wire 12 by articulated magnetic coupling 20a. Articulated magnetic coupling 20a includes a series of inner magnets 22a rigidly secured to core member 21a by filler material 23a. Filler material 23a is non-magnetic and non-magnetically responsive. Articulated magnetic coupling 20a further includes a series of magnetically responsive outer portions 25a which are rigidly connected to hypotube 24a which in turn is rigidly connected to extension wire 12. Inner magnets 22a are coaxially aligned with magnetically responsive outer portions 25a and are slidable therein. The arrangement of each magnetically responsive outer portion 25a relative to each inner magnet 22a is such that the interaction between them produces an optimal attractive force. Providing a series of inner magnets 22a and magnetically responsive outer portions 25a increases the quantity of magnetic field edge effects which contribute a substantial amount of the longitudinal force to resist relative longitudinal displacement. Accordingly, the number of inner magnets 22a and magnetically responsive outer portions 25a may be varied, depending on the amount of longitudinal force required or desired to couple the guide wire 11 to the extension wire 12 (St. Germain Col 3:27-48, Fig. 2a), wherein as depicted in St. Germain Fig. 2a, a plurality of magnets are arranged in pairs spaced along each guidewire].
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 detachable guidewire of Hardin to employ wherein the releasable coupling comprises a magnetic coupling, wherein the magnetic coupling is formed by a plurality of magnets arranged in pairs spaced along the first guidewire and the second guidewire, so as to further secure the first guidewire to the second guidewire.
Regarding claim 14, Hardin teaches
The detachable guidewire of claim 10.
However, Hardin fails to explicitly disclose wherein the coupling means is formed by a plurality of magnets arranged in pairs spaced along the first and second guidewire.
St. Germain discloses a detachable guidewire assembly, wherein a first guidewire is releasably coupled to a second guidewire through magnetic coupling, wherein the magnetic coupling is formed by a plurality of magnets arranged in pairs spaced along the first guidewire and the second guidewire [St. Germain Col 3:27-48, Fig. 2a, wherein as depicted in St. Germain Fig. 2a, a plurality of magnets are arranged in pairs spaced along each guidewire].
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 detachable guidewire of Hardin to employ wherein the coupling means is formed by a plurality of magnets arranged in pairs spaced along the first and second guidewire, so as to further secure the first guidewire to the second guidewire.
Regarding claims 19-20 [claim 20 written in longhand format to incorporate the subject matter of claim 19 therein], Hardin teaches
The detachable guidewire assembly of claim 1.
However, Hardin fails to explicitly disclose wherein the releasable coupling comprises a magnetic coupling, wherein the magnetic coupling is formed by a plurality of magnets arranged in pairs spaced along the first guidewire and the second guidewire.
St. Germain discloses a detachable guidewire assembly, wherein a first guidewire is releasably coupled to a second guidewire through magnetic coupling, wherein the magnetic coupling is formed by a plurality of magnets arranged in pairs spaced along the first guidewire and the second guidewire [St. Germain Col 3:27-48, Fig. 2a, wherein as depicted in St. Germain Fig. 2a, a plurality of magnets are arranged in pairs spaced along each guidewire].
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 detachable guidewire assembly of Hardin to employ wherein the releasable coupling comprises a magnetic coupling, wherein the magnetic coupling is formed by a plurality of magnets arranged in pairs spaced along the first guidewire and the second guidewire, so as to further secure the first guidewire to the second guidewire.
Regarding claim 41, Hardin teaches
The detachable guidewire assembly of claim 10.
However, Hardin fails to explicitly disclose wherein the magnetic coupling is located within the lateral channel [see corresponding § 112(b) rejection and interpretation above].
St. Germain discloses a detachable guidewire assembly, wherein a first guidewire is releasably coupled to a second guidewire through magnetic coupling within a lateral channel for the first guidewire [St. Germain Col 3:27-48, Fig. 2a, wherein as depicted in St. Germain Fig. 2a, a plurality of magnets are arranged in pairs spaced along each guidewire].
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 detachable guidewire assembly of Hardin to employ wherein the magnetic coupling is located within the lateral channel, so as to further secure the first guidewire to the second guidewire.
Regarding claim 42, Hardin teaches
The detachable guidewire assembly of claim 10.
However, Hardin fails to explicitly disclose wherein the coupling means comprises a magnetic coupling.
St. Germain discloses a detachable guidewire assembly, wherein a first guidewire is releasably coupled to a second guidewire through magnetic coupling [St. Germain Col 3:27-48, Fig. 2a, wherein as depicted in St. Germain Fig. 2a, a plurality of magnets are arranged in pairs spaced along each guidewire].
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 detachable guidewire assembly of Hardin to employ wherein the coupling means comprises a magnetic coupling, so as to further secure the first guidewire to the second guidewire.
Claim(s) 4, 21, and 43 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hardin, as applied to claims 1, 10, and 18 above, in view of Orr (US-5853375-A, previously presented).
Regarding claim 4, Hardin teaches
The detachable guidewire assembly of claim 1.
However, Hardin fails to explicitly disclose wherein the releasable coupling comprises a pin extending transversely across the first guidewire and second guidewire.
Orr discloses a detachable guidewire assembly, wherein Orr discloses a releasable coupling between two guidewires, wherein the releasable coupling comprises a pin extending transversely across the first guidewire and second guidewire [FIG. 4 shows an alternate configuration in which connection member 40 is mechanically attached with the proximal end of guide wire 15 using pin 75 (Orr Col 4:27-30, Fig. 4)].
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 detachable guidewire assembly of Hardin to employ wherein the releasable coupling comprises a pin extending transversely across the first guidewire and second guidewire, so as to facilitate coupling between the first guidewire and the second guidewire.
Regarding claim 21, Hardin teaches
The detachable guidewire assembly of claim 18.
However, Hardin fails to explicitly disclose wherein the releasable coupling comprises a pin extending transversely across the first guidewire and the second guidewire.
Orr discloses a detachable guidewire assembly, wherein Orr discloses a releasable coupling between two guidewires, wherein the releasable coupling comprises a pin extending transversely across the first guidewire and second guidewire [Orr Col 4:27-30, Fig. 4].
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 detachable guidewire assembly of Hardin to employ wherein the releasable coupling comprises a pin extending transversely across the first guidewire and the second guidewire, so as to facilitate coupling between the first guidewire and the second guidewire.
Regarding claim 43, Hardin teaches
The detachable guidewire assembly of claim 10.
However, Hardin fails to explicitly disclose wherein the coupling means comprises a pin extending transversely across the first guidewire and second guidewire.
Orr discloses a detachable guidewire assembly, wherein Orr discloses a releasable coupling between two guidewires, wherein the releasable coupling comprises a pin extending transversely across the first guidewire and second guidewire [Orr Col 4:27-30, Fig. 4].
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 detachable guidewire assembly of Hardin to employ wherein the releasable coupling comprises a pin extending transversely across the first guidewire and the second guidewire, so as to facilitate coupling between the first guidewire and the second guidewire.
Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hardin, as applied to claim 1 above.
Regarding claim 9, Hardin teaches
The detachable guidewire assembly of claim 1.
However, while Hardin fails to explicitly disclose in the present embodiment wherein the second guidewire is longer than the first guidewire, Hardin does disclose in a different embodiment that the detachable guidewires may be of different sizes [Although the wire guide 130 of this embodiment comprises a three equally sized separable elongate wire guide members, it should be understood that the wire guide 130 may comprise any practical number of wire guide members having varying shapes and sizes (Hardin ¶0045)].
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 detachable guidewire of Hardin to employ wherein the second guidewire is longer than the first guidewire, as this modification would amount to mere simple substitution of one known element for another with similar expected results [MPEP § 2143(I)(B)].
Response to Amendment
Applicant's arguments, see Applicant’s Remarks, filed 9 December 2025, with respect to the previously applied claim rejection(s) under § 102 and § 103 have been fully considered but they are not persuasive.
Regarding claims 1 and 18, the Applicant asserts that the Examiner’s interpretation of Hardin ¶0042, wherein “deformability of either of the first wire guide member 112, the second wire guide member 114 and/or the key way 116 of the first wire guide member is considered to define a releasable coupling”, fails to anticipate the claimed invention as there is no corresponding structural element as a “releasable coupling” disclosed in Hardin. The Applicant further asserts that mere capability of performing a function is insufficient to establish anticipation when the claim recites specific structure, and not just function [Applicant cites: MPEP § 2114, which notes that “prior art cannot anticipate the claim if there is any structural difference”; and In re Robertson, which notes the difference between a claimed invention directed towards three fastening elements and a prior art reference that discloses two fastening elements that performs the same function as the three fastening elements]. The Applicant directs attention to the non-limiting examples of the Applicant’s specification, which disclose that the claimed releasable coupling may take the form of a magnetic coupling or a pin, and cites a definition of “coupling” as “[a] device that links or connects”, which the Applicant again notes is not present in Hardin. However, the Examiner disagrees with the Applicant’s argument, as Hardin explicitly discloses the keyway 116 as a physical element [first wire guide member 112 comprises a keyway 116 having a generally semi-circular shape, and second wire guide member 114 comprises a circular outer shape that is configured to fit within the keyway 116 (Hardin ¶0042, Fig. 11)], and further defines the keyway 116 as comprising “a material that is sufficiently flexible to permit deformation of one or both of these structures” [Hardin ¶0042, Fig. 11]. As such, the keyway 116 is considered to define a structural element that may read on the claimed releasable coupling for selectively connecting the first guidewire to the second guidewire. The Examiner further notes that the argued section of MPEP § 2114 and In re Robertson are not considered to be supported by the Applicant’s explicit claim language, as the releasable coupling is merely defined as being “for selectively coupling the first guidewire to the second guidewire”, such there is no claim language that highlights any structural difference between the claimed releasable coupling and the keyway 116 of Hardin. The Examiner also notes that the features upon which applicant relies (i.e., “the claimed releasable coupling may take the form of a magnetic coupling or a pin”) 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).
Furthermore, regarding claim 18, the Applicant notes that the claim language specifies that the releasable coupling is “within the receiver”, and argues that this claim language is not accounted for in the presented prior art rejection. However, the Examiner disagrees with the Applicant’s argument, as the Examiner notes that the keyway 116 of Hardin, which was applied to read on the claimed receiver, is defined by its structure/material composition to perform the function of selectively connecting the first guidewire to the second guidewire [see Hardin ¶0042, Fig. 11], such that the limitation of the releasable coupling being “within the receiver” is accounted for in the rejection under § 102 as being anticipated by Hardin.
Regarding claim 10, the Applicant makes similar assertions based on the Applicant’s remarks directed towards claims 1 and 18. The Applicant further argues that it would not have been obvious to modify Hardin by St. Germain, as Hardin relates to a keyway type of arrangement, thus making the use of magnets resisting this function undesirable, and further argues that providing a lateral channel in the St. Germain arrangement would completely change the construction and function, which is inimical to a finding of obviousness. The Applicant further argues that the obviousness presented by the Examiner “so as to further secure the first guidewire to the second guidewire” in the modification of Hardin by St. Germain has no rational underpinning as to why a skilled artisan would combine the teachings of Hardin and St. Germain. However, the Examiner firstly notes that claim 10 was amended to now recite “means for selectively coupling the first guidewire to the second guidewire”, such that the Applicant’s arguments with respect to claim(s) 10 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, as claim 10 is anticipated by Hardin, which teaches the argued subject matter [see § 112(f) Claim Interpretation section above; More specifically, first wire guide member 112 comprises a keyway 116 having a generally semi-circular shape, and second wire guide member 114 comprises a circular outer shape that is configured to fit within the keyway 116… Thus, to laterally remove the second wire guide member 114 from the keyway 116 of the first wire guide member 112, the second wire guide member 114 and/or the keyway 116 of the first wire guide member must comprise a material that is sufficiently flexible to permit deformation of one or both of these structures (Hardin ¶0042, Fig. 11), wherein the keyway 116 being sufficiently flexible to permit deformation to allow for lateral removal of the second wire guide member 114 from the first wire guide member 112 is considered to be an equivalent § 112(f) interpreted structure, as the keyway 116 is a structural element that identically performs the claimed function and produces the same results as the claimed means of “selectively coupling the first guidewire to the second guidewire”, and there is no language in the Applicant’s Specification that would exclude the keyway 116 as an equivalent (Applicant’s Specification p. 2:3-6 defines exemplary embodiments of the means for selectively coupling)]. However for the sake of compact prosecution and as similar claim language is considered to be recited in at least claims 2-3, 14, 19-20, and 41-42, the Examiner disagrees with the Applicant’s argument, as the Examiner notes that while Hardin discloses a keyway 116 [the wire guide may comprise two elongate wire guide members, wherein the first elongate wire guide member has a female keyway disposed along the length thereof and the second elongate wire guide member has a male key disposed along the length thereof, the male key being configured to engage and interlock with the female keyway (Hardin ¶0010); see Hardin ¶0042, Fig. 11 for specific embodiment of Hardin applied in the prior art rejection], Hardin further discloses that the first guidewire and second guidewire may be laterally separable [Thus, to laterally remove the second wire guide member 114 from the keyway 116 of the firstwire guide member 112, the second wire guide member 114 and/or the keyway 116 of the first wire guide member must comprise a material that is sufficiently flexible to permit deformation of one or both of these structures (Hardin ¶0042, Fig. 11)], such that the modification of Hardin by the disclosure of magnets of St. Germain is not considered to render the functionality of Hardin inoperable. The Examiner further notes that St. Germain was not specifically modified by any teaching of Hardin to employ a lateral channel in the guidewire as taught by St. Germain, such that it is not clear what rejection or prior art interpretation is being argued against by the Applicant. The Examiner further notes that both Hardin and St. Germain are directed towards structures and functions for allowing for selective retention of one guidewire with another guidewire, such that modification of the guidewire assembly of Hardin to employ magnetic coupling is considered to be a reasonable modification that one of ordinary skill in the art may employ.
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 SEVERO ANTONIO P LOPEZ whose telephone number is (571)272-7378. The examiner can normally be reached M-F 9-6 EST.
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/CHARLES A MARMOR II/Supervisory Patent Examiner
Art Unit 3791
/S.P.L./Examiner, Art Unit 3791