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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 2/25/2026 has been entered.
Response to Arguments
The previously presented double patenting rejections have been overcome by the terminal disclaimer filed 2/25/2026.
Applicant's arguments filed 2/25/2026 with respect to the combination of Palmer in view of Vale and Banas have been fully considered but they are not persuasive. Applicant notes that Palmer discloses a soldering technique that relies on the addition of an intermediate filler material (solder 176) to join the first and second connection portions and therefore fails to disclose welds as claimed. However, the rejections rely on the combination of Palmer in view of Vale and Banas, not on Palmer alone. As noted in the rejection, Palmer discloses joining other elements of the device using soldering, laser welding, adhesive, or shrink wrap (col. 10, ll. 20-28) and therefore discloses laser welding as a known alternative to soldering. Vale teaches first and second connection portions (fig. 16: 757,750), and further discloses welding as an alternative to soldering for the connection of these overlapping portions ([0239]). Banas is relied on for its teaching of attaching first and second connection portions (28,29) along first and second seams (along left and right side of interface 30; fig. 1) via a first weld extending from the first seam toward the second seam and a second weld attaching the first and second connection portions extending from the second seam toward the first seam (fig. 1, 3a; claim 1 of Banas). Banas discloses that the such laterally formed first and second welds that extend towards each other reduce energy consumption and improve the quality of the welded joint as compared to a single weld from a single laser beam having sufficient intensity for the laser beam to penetrate through the entire interface between the two elements being joined (col. 5, ll. 3-67). It would have been obvious to one of ordinary skill in the art to have modified the prior art of Palmer in view of Vale to attach the first and second connection portions via laser welding instead of soldering in view of Palmer’s and Vale’s disclosure that such joining methods are known alternatives in the art. It would have been obvious to further modify the prior art of Palmer to form a first weld at the first lateral extent of the overlapping portion extending from the first seam toward the second seam and a second weld at the second lateral extent of the overlapping portion extending from the second seam toward the first seam in view of Banas in order to reduce energy consumption and improve the quality of the welded joint.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). Motivation for modifying Palmer in view of Banas is found in col. 5, ll. 3-67 of Banas, in particular that the modification reduces energy consumption and improves the quality of the welded joint.
Regarding applicant’s assertion that Banas is directed to industrial application of laser welding “thick workpieces”, Applicant does not provide any citation in the prior art of Banas indicating that the method of welding taught by Banas is only useful on workpieces of a certain thickness, or any citation that discourages application of the laser welding technique taught by Banas on a particular size workpiece. Additionally, Banas discloses using the method on workpieces having a combined thickness of 1 inch while still realizing a substantial reduction in the amount of energy expended on production of the welded joint (col. 4, ll. 65-col. 5, ll. 27).
In response to applicant's argument that Palmer in view of Vale and Banas does not disclose that forming the weld as taught by Banas preserves flexibility while maintaining torsional integrity, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
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) 1-2, 5, 6, 8-9, and 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Palmer et al. (US 6,402,771) in view of Vale et al. (US 2014/0371779) and Banas et al. (US 4,794,231).
Regarding claims 1, Palmer discloses an elongated device for restoring blood flow or removing thrombus (abstract), the device being adapted to be advanced distally and withdrawn proximally from a proximal end and rotated about a longitudinal axis from the proximal end, the device comprising a working element (20) comprising a first connection portion (174; fig. 13) extending proximally, the first connection portion having a first attachment surface (see fig. 14), a pusher (30) comprising a second connection portion (164) extending distally, the second connection portion having a second attachment surface (fig. 14) facing and extending longitudinally aligned to the first attachment surface to define an overlapping portion (see figs. 13, 14) and to define first and second seams extending longitudinally along first and second lateral extents of the overlapping portion (noting 1st and 2nd seams labelled in the drawing below extend in the longitudinal direction, i.e., into/out of the page)..
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Palmer discloses a first joint (see solder 176 on left in fig. 14) attaching portions of the first and second connection portions along the first seam and a second joint (see solder 176 on right in fig. 14) attaching portions of the first and second portions along the second seam. Regarding claim 8, Palmer discloses a method of connecting the working element (20) of the elongated device for restoring blood flow or removing thrombus to the pusher (30) by disposing the first attachment surface longitudinally aligned with the second attachment surface to form the overlapping portion (figs. 13, 14) and forming the first and second seams extending parallel to a longitudinal axis along first and second lateral extents of the overlapping portion. Palmer does not expressly disclose wherein a first attachment surface radius is larger than a second attachment surface radius along the overlapping portion.
Vale discloses another retrieval device comprising a working element (inner expandable member) and a pusher (750; fig. 16), the working element comprising a first connection portion (756,757) extending proximally and having a first attachment surface (inner surface of 757), and the pusher comprising a second connection portion extending distally and having a second attachment surface (see fig. 16). The second attachment surface faces and extends longitudinally aligned to the first attachment surface to define an overlapping portion and to define first and second seams extending longitudinally along the first and second lateral extents of the overlapping portions, which are welded together ([0239]). The first attachment surface radius is larger than a second attachment surface radius along the overlapping portion as clearly illustrated in fig. 16 of Vale. It would have been obvious to one of ordinary skill in the art to have modified the first attachment surface (of 174) of Palmer to comprise a section of an annulus having a radius larger than the radius of the circular (in cross-section) second attachment surface (of 164) along the overlapping portion as taught by Vale in order to better conform the first attachment surface to the second attachment surface, thereby providing increased contact between the attachment surfaces and allowing a stronger bond to be achieved if desired
Palmer discloses using a first solder and a second solder along the first and second seams (see solder 176 along both seams; fig. 14), respectively, and therefore fails to disclose first and second welds as claimed or the steps of forming the first weld and second weld as claimed.
However, Palmer discloses joining other elements of the device using soldering, laser welding, adhesive, or shrink wrap (col. 10, ll. 20-28) and therefore discloses laser welding as a known alternative to soldering. Vale teaches first and second connection portions (fig. 16: 757,750) as discussed above, and further discloses welding as an alternative to soldering for the connection of these overlapping portions ([0239]). Banas discloses attaching first and second connection portions (28,29) along first and second seams (along left and right side of interface 30; fig. 1) via a first weld extending from the first seam toward the second seam and a second weld attaching the first and second connection portions extending from the second seam toward the first seam (fig. 1, 3a; claim 1 of Banas). Banas discloses that the such laterally formed first and second welds that extend towards each other reduce energy consumption and improve the quality of the welded joint as compared to a single weld from a single laser beam having sufficient intensity for the laser beam to penetrate through the entire interface between the two elements being joined (col. 5, ll. 3-67).
It would have been obvious to one of ordinary skill in the art to have modified the prior art of Palmer in view of Vale to attach the first and second connection portions via laser welding instead of soldering in view of Palmer’s and Vale’s disclosure that such joining methods are known alternatives in the art. It would have been obvious to further modify the prior art of Palmer to form a first weld at the first lateral extent of the overlapping portion extending from the first seam toward the second seam and a second weld at the second lateral extent of the overlapping portion extending from the second seam toward the first seam in view of Banas in order to reduce energy consumption and improve the quality of the welded joint.
Regarding claims 2 and 9, a cross-sectional shape of the second connection portion perpendicular to the longitudinal axis is a circle as disclosed by Palmer, and Vales teaches that the cross-sectional shape of the first connection portion is a section of an annulus (see fig. 16 of Vale).
Regarding claim 5, see coils (166/168) which are together considered the claimed inner jacket.
Regarding claim 6, Palmer discloses radiopaque element (168) disposed at a proximal end of the overlapping portion, the radiopaque element comprising a coil extending around at least a part of the pusher (figs. 13, 14).
Regarding claim 14, the step of forming the first weld comprises directing energy laterally at the first seam toward the second seam and the step of forming the second weld comprises directly energy laterally at the second seam toward the first seam as taught by Banas (see esp. fig. 1 and claim 1 of Banas).
Claim(s) 3, 4, and 10-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Palmer in view of Vale and Banas as applied to claims 1 and 8 above, and further in view of Sharp (US 4,574,176). Palmer in view of Vale and Banas discloses the invention substantially as stated above, further noting that Banas teaches moving the laser or the elements being welded relative to each other to provide a weld that extends along longitudinally extending seams at either lateral side of the interface, but does not expressly disclose whether the weld is formed continuously (i.e., with a continuous wave laser) or via a plurality of welding points.
Sharp teaches forming a weld (105; fig. 23) extending along the length of a seam at which two surfaces abut by forming a plurality of overlapping consecutive welding points (107) along the seam, such that a first welding point is formed at a first end of the seam and a second welding point is formed between the first end and a second end of the seam before forming a welding point at any other points along the first seam (i.e., welding points are formed sequentially from one end of the seam to the other end of the seam; see fig. 1, wherein workpieces are advanced in their longitudinal directions as laser is pulsed). Sharp discloses that forming a longitudinally extending weld by providing consecutively formed overlapping welding points via a pulsed laser is advantageous because it avoids the surface rippling, humping, and slubbing problems associated with high-speed continuous wave laser welding (col. 4, ll. 8-35), and the discrete weld puddles formed by the pulses can quickly freeze to minimize heat input related metallurgical problems (col. 9, ll. 32-43). Therefore, it would have been obvious to one of ordinary skill in the art to have modified the prior art of Palmer in view of Vale and Banas to form each of the first and second welds by consecutively forming a plurality of weld points from one end of the respective seam to the other end of the respective seam in view of the teachings of Sharp in order to minimize rippling, humping, and slubbing problems associated with longitudinally extending welds formed by continuous wave lasers.
With respect to claims 12 and 13, the prior art of Palmer in view of Vale, Banas and Sharp does not expressly disclose whether the plurality of discrete welding points formed consecutively along the lengths of the respective seams, from one end of the respectively seam to the other, are formed starting at the proximal end or starting at the distal end of the respective seam. However, applicant has not disclosed any advantage gained, purpose served, or problem solved by either configuration over the other configuration, noting only that both configurations avoid accumulation of heat in a specific zone ([0022]-[0024], [0109] of instant application’s printed publication US 2023/0270461). As taught by Sharp, the overlapping discrete spot welds minimize heat input related metallurgical problems (col. 9, ll. 26-44). It would have been obvious to one of ordinary skill in the art to have modified the prior art of Palmer in view of Banas and Sharp to form the welding points, which are consecutively formed in the longitudinal direction from one end of the seam to the other end of the seam as taught by Sharp, starting at the proximal end of the respective seam or starting at the distal end of the respective seam as such a modification can be considered a mere design choice, and the prior art and the instant invention would work equally well with either configuration as they both provide the same advantage of avoiding heat accumulation at a specific point.
Claim(s) 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Palmer in view of Vale and Banas as applied to claim 8 above, and further in view of O’Malley et al. US 2021/0393279). Palmer in view of Vale and Banas discloses the invention substantially as stated above. For the purposes of claim 15, the outer jacket covering the radiopaque marker and extending around at least part of the overlapping portion is catheter (40) (e.g., when entire device is housed in 40 as shown in fig. 1 of Palmer), noting that no order is being claimed to the method steps of claim 15. Palmer discloses placing a radiopaque element (coil 168) at a proximal end of the overlapping portion, the radiopaque element comprising a coil extending around at least part of the pusher (figs. 13, 14). Palmer in view of Vale and Banas fails to disclose an inner jacket covering at least part of the overlapping portion with an inner jacket extending proximally from the overlapping portion around at least part of the pusher.
O’Malley discloses another device for retrieving a clot from a blood vessel. O’Malley teaches covering a coil (104) that forms part of the attachment region of a working element and a pusher with a polymeric jacket made of a low friction material in order to facilitate movement of the coil through a delivery catheter as understood by one of ordinary skill in the art ([0081)). It would have been obvious to one of ordinary skill in the art to have further modified the prior art of Palmer to include the step of covering radiopaque coil (168) with an inner jacket made of a low friction material as taught by O’Malley in order to facilitate movement of the device relative to a delivery catheter. Since the coil extends around at least part of the overlapping portion as disclosed by Palmer, the inner jacket covering the entire coil as taught by O’Malley will also cover at least part of the overlapping portion. Additionally, O’Malley teaches that the inner jacket may extend proximally from the coil around at least part of pusher 106 (noting jacket can include jacket 105 in combination with polymeric jacket covering coil; see [0081] of O’Malley) and thus the inner jacket of modified Palmer extends proximally from the radiopaque coil, and thus the overlapping portion, and around at least part of the pusher.
Allowable Subject Matter
Claim 7 and 16 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
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KATHLEEN SONNETT HOLWERDA whose telephone number is (571)272-5576. The examiner can normally be reached M-F, 8-5, with alternate Fridays off.
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KSH 4/14/2026
/KATHLEEN S HOLWERDA/Primary Examiner, Art Unit 3771
Prosecution Insights