DETAILED ACTION
The Examiner acknowledges the response received 28 May 2026. Claim 12 is withdrawn; claims 1-11 are pending.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 .
Response to Arguments
Applicant's arguments filed 28 May 2026 have been fully considered but they are not persuasive. As an initial matter, the Examiner acknowledges as pointed out by the Applicant that the previous response to arguments referred to a Sliwa reference that was not relied upon for the rejection. The Examiner regrets any confusion for this mistake; the Patil reference is the only one relied upon for the prior art rejection, at the sections referred to in the action.
The Applicant argues (page 4, “Remarks”) “Patil does not disclose or suggest "a second coil along an outside of the catheter, the second coil comprising a wire wound around the catheter such that the second coil defines at least two windings, the second coil including an uninsulated portion of a predetermined number of windings configured to contact tissue within the body of the patient" as recited in Claim 1.”
The Examiner refers to previously cited par. 0277, where Patil discloses “a conductor wire or multiple conductor wires may be wrapped on an outside surface of the core wire and encased within an external hypotube or within a polymeric material (e.g. heat shrink, or extruded polymer).” This clearly points out that one or more coils may be placed on the outside of the catheter structure and within an insulation (polymeric material). In the previously cited par. 0083, Patil discloses insulated portions on the outer surface spaced apart from uninsulated portions.
The Applicant further argues (page 6, “Remarks”) “there are gaps of tens or even hundreds of paragraphs between some of the cited passages, and Applicant disputes that the foregoing paragraphs in Patil are even conceptually connected as an actual embodiment for comparison to the Claims. The cited paragraphs in Patil above are bereft of reference characters or specific reference numbers in the drawings and these paragraphs do not even mention the drawings (with the exception of paragraph [0277] which references FIGs. 2-3 without reference numbers).”
The Examiner respectfully disagrees with this assessment of Patil. Par. 0083 is part of the Summary section, while par. 0277+ further explain one or more embodiments of the larger system, as is common in patent literature. Patil discloses (par. 0268) “Exemplary delivery devices that can be incorporated into an overall system will now be described.”
Claim Rejections - 35 USC § 102
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 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.
Claims 1-10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Patil et al (U.S. 2014/0142398). Patil discloses (par. 0083) a first coil (0277) at a location within the catheter and electrically insulated by the catheter (par. 0083), the first coil configured to output signals to determine a position of the first coil within a body of a patient (par. 0309); and a second coil (0277) along an outside of the catheter, the second coil comprising a wire wound around the catheter such that the second coil defines at least two windings, the second coil including an uninsulated portion (par. 0293) of a predetermined number of windings configured to contact tissue within the body of the patient and output 1) electrocardiogram (ECG) signals (par. 0080), and 2) signals indicative of voltages corresponding to tissue impedance from a magnetic field through body tissues and/or fluids (par. 0448-0453).
Regarding claim 2, Patil discloses (par. 0309) the second coil is additionally configured to output signals for determining the position of the second coil within the body.
Regarding claim 3, Patil discloses (Figure 28) the predetermined number of windings includes at least two.
Regarding claim 4, Patil discloses (par. 0288) the first coil and the second coil are coaxial with each other.
Regarding claim 5, Patil discloses (Figure 29) the second coil extends over at least a portion of the first coil.
Regarding claim 6, Patil discloses (Figure 29) the second coil extends within the span of the first coil.
Regarding claim 7, Patil discloses (par. 0084) a processor in communication with the second coil for receiving signals indicative of voltages corresponding to impedance from the magnetic field through body tissues and/or fluids, and analyzing the received signals to determine the body tissues and/or fluids proximate to the sensor.
Regarding claim 8, Patil discloses (par. 0359) a processor in communication with the second coil for receiving ECG signals for constructing an electroanatomical map of the body traveled by the catheter.
Regarding claim 9, Patil discloses (par. 0083) the second coil includes one or more wires wound helically around the catheter such that there are at least two windings.
Regarding claim 10, Patil discloses (par. 0083) the at least two windings are at a predetermined distance from each other for avoiding short circuiting between the windings.
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.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Patil et al (U.S. 2014/0142398). Patil discloses the claimed invention except for the predetermined distance between the at least two windings is at least 0.5 mm It would have been obvious to one having ordinary skill in the art at the time the invention was made to provide a distance between the windings of this range, since it has been held that discovering the optimum or workable ranges involves only routine skill in the art. See In re Aller, 105 USPQ 233.
Conclusion
THIS ACTION IS MADE FINAL. 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 DEBORAH L MALAMUD whose telephone number is (571)272-2106. The examiner can normally be reached Mon - Fri 1:00-9:30 Eastern.
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, Unsu Jung can be reached at (571) 272-8506. 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.
/DEBORAH L MALAMUD/Primary Examiner, Art Unit 3792
Prosecution Insights