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 Rejections - 35 USC § 112
1. 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.
2. Claims 1-13 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.
3. Claims 1, 5 and 6 are indefinite because it is not clear if the “outer layer part” is another element of the claim or if the “outer layer part” comprises a resin layer on the outer surface of the base material part. It is also not clear what is “provided on the surface of the base material part”. For purposes of examination the Examiner will construe claims 1, 5 and 6 to mean that the base material part comprising a resin layer on the outer surface. It is also not clear what is meant by the phrase “wherein an outer surface of the outer layer part in a region is a”. It appears that surface of the resin layer has an “irregular surface”; however, Applicant’s claim language fails to capture this feature. Claim 1, 5 and 6 are further indefinite because of the term “substantially”. The term “substantially” in claim 1, 5 and 6 is a relative term which renders the claim indefinite. The term “substantially” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Accordingly, it is not clear if the surface of the resin layer comprises regions that are smooth (e.g., flat) and/or if the surface of the resin layer comprises areas or regions that are “irregular” as claimed. Claims 2-13 are rejected for their dependency on claim 1, 5 and 6.
4. Claim 2 is further indefinite because it is not clear what is meant by “wherein the region is positioned at a portion of the outer layer part under which a coil is not disposed.” Since it is unclear what is meant by “the outer layer part” it is also not clear what is meant by “under which a coil is not disposed”. In addition, the term “a coil” lacks antecedent basis.
5. Claim 3 is further indefinite because it is not clear what is meant by “wherein a shape of the recesses in plan? view is an irregularly-shaped linear portion.”. Does Applicant mean plain view? It is also not clear what defines an irregularly-shaped linear portion? Do Applicants mean that the surface of the resin has recesses and/or projections that extend along the length of the base material part?
6. Claims 4 and 5, are further indefinite because Applicants fail to recite the diameter of the “outer layer part”
7. Claim 7 is further indefinite because it is not clear what is meant by “tapered” portion. Do Applicants mean that the base material part further comprises a tapered zone or region? Or is the “tapered” portion another element of the elongated member? It is also not clear what is meant by the phrase “outer diameter variation ratio excludes a change in the outer diameter due to the tapered portion, and is 3% or more with respect to a minimum outer diameter value.” Applicants fail to recite the diameter of the outer layer part. As such, it is not possible to search this limitation for the purpose of applying prior art. For purposes of the examination claim 7 will be construed to mean comprising a tapered zone or region.
Claim Rejections - 35 USC § 102
8. 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.
9. Claim(s) 1-13 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kinoshita et al., US 2009/0163833.
The patent application issued to Kinoshita et al., teach a guide wire comprising a member (2) comprising a flexible core wire (3) and having an outer diameter ranging from .02-1.2mm, a bulge forming layer (4) and a coating layer (5) (title, abstract, paragraph 0042 and figure 1). The Examiner is of the position that the flexible core wire (3) meets the claimed base material part. Said bulge forming layer comprises an outer surface of recesses and projections (figure 1). Said bulge forming layer is made from the claimed resins of ETFE, PTFE or PFA (paragraph 0063 and 0101-0110). The Examiner is of the position that the bulge forming layer meets the claimed outer layer part. With regard to claim 2, Kinoshita et al., teach that a coil (12) can be positioned around the core wire (3) (paragraph 0169 and figures 8 and 9) as such the limitation of an “outer layer part under which a coil is not disposed” is met. Said coating layer is also made from the claimed resins (paragraphs 0101-0110). Kinoshita et al., further teach the claimed “tapered” part having an outside diameter ranging from .05-.3mm (paragraph 0047). With regard to the claimed elongated medical instrument, the Examiner is of the position that the guide wire of Kinoshita et al., meets this limitation. With regard to the claimed catheter, the guide wire of Kinoshita et al., can be used to guide a catheter (paragraph 0053).
Conclusion
10. Any inquiry concerning this communication or earlier communications from the examiner should be directed to LYNDA SALVATORE whose telephone number is (571)272-1482. The examiner can normally be reached M-F.
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, Marla McConnell can be reached at 571-270-7692. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LYNDA SALVATORE/Primary Examiner, Art Unit 1789
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