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 .
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-3 and 8-10 are rejected under 35 U.S.C. 103 as being unpatentable over Zhang et al. (US 2016/0075987).
Regarding claims 1-2, 9
Zhang discloses a method for preparing a 3-D microstructure including loading an organic solvent containing magnetic particles in a mold having a 3-dimensional pattern, applying a magnetic field to move the particles into the 3-D pattern of the mold, removing at least 70 % of the solvent, loading a polymer onto a mold, and forming the 3-D microstructure by releasing the polymer from the mold, where the 3-D microstructure includes polymer pillars containing magnetic particles. (para 0029).
Zhang discloses that polymerizable compound can be placed on a substrate (i.e., a mold) and polymerizing to form a polymeric nanostructure (para 0075). Zhang further discloses using polydimethylsiloxane and curing it after placing into the mold which implies the use of a monomer (para 0127).
Whether the magnetic particles are fist added to the mold then monomer mixture is added, or added to the monomer mixture before being placed in the mold, it has been held that selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results, see MPEP 2144.04, section C, and also In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946), and In re Gibson, 39 F.2d 975, 5USPQ 230 (CCPA 1930).
Based on how the polymer with pillars is made in a mold, the pillars would necessarily have a plurality of free ends, with entrapped magnetic particles at the free ends (see Figures 1, 6, 12, 13, 15, 16A, 16B, 16C and 17).
Regarding claim 3
When the Zhang method used has the solvent removed from a mixture of organic solvent and magnetic particles which have been placed in a mold (see para 0029), gravity would assist the magnetic particles in migrating towards the free end of the mold.
Regarding claim 8
Zhang discloses that the magnetic nanoparticles can be made from iron or a compound thereof (para 0024). As such it would be prima facie obvious to select superparamagnetic iron oxide as the iron compound for magnetic applications as it has the strongest paramagnetism.
Regarding claim 10
Zhang discloses that the height of the pillars can be less than 20 microns, and that the size or width can be less than 5 microns (para 0097).
Zhang also discloses that the width gap can be less than 7 microns (para 0081).
As the size ranges of Zhang overlap the instant invention, the subject matter as a whole would have been obvious to one having ordinary skill in the art at the time the invention was made to have selected the overlapping portion of the range disclosed by the reference because overlapping ranges have been held to be a prima facie case of obviousness. In re Malagari, 182 U.S.P.Q. 549.
Claims 4-7 are rejected under 35 U.S.C. 103 as being unpatentable over Zhang et al. (US 2016/0075987), as applied to claims 1-3 and 8-10 above, in view of Dahlgren et al. (US 2009/0076597).
Regarding claims 4-7
Although, Zhang does not teach a catheter, Zhang does teach that his invention can be used in biomedicine and biomedical devices (paras 0058, 0064, 0080, 0108, 0136). However, Dahlgren medical devices discloses a magnetic wire (2) extending helically through a catheter (13) (see paras 0018 and Fig. 1A). The wire (2) is coupled to a power source (28) and is configured to produce a magnetic field (31); the power source provides pulsed DC output to the wire (2) (para 0019). Therefore it would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to add to the teachings of Zhang by producing his polymer structure on the inside surface of the catheter substrate of Dahlgren, with a reasonable expectation of success, and the expected benefit of being able to control the catheter with magnetism to make the pillars move, as suggested by Dahlgren.
Conclusion
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JAMES E. MCDONOUGH
Examiner
Art Unit 1734
/JAMES E MCDONOUGH/Primary Examiner, Art Unit 1734
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