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 .
Response to Arguments
Applicant’s arguments with respect to the claim(s) 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.
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.
Claim(s) 22-30 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by WO 2005065763 A1 to Parins et al. (hereinafter, Parins).
Regarding Claim 22, Parins discloses a guidewire (guidewire 10) (FIG. 3), comprising inter alia:
an elongated tubular member (tubular member 26) being formed from a metal alloy (pg. 6, ll. 25-29 “…tubular member 26 can be formed of any suitable materials including… metal alloys… stainless steel… nickel-titanium alloy… nitinol…”) and having a lumen (lumen 36 in which core member 16 resides) extending from a proximal end (lumen in which proximal potion 22 of core member 16 resides) (pg. 4, ll. 33-34 “The tubular member 26 defines a lumen or opening 36…” ) to a distal end (lumen in which distal portion 18 of core member 16 resides);
a proximal section (proximal portion 14) and a distal section (distal portion 12);
a uniform outer diameter extending along the proximal section and the distal section (pg. 5, ll. 18-22 “… the tubular member 26 can have… an outer diameter that is in the range of about 0.007 inches to about 0.038 inches.”);
the proximal section having a first inner diameter and the distal section having a second inner diameter less than the first inner diameter (pg. 5, ll. 18-21 “…the tubular member 26 can have… an inner diameter that is in the range of about 0.005 inches to about 0.025 inches…”) (see tapering of lumen 36 in FIG. 3); and
at least a portion of the distal section having coils (member 38).
Regarding Claim 23, Parins discloses guidewire of claim 22, wherein the coils have a rectangular cross- section (outlined in annotated FIG. 3, below).
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Regarding Claim 24, Parins discloses the guidewire of claim 22, wherein the proximal section is longer than the distal section (demonstrated in annotated FIG. 3, below).
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Regarding Claim 25, Parins discloses guidewire of claim 22, wherein the distal section is more flexible than the proximal section (pg. 10, ll. 11-16 “In some embodiments, the material used to construct the proximal portion 22 can be relatively stiff for pushability and torqueability, and the material used to construct the distal portion 18 can be relatively flexible by comparison for better lateral trackability and steerability. For example, the proximal portion 22 can be formed of stainless steel wire or ribbon, and the distal portion 18 can be formed of a super elastic or linear elastic alloy, for example a nickel-titanium alloy wire or ribbon.”).
Regarding Claim 26, Parins discloses the guidewire of claim 22, wherein the proximal section has a length in a range from 3.94 inches to 70.87 inches (10.01 centimeters to 180.01 centimeters) and the distal section has a length in range from 0.63 inches to 3.15 inches (0.63 centimeters to 8 centimeters) (pg. 11, ll. 5-7 “In some example embodiments, the proximal portion 22 can have a length in the range of about 20 to about 300 centimeters and distal portion 18 can have a length in the range of about 3 to about 50 centimeters.”).
Regarding Claim 27, Parins discloses the guidewire of claim 22, wherein the proximal section is between 3.94 inches and 118 inches (10.01 centimeters and 299.72 centimeters) and the distal section is between 0.118 inches and 3.15 inches (0.299 centimeters and 8.001 centimeters) (pg. 11, ll. 5-7 “In some example embodiments, the proximal portion 22 can have a length in the range of about 20 to about 300 centimeters and distal portion 18 can have a length in the range of about 3 to about 50 centimeters.”).
Regarding Claim 28, Parins discloses the guidewire of claim 22, wherein the first inner diameter is between 0.010 inches and 0.036 inches (pg. 12, ll. 4-6 “…the first tapered portion 48 can have a diameter that is in the range from about 0.009 inches to about 0.035 inches at a proximal end 56 to a diameter…”).
Regarding Claim 29, Parins discloses the guidewire of claim 28, wherein the proximal section has an outer diameter between 0.012 inches and 0.038 inches and the distal section has an outer diameter between 0.008 inches and 0.036 inches (pg. 12, ll. 4-13).
Regarding Claim 30, Parins discloses the guidewire of claim 29, wherein the proximal section and the distal section have a uniform outer diameter after an outer surface of the proximal section and the distal section is removed (The patentability of a product-by-process claim is determined based on the product itself, even though claimed in terms of the process by which it is made, in this case, since the proximal and distal sections have a uniform outer diameter, the claim limitations are disclosed by Parins).
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 SEAN PATRICK DOUGHERTY whose telephone number is (571)270-5044. The examiner can normally be reached 8am-5pm (Pacific Time).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jacqueline Cheng can be reached at (571)272-5596. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SEAN P DOUGHERTY/Primary Examiner, Art Unit 3791