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 filed December 10, 2025 have been fully considered but they are not persuasive in view of the rejection set forth below addressing the amendments to the claims.
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, 2, 6-13, 14, are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Groothuis et al (2005/0096691).
Regarding claim 1, Groothuis et al (US 2005096691) discloses a device, comprising: a first tubular member (104, fig 1-2, paragraph 0037); and a radially expandable (expandable filter 108, figure 1, 3, paragraph 0043) feature having one or more metal wires (filter 108, paragraph 0043) disposed around the first tubular member, the radially expandable feature configured to be selectively expanded from a first configuration (collapsed configuration) to a second configuration (expandable configuration) to allow blood within a blood vessel of a patient to flow around the first tubular member from a point upstream of the radially expandable feature, around and/or through the one or more radially expandable feature, and to a point downstream of the radially expandable feature (paragraph 0073), a distal end of the radially expandable feature in contact with at least one surface of at least one protrusion at a distal end of the first tubular member (see image below).
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Regarding claim 2, Groothuis discloses all of the limitations set forth in claim 1, wherein the one or more metal wires forms a cylindrical wire mesh around the first tubular member (figure 1-4).
Regarding claim 6, Groothuis discloses all of the limitations set forth in claim 2, wherein upon compression in the second configuration, the cylindrical wire mesh increases its outer diameter and decreases its axial length, and wherein in tension in the first configuration, the cylindrical wire mesh decreases its outer diameter and increases its axial length (paragraph 0046, filter 108 collapsed manipulating outer tube 102, figures 11-12).
Regarding claim 7, Groothuis discloses all of the limitations set forth in claim 1, wherein the one or more metal wires forms a stent around the first tubular member (paragraph 0065, apposition against body vessel, paragraph 0046).
Regarding claim 8, Groothuis discloses all of the limitations set forth in claim 1, wherein the one or more metal wires forms a wire basket around the first tubular member (figures 3-4, 19-20, 15-16, basket).
Regarding claim 9, Groothuis discloses all of the limitations set forth in claim 1, wherein the one or more metal wires are configured to extend radially outward away from the first tubular member to expand a portion of a blood vessel (paragraph 0046, apposition against body vessel, figures 3-4, 15-16, 19-20; the device would be capable of expanding a portion of an arbitrary blood vessel).
Regarding claim 10, Groothuis discloses all of the limitations set forth in claim 1, further comprising a second tubular member (outer tube 102, figure 1, 3, paragraph 0037), the first tubular member being slidably received by the second tubular member (push rod 104 being slidably disposed through outer tube 102, figure 3, paragraph 0041).
Regarding claim 11, Groothuis discloses all of the limitations set forth in claim 10, wherein the one or more metal wires are coupled to the first tubular member (filter distal end is fixedly attached to push rod, figure 3-4, paragraph 0045).
Regarding claim 12, Groothuis discloses all of the limitations set forth in claim 10, wherein the one or more metal wires are coupled to the second tubular member (filter proximal end 207 fixedly attached to outer tube, figure 3-4, paragraph 0045).
Regarding claim 13, Groothuis discloses all of the limitations set forth in claim 10, wherein a distal end of the second tubular member is configured to be in contact with a proximal end of the one or more metal wires such that compressing the one or more metal wires requires moving the second tubular member in a distal direction (paragraph 0046).
Regarding claim 14, Groothuis discloses all of the limitations set forth in claim 10, wherein a distal end of the second tubular member is configured to be in contact with a distal end of the one or more metal wires, such that compressing the one or more metal wires requires moving the second tubular member in a proximal direction (paragraph 0046).
Regarding claim 15, Groothuis discloses all of the limitations set forth in claim 10, wherein a distal end of the second tubular member is has one or more protrusions (213, stepped in diameter) the one or more protrusions having at least one surface configured to be in contact with a distal end of the one or more metal wires (all of the components of the device are connected to one another).
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.
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 3-5 are rejected under 35 U.S.C. 103 as being unpatentable over Groothuis et al (2005/0096691), as applied to claim 2 above, and further in view of Lashinski et al (US 20060020334).
Regarding claims 3-5, Groothuis discloses all of the limitations set forth in claim 2, wherein Groothuis further discloses the device is advanced and deployed through a patients vasculature for treatment of various vessels within the human body (paragraph 0036, 0037), but does not specifically disclose the cylindrical wire mesh, in a first configuration, has an outer diameter no more than 12 Fr, in a second configuration, has an outer diameter no less than 20 Fr, and configured to have an outer diameter of 7 Fr to 23 Fr. Lashinski et al (hereafter Lashinski) teaches it know was known in the art at the time of the invention for catheters and filters advanced and deployed through a patients vasculature to have a diameter of about 8-24 French (paragraph 0402). Therefore, it was well known in the art at the time of the invention to make the cylindrical wire mesh of a filter have an outer diameter no more than 12 Fr in a first collapsed configuration, and an outer diameter no less than 20 F in a second expanded configuration, such that the diameter of the filter is configured to have an outer diameter of 7 Fr to 23 Fr, as taught as known in the art at the time of the invention by Lashinski, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
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.
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/ANH T DANG/ Primary Examiner, Art Unit 3771