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 2/4/26 have been fully considered however upon further considerations they are not persuasive as will be further explained below.
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required: There is no mention in the specification for “first material”; “second material”; “third material”; “prevents a magnetic field from reach the second material”.
Claim Rejections - 35 USC § 112
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.
Claims 1, 5-19 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.
The terms “first material, second material, third material” in claim 1, and 5-20 are relative terms which renders the claim indefinite. These terms are 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. In particular the specification does not disclose what materials make up the “first, second or third materials” rather only list a group of material (see e.g. [0040-0044] which list several materials but do not designation which are first, second or third materials).
7. The phrase “prevents a magnetic field from reaching the second material” in claim 1 is a relative phrase which renders the claim indefinite. This phrase 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. In particular it is unclear what material/component is acting to “prevent” the magnetic field from reach a second material (further noting that the second material is not disclosed).
Claim Rejections - 35 USC § 103
8. 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.
9. Claim(s) 1-5 are rejected under 35 U.S.C. 103 as being unpatentable over Kassab et al. 2010/0318015.
Kassab et al. discloses the invention as claimed comprising: An apparatus to wrap a stent (see [0023, 0076-0077] which discloses a stent cover 118 which equates to the term "wrap" and noting that the term "cover" is utilized in the current specification), comprising: a first material and a second material; and wherein the second material has magnetic properties ([0076] states that the flaps of the cover may comprise PTFE or any other suitable material and a magnet thus meeting the limitation of a first and second material). However Kassab et al. does not use the phrase “…a third material, wherein the third material has properties that prevents a magnetic field
from reaching the second material…”.
As best interpreted (see 112 rejection supra), it would have been obvious to one having ordinary skill in the art to provide a third material with properties capable of preventing a magnetic field from reaching a second material because Kassab et al. states that any other materials may be utilized and by choosing any material in combination could prevent a magnetic field. Biocompatible materials that prevent, block, or redirect magnetic fields may include titanium and nitinol which are known to pass through magnetic fields without causing interference.
Allowable Subject Matter
10. Claims 11-19 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
11. Claim 20 is allowed.
Conclusion
12. Any inquiry concerning this communication or earlier communications from the
examiner should be directed to Suzette Gherbi whose telephone number is (571)272-
4751. The examiner can normally be reached on Monday-Friday 7:00am-3:00pm.
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:/Awww.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's
supervisor, Melanie Tyson can be reached on 571-272-9062. The fax phone number for
the organization where this application or proceeding is assigned is 571-273-8300.
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additional questions, contact the Electronic Business Center (EBC) at 866-217-9197.
/SUZETTE J GHERBI/Primary Examiner, Art Unit 3774 May 19, 2026
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