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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 39-42 and 46 is/are rejected under 35 U.S.C. 103 as being unpatentable over Halpert (US 2017/0333153) in view of Eichler et al. (US 2012/0130230).
Halpert discloses With respect to claims 28 and 39, Halpert discloses a surgical device (10) for marking a biological tissue, the surgical device comprising: an elongated shaft (Figs. 2-4); a tip disposed distally on the elongated shaft (14; 28; Figs. 2-4), the tip comprising an absorbent material ([0016-0017]); and a sheath slidably disposed on the shaft, the sheath being longitudinally movable between an extended configuration and a retracted configuration; wherein in the extended configuration, the sheath at least partially covers a distal portion of the shaft and the tip; and wherein, in the retracted configuration, at least a portion of the tip is exposed ([0028]). Halpert does not teach wherein the elongated shaft includes an impedance sensor proximate the distal end. However, Eichler et al. teaches in the same field of endeavor wherein the tip includes an impedance sensor such that the sensors are visible when exposed to a field of ionizing radiation (e.g., x-rays; [0005]). Therefore, it would have been obvious to one of ordinary skill in the art to have provided Halpert with an impedance sensor as taught by Eichler et al. such that the position of the tip is visible under radiation ([0005]).
With respect to claims 40-42, and 46, Halpert discloses wherein the tip is loaded with a marking substance comprises at least one of an ink or dye ([0016-0017]).
Claim(s) 43-45, and 47 is/are rejected under 35 U.S.C. 103 as being unpatentable over Halpert (US 2017/0333153) in view of Eichler et al. (US 2012/0130230) as applied to claim 39, further in view of Falahee (US 2004/0127824).
Halpert discloses the subject matter substantially as claimed except for wherein the marking substance comprises a radionuclide, radiopaque substance, a magnetic substance, or in a dry state. However, Falahee teaches in the same field of endeavor wherein the marking substance comprises a radionuclide, radiopaque substance, a magnetic substance, or in a dry state ([0006]; [0009]). Therefore, it would have been obvious to one of ordinary skill in the art to have substituted the marking substance as taught by Falahee as it is well known in the art to be biocompatible and non-toxic ([0006]).
Claim(s) 71-74 and 78 is/are rejected under 35 U.S.C. 103 as being unpatentable over Halpert (US 2017/0333153) in view of Zimet-Rubner et al. (US 2014/0119645).
Halpert discloses With respect to claims 28 and 39, Halpert discloses a surgical device (10) for marking a biological tissue, the surgical device comprising: an elongated shaft (Figs. 2-4); a tip disposed distally on the elongated shaft (14; 28; Figs. 2-4), the tip comprising an absorbent material ([0016-0017]); and a sheath slidably disposed on the shaft, the sheath being longitudinally movable between an extended configuration and a retracted configuration; wherein in the extended configuration, the sheath at least partially covers a distal portion of the shaft and the tip; and wherein, in the retracted configuration, at least a portion of the tip is exposed ([0028]). Halpert does not teach wherein the elongated shaft includes a suction port proximate the distal end. However, Zimet-Rubner et al. teaches in the same field of endeavor wherein the end includes suction device for removing the marking material ([0057]). Therefore, it would have been obvious to one of ordinary skill in the art to have provided Halpert with a suction device as taught by Zimet-Rubner et al. in order to remove the marker material ([0057]).
With respect to claims 72-74, and 78, Halpert discloses wherein the tip is loaded with a marking substance comprises at least one of an ink or dye ([0016-0017]).
Claim(s) 75-77, and 79 is/are rejected under 35 U.S.C. 103 as being unpatentable over Halpert (US 2017/0333153) in view of Zimet-Rubner et al. (US 2014/0119645) as applied to claim 71, further in view of Falahee (US 2004/0127824).
Halpert discloses the subject matter substantially as claimed except for wherein the marking substance comprises a radionuclide, radiopaque substance, a magnetic substance, or in a dry state. However, Falahee teaches in the same field of endeavor wherein the marking substance comprises a radionuclide, radiopaque substance, a magnetic substance, or in a dry state ([0006]; [0009]). Therefore, it would have been obvious to one of ordinary skill in the art to have substituted the marking substance as taught by Falahee as it is well known in the art to be biocompatible and non-toxic ([0006]).
Claim(s) 80 is/are rejected under 35 U.S.C. 103 as being unpatentable over Halpert (US 2017/0333153) in view of Zimet-Rubner et al. (US 2014/0119645) as applied to claim 71, further in view of Griffin (US 6,972,022).
Halpert discloses the subject matter substantially as claimed except for wherein the elongated shaft includes a magnet proximate the distal end. However, Griffin teaches in the same field of endeavor wherein the marker body includes a magnet to prevent the marker from sliding off a magnetic drop or other magnetic surface (col. 2, lines 19-25). Therefore, it would have been obvious to one of ordinary skill in the art to have provided Halpert with a magnet as taught by Griffin in order to allow attachment to magnetic surfaces and prevent it from sliding off (col. 2, lines 19-25).
Claim(s) 81 is/are rejected under 35 U.S.C. 103 as being unpatentable over Halpert (US 2017/0333153) in view of Eichler et al. (US 2012/0130230) as applied to claim 39, further in view of Griffin (US 6,972,022).
Halpert discloses the subject matter substantially as claimed except for wherein the elongated shaft includes a magnet proximate the distal end. However, Griffin teaches in the same field of endeavor wherein the marker body includes a magnet to prevent the marker from sliding off a magnetic drop or other magnetic surface (col. 2, lines 19-25). Therefore, it would have been obvious to one of ordinary skill in the art to have provided Halpert with a magnet as taught by Griffin in order to allow attachment to magnetic surfaces and prevent it from sliding off (col. 2, lines 19-25).
Response to Arguments
Applicant's arguments filed 6/23/2026 have been fully considered but they are not persuasive.
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, Halpert discloses a surgical device for marking a biological tissue used during an imaging procedure (Fig. 5; x-ray). Eichler et al. teaches in the same field of endeavor impedance sensor used for position sensing during an imaging procedure (e.g. x-ray; [0005]). Therefore, applicant’s arguments with respect to the references teaching away have been considered but they are not persuasive.
In response to applicant's argument that Zimet-Rubner et al. is nonanalogous art, it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, Halpert discloses a surgical device for marking a biological tissue comprising a marker and marking substance (e.g., ink). Zimet-Rubner et al. teaches a marking device comprising a marker and marking substance (e.g., ink; [0057]). Therefore, Zimet-Rubner et al. is interpreted to be in the same field of endeavor.
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, Halpert discloses a surgical device for marking a biological tissue comprising a marker and marking substance (e.g., ink). Zimet-Rubner et al. discloses, in the same field of endeavor, a suction device for removing the marking substance. Therefore, it would have been obvious to one of ordinary skill in the art to have provided Halpert, which discloses a marker and marking substance, with a suction device as taught by Zimet-Rubner et al., which also discloses a marker and marking substance, in order to remove the marking substance from the surface (e.g., excess marking substance; or clean or remove the material from the surface; [0057]).
Applicant argues the Zimet-Rubner et al. does not teach suction to remove a marking material. However, the Examiner respectfully disagrees with the applicant. Zimet-Rubner et al. discloses a coloring substance (e.g., makeup, paint, ink) and removing the coloring substance from the surface ([0050]). Therefore, applicant’s arguments that Zimet-Rubner et al. does not teach a marking material nor removing a marking material is not persuasive.
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Applicant's arguments fail to comply with 37 CFR 1.111(b) because they amount to a general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references.
Conclusion
THIS ACTION IS MADE FINAL. 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 PETER LUONG whose telephone number is (571)270-1609. The examiner can normally be reached M-F 9-6.
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, Anhtuan T Nguyen can be reached at (571)272-4963. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PETER LUONG/ Primary Examiner, Art Unit 3797
