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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 03/20/2026 has been entered.
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 with respect to claim(s) 39-47 and 71-81 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.
Conclusion
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
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