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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 February 5th, 2026, has been entered.
Response to Amendment
The claims filed on September 5th, 2025, have been entered. Claims 3-8 and 10-17 remain pending in the Application. Claim 9 has been canceled by the Applicant. The specification amendment overcomes the specification objection. The claim amendments overcome the double patenting rejection.
Response to Arguments
Applicant's arguments filed September 5th, 2025, have been fully considered but they are not persuasive.
Applicant argues that the amendment to change “second conduit” to “additional conduit” in the claims overcomes the 112(a) rejection to the limitations of canceled claim 9 by differentiating between the second conduit discussed in the Specification and the conduit as claimed. Examiner respectfully disagrees. Applicant points to [0023] as support to interpret the coil 707 as the additional conduit. However, [0023] only states that the term “hypotube” may be considered broadly as a conduit, and does not mention the coil being considered either a conduit or a hypotube. The only other mentions of a hypotube are in [0030-32], and none of these indicate that the coil is a conduit (and instead teach away, where 506 is a coil while 508 is a conduit). Since there is no support in the Specification for the coil 707 being considered a conduit, there is no support for the amended claim 3, and the claim therefore contains new matter. If Applicant were to amend claim 3 to change “the additional conduit” in lines 14, 16, and 17-18 to “a coil” and afterwards “the coil” (to ensure proper antecedent basis), then that amendment would have support in [0132], which describes the coil providing the non-deployed and deployed configuration limitations, and does not require the coil to be the conduit.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 3-8 and 10-17 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. [0132] recites "in the non-deployed configuration, the proximal projection does not directly contact the coil. In the deployed configuration the proximal projection directly contacts the coil." The coil is 707 while the additional conduit is 709 [0121]. In FIG. 7E (the non-deployed configuration), 724 is contacting the second conduit 709 when it is not contacting the coil 707, and in FIG. 7G (the deployed configuration), 724 is still contacting the second conduit 709 and the coil 707. While Applicant asserts that coil 707 can be the conduit, as discussed above in the Response to Arguments, coil 707 cannot be considered the additional conduit, and the second conduit 709 is the only disclosed structure that could be the additional conduit. Therefore, the claim language in claim 3 of “in a non-deployed configuration the proximal projection does not directly contact the second conduit; in a deployed configuration the proximal projection directly contacts the second conduit” is new matter. Claims 4-8 and 10-17 are rejected for their dependance on claim 3. Examiner suggests amending claim 3 to change the “additional conduit” in lines 14, 16, and 18 to “coil” because the Specification provides support for those limitations relating to the coil in [0132].
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES RYAN MCGINNITY whose telephone number is (571)272-0573. The examiner can normally be reached M-Th 8 am-5:30 pm.
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/JRM/Examiner, Art Unit 3771
/KATHLEEN S HOLWERDA/Primary Examiner, Art Unit 3771