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 .
Election/Restrictions
Newly submitted claims 21-32 are directed to an invention that is independent or distinct from the invention originally claimed for the following reasons: these claims are drawn to the embodiment of Figures 7A and 7B, with applicant previously making an election without traverse of a different invention in the response filed October 8, 2025.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 21-32 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Information Disclosure Statement
The numerous references cited on the Information Disclosure Statements have been given a cursory review, similar to what would be expected of a classification search of the prior art. Should there be an references of particular relevance to the instant application claims, applicant is respectfully requested to identify such references for further consideration by the examiner.
Claim Rejections - 35 USC § 102
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, 3-6 and 8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Patel et al (2015/0297246).
Regarding claim 1, Patel et al provide an ablation electrode device comprising an electrode shaft (700 – Figure 36A, for example) and a metal tube (720 – Figure 36B) forming at least a portion of the shaft and having proximal and distal portions. The distal portion includes a plurality of cuts (721) to facilitate bending of the distal portion (para. [0243]). There is a first electrode (762 – Figure 36B) on a distal portion of the metal tube, an insulative spacer (not specifically labeled, but shown) and a second electrode (760) provided distally from the spacer (Figure 36B). There are two conductor (713,715) connected to the two electrodes that extend to a connector (para. [0059], for example).
Regarding claim 3, there is also a non-conductive jacket (840 – Figure 37B)disposed over a proximal portion of the tube, but not the electrodes. Regarding claim 4, the conductors (713,715) extend to the proximal portion of the tube for attachment to an energy source. Regarding claim 5, the proximal portion of the tube does not have cuts (see Figure 37C, for example). Regarding claim 6, the distal electrode is at the tip of the device (Figure 36B, for example).
Regarding claim 8, the Patel et al device with respect to claim 1 has been addressed previously and Patel et al provide a generator connected to the electrode (para. [0128] and [0274], for example).
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.
Claims 2 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Patel et al (‘246) in view of the teaching of Urbanski et al (2019/0239924).
The Patel et al device, as addressed above, fails to specifically disclose a spiral-patterned cut in the tube, or the use of radiopaque markers for locating the device.
Urbanski et al disclose another device comprising a metal tube having a distal electrode. In particular, Urbanski et al specifically disclose providing cuts (82) in the metal tube to provide flexibility for bending the device, and specifically teach the cuts may be in a spiral pattern (para. [0045], for example). Additionally, Urbanski et al teach that it is known to use the electrode as a radiopaque marker (para. [0030]) to facilitate imaging the device during insertion.
To have provided the Patel et al device with a spiral-patterned cut to facilitate bending of the device would have been an obvious design alternative for one of ordinary skill in the art at the time of the invention since Urbanski et al fairly teach it is known to use such a cut to afford flexibility to a metal tube in a similar device. To have further provided the Patel et al device with an electrode formed of a radiopaque material to allow for imaging during placement of the device would have been an obvious design consideration for one of ordinary skill in the art at the time of the invention since Urbanski et al fairly teach it is known to provide an electrode with a radiopaque material.
Response to Arguments
Applicant's arguments filed January 14, 2026 have been fully considered but they are not persuasive. Applicant asserts that the Patel electrode is a separate component from the tube and Patel therefore cannot anticipate the claims. While the examiner agrees that the Patel electrode is a separate component, it is provided immediately adjacent the distal portion of the metal tube having the cuts to facilitate bending of the tube. The claim recites “wherein at least part of the distal portion of the metal tube comprises a first electrode”. This language does not require the metal tube itself to be integrally formed with an electrode. Rather, the open-ended transition phrase “comprises” allows for additional components. The examiner maintains that the broadest reasonable interpretation of the claims language would allow for an electrode to be provided at the distal portion of the metal tube, and does not require the electrode to specifically be formed by the metal tube as argued by applicant.
Applicant has not substantively argued any of the dependent claims, and the rejection of those claims is deemed to remain tenable.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL PEFFLEY whose telephone number is (571)272-4770. The examiner can normally be reached Mon-Fri 8 am-5 pm.
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, Linda Dvorak can be reached at (571) 272-4764. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL F PEFFLEY/Primary Examiner, Art Unit 3794
/M.F.P/March 26, 2026