DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 January 2, 2026 has been entered.
This Office action is responsive to an amendment filed January 2, 2026. Claims 1-20 are pending. Claims 1 & 19 have been amended.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-9 is/are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of U.S. Patent No. 11,896,348 in view of Saadat et al. (US 6,939,313) (“Saadat” hereinafter).
The patent teaches all the limitations of the claims except for a temperature probe comprising an elongate element having a substantially linear portion.
However, Saadat teaches that it is known to provide a temperature probe comprising an elongate element having a substantially linear portion (616, 623, 639) and a nonlinear (see at least figs. 10, 12, 15B).
Therefore, it would have been obvious to one of ordinary skill in the art at the time Applicant’s invention was filed to provide the probe of the patent comprising an elongate element having a substantially linear portion as taught by Saadat in order to provide probe that can be delivered through a catheter and moved longitudinally and rotated, continuously, or continually, to sense the temperature of the hollow organ at multiple locations.
Claims 10-18 is/are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 10-18 of U.S. Patent No. 11,896,348.
It is clear that all the elements of claims 10-18 are to be found in claims 10-18. The difference between claims 10-18 of the application and claims 10-18 of the patent lies in the fact that the patent claim includes many more elements and is thus much more specific. Thus the invention of claims 10-18 of the patent is in effect a "species" of the "generic" invention of claims 10-18. It has been held that the generic invention is "anticipated" by the "species". See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Since claims 10-18 is anticipated by claims 10-18 of the patent, it is not patentably distinct therefrom.
Claims 19-20 is/are rejected on the ground of nonstatutory double patenting as being unpatentable over claims of U.S. Patent No. 11,896,348 in view of Vilims (US 2008/0009927).
The patent discloses all the limitations of claims 19-20 except for a plurality of electrodes consisting of temperature sensing electrodes.
However, Vilims teaches that it is known to provide an apparatus for monitoring a temperature across an area of an interior surface of an organ of a subject being treated with heat (see at least par 0007, 0013 & 0136), comprising:
a substantially two-dimensional arrangement having a forked configuration with two or more substantially parallel arms (94, 96; 120, 122, 124; 212, 214, 216) (see at least par 0146-0147); and
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a plurality of electrodes consisting of temperature sensing electrodes (i.e., each of the electrodes may have its own temperature-sensing element, such as a thermocouple so that each of the electrodes may be independently controlled to provide the desired electrical field or thermal energy, see par 0022 & 0158) arranged across the substantially two-dimensional arrangement, at least one temperature sensing electrode (i.e., each of the electrodes may have its own temperature-sensing element, such as a thermocouple so that each of the electrodes may be independently controlled to provide the desired electrical field or thermal energy, see par 0022 & 0158) being carried by each arm of the two or more substantially parallel arms (94, 96; 120, 122, 124; 212, 214, 216) (see at least par 0022 & 0158), at least one arm of the two or more substantially parallel arms (94, 96; 120, 122, 124; 212, 214, 216) carrying a plurality of temperature sensing electrodes (i.e., each of the electrodes may have its own temperature-sensing element, such as a thermocouple so that each of the electrodes may be independently controlled to provide the desired electrical field or thermal energy, see par 0022 & 0158) (see at least par 0022, 0146, & 0158).
Therefore, it would have been obvious Therefore, it would have been obvious to one of ordinary skill in the art at the time Applicant’s invention was filed to provide the apparatus of the patent a plurality of electrodes consisting of temperature sensing electrodes as taught by Vilims since such a modification would amount to applying a known technique (i.e., as taught by Vilims) to a known device (i.e., as taught by the patent) ready for improvement to achieve a predictable result such as providing each of the electrodes with its own temperature-sensing element, such as a thermocouple so that each of the electrodes may be independently controlled to provide the desired electrical field or thermal energy ( see par 0022 & 0158 of Vilims)--See KSR, 550 U.S. at___, 82 USPQ2d at 1396 (See MPEP § 214 3 for a discussion of the rationale(s) listed above. See also MPEP § 2144 - §2144.09 for additional guidance regarding support for obviousness determinations).
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 19-20 is/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.
In regards to claim 19, at line 6, the claim requires the limitations “a plurality of electrodes consisting of temperature sensing electrodes.” However, the original specification fails to teach an electrode, let alone, a plurality of electrodes or a plurality of electrodes consisting of temperature sensing electrodes. Instead, the original specification merely discloses a plurality of temperature sensors. Instead, the specification describes a lead or wire that does not act as an electrode and merely carries signals from the plurality of temperature sensors 30 (see at least par 0034, 0038-0039 & 0041 & 0056).
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.
Claim 18 is 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.
At line 1, the limitation “the width” lacks sufficient antecedent basis.
Claim Rejections - 35 USC § 102
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 19-20 is/are rejected under pre-AIA 35 U.S.C. 102(b) as being anticipated by Vilims (US 2008/0009927).
In regards to claim 19, Vilims discloses an apparatus for monitoring a temperature across an area of an interior surface of an organ of a subject being treated with heat (see at least par 0007, 0013 & 0136), comprising:
a substantially two-dimensional arrangement having a forked configuration with two or more substantially parallel arms (94, 96; 120, 122, 124; 212, 214, 216) (see at least par 0146-0147); and
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a plurality of electrodes consisting of temperature sensing electrodes (i.e., each of the electrodes may have its own temperature-sensing element, such as a thermocouple so that each of the electrodes may be independently controlled to provide the desired electrical field or thermal energy, see par 0022 & 0158) arranged across the substantially two-dimensional arrangement, at least one temperature sensing electrode (i.e., each of the electrodes may have its own temperature-sensing element, such as a thermocouple so that each of the electrodes may be independently controlled to provide the desired electrical field or thermal energy, see par 0022 & 0158) being carried by each arm of the two or more substantially parallel arms (94, 96; 120, 122, 124; 212, 214, 216) (see at least par 0022 & 0158), at least one arm of the two or more substantially parallel arms (94, 96; 120, 122, 124; 212, 214, 216) carrying a plurality of temperature sensing electrodes (i.e., each of the electrodes may have its own temperature-sensing element, such as a thermocouple so that each of the electrodes may be independently controlled to provide the desired electrical field or thermal energy, see par 0022 & 0158) (see at least par 0022, 0146 & 0158).
In regards to claim 20, Villims discloses the apparatus of claim 19, wherein the forked configuration includes three substantially parallel arms (94, 96; 120, 122, 124; 212, 214, 216), each arm of the three substantially parallel arms (94, 96; 120, 122, 124; 212, 214, 216) carrying a plurality at least two temperature sensing electrodes (i.e., each of the electrodes may have its own temperature-sensing element, such as a thermocouple so that each of the electrodes may be independently controlled to provide the desired electrical field or thermal energy, see par 0022 & 0158) (see at least figs. 33 & 54).
Response to Arguments
Applicant's arguments filed January 2, 2026 have been fully considered but they are not persuasive. Applicant contends that the prior art of Vilims fails to teach an electrode that consists of a temperature sensing electrode. The Office respectfully traverses. For example, Vilims’ admitted teachings of an electrode that include that “may have its own temperature sensing element” clearly reads on the language of an electrode consisting of a temperature sensing element since Vilims clearly teaches that the temperature sensing element is part of the electrode, e.g., the electrode has a temperature sensing element.
See cited par 00158 of Vilims clearly reads as follows:
“[0158] For each embodiment discussed above, it should be understood that each of the active electrical conductive areas or electrodes may be independently connected to a source of power such that each of the electrodes may be selectively energized or de-energized to provide the desired ablative pattern or electrical field. It is also desirable to provide a temperature-sensing element at each of the electrode locations, such as the illustrated thermocouples. Although thermocouples are shown, it shall be understood that other temperature elements may be used to sense or otherwise measure temperature such as RTDs, and others. With respect to control of each of the active electrical areas, it shall be understood that a controller can be used to measure temperature/energy applied at each of the conductive locations, as well as providing a visual indication as to how much energy has been applied over a period of time.” [Emphasis added] See also cited par 0022 of Vilims.
Therefore, Vilims clearly anticipates temperature-sensing elements at each electrode in the embodiments of figs. 30 & 33 such that each arm carries at least one temperature sensor and at least one arm carries a plurality of temperature sensors associated with each electrode 98 thereof.
In view of the foregoing, the rejections over Vilims are maintained.
Conclusion
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/RENE T TOWA/ Primary Examiner, Art Unit 3791