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 .
This action is in response to the Election/Restriction response filed on 08/28/2025. Claims 1-19 are pending. Claims 1, 8, 9, 13, and 14 are independent. Claims 14-19 are withdrawn.
Election/Restrictions
Applicant's election with traverse of Group I (claims 1-13) in the reply filed on 08/28/2025 is acknowledged. The traversal is on the ground(s) that art applicable to if the Examiner finds the delivery system of Group I in the art, there is more than likely a disclosure of a method of manufacturing it as described in Group II. This is not found persuasive because there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply:(a) the inventions have acquired a separate status in the art in view of their different classification; (b) the inventions have acquired a separate status in the art due to their recognized divergent subject matter; (c) the inventions require a different field of search (for example, searching different groups/subgroups or electronic resources, or employing different search queries); (d) the prior art applicable to one invention would not likely be applicable to another invention. The product as claimed can be made by another and materially different process, such that the electrolytically detachable intravascular delivery system can be made by dipping the proximal and/or distal coils into an electrical insulation material or spraying an electrical insulation material on the proximal and/or distal coils to form a covering on the proximal and/or distal coils, and/or sliding the core wire in a distal direction through the distal coil. Therefore, the prior art applicable to Group I may not be applicable to Group II.
The requirement is still deemed proper and is therefore made FINAL.
Claim Objections
Claim 7 is objected to because of the following informalities:
a) Claim 7, the limitation “the first and second polyethylene terephthalate materials are identical or different” should be amended to --the first and second polyethylene terephthalate materials are either identical or different--.
Appropriate correction is required.
Applicant is advised that should claim 8 be found allowable, claim 13 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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) 8 and 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wallace (US Pub. No.: 2002/0002382) in view of Ramzipoor (US Pub. No.: 2007/0073334) with evidence from Sharrow et al. (US Pub. No.: 2004/0167437)
Regarding claims 8 and 13, Wallace discloses an electrolytically detachable intravascular delivery system comprising: a core wire (310, Fig. 5D), the core wire having a proximal end, an opposite distal end and an outer surface extending therebetween (Fig. 5D and Paras. [0079]-[0081]) ; a distal coil (320, Fig. 5D) having a proximal end and an opposite distal end with an outer surface extending therebetween (Fig. 5D), the distal coil disposed about the outer surface of the coil wire (Fig. 5D); a distal adhesive coating (Paras. [0053]-[0055], the exterior covering formed by polymer fibers, similar to 108 as shown in Fig. 1G or 1H, is attached to the coil by adhesive, Para. [0055]) on at least a portion of the outer surface of the distal coil; a distal electrical insulation covering (the exterior covering formed by wrapping of polymer fibers similar to 108, Fig. 5D. Also see Fig. 1G and 1G) made of a first polyethylene terephthalate material (Para. [0052]) adhered to the outer surface of the distal coil via the distal adhesive coating disposed therebetween (Paras. [0053]-[0055]); the distal electrical insulation covering having a proximal end and an opposite distal end (Fig. 5D, also see Fig. 1G or 1H); the proximal end of the distal electrical insulation covering extending in an axial direction proximally of the proximal end of the distal coil and the distal end of the distal electrical insulation covering extending in the axial direction distally of the distal end of the distal coil (Fig. 5D, also see Fig. 1G or 1H); wherein the outer surface of the core wire has an exposed section representing a detachment zone (the exposed region of 310, Fig. 5D and Para. [0080]) that is located in the axial direction proximally of the proximal end of the distal electrical insulation covering. However, Wallace does not disclose that the core wire is made of a nickel-titanium-cobalt alloy.
Ramzipoor teaches, in the same field of endeavor (an electrolytically detachable intravascular delivery system), a core wire (120, Fig. 3) made of a nickel-titanium-cobalt alloy (Para. [0034], e.g. MP35-N. As disclosed in Para. [0033] of Sharrow, MP35-N is a nickel-titanium-cobalt alloy).
Before the effectively filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to modify the core wire of Wallace to be made of a nickel-titanium-cobalt alloy as taught by Ramzipoor, since it has been held to be within the general skill of a worker in the art to select a know material on the basis of its suitability. See MPEP 2144.07
Allowable Subject Matter
Claims 1-6 and 9-12 are allowed. The following is an examiner’s statement of reasons for allowance on claims 1-6 and 9-12: the prior art fails to teach or render obvious an electrolytically detachable intravascular delivery system comprising, inter alia, the proximal end of the proximal electrical insulation covering extending in the axial direction proximally of the proximal end of the proximal coil and the distal end of the proximal electrical insulation covering being flush with the distal end of the proximal coil; and a distal glue joint having a distal end and an opposite proximal end abutting in direct physical contact with both the distal end of the proximal coil and the distal end of the proximal electrical insulation covering; wherein the outer surface of the core wire has an exposed section representing a detachment zone that is located in the axial direction distally of the distal end of the glue joint.
Claim 7 is objected, but would be allowable if rewritten to overcome the claim objection stated above.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US 20040002733 A1 Teoh, Clifford discloses an electrolytically detachable intravascular delivery system comprising a proximal coil, a distal coil, and a detachment zone.
US 20040034378 A1 Monstadt, Hermann et al. discloses an electrolytically detachable intravascular delivery system comprising a core wire, a proximal coil, a distal coil, and a detachment zone.
US 20060135986 A1 Wallace; Michael P. et al. discloses an electrolytically detachable intravascular delivery system comprising a core wire, a proximal coil covered by an insulation sleeve, a distal coil, and a detachment zone.
US 20120209310 A1 CHEN; Hancun et al. discloses an electrolytically detachable intravascular delivery system comprising a core wire, a proximal coil, a distal coil, and a detachment zone.
US 5891128 A Gia; Son et al. discloses an electrolytically detachable intravascular delivery system comprising a core wire, a proximal coil, a distal coil, and a detachment zone.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JING RUI OU whose telephone number is (571)270-5036. The examiner can normally be reached M-F 9:00am -5:00pm.
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, Jackie Ho can be reached at (571) 272-4696. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JING RUI OU/Primary Examiner, Art Unit 3771