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 .
Election/Restrictions
This application contains claims directed to the following patentably distinct species: Species A (electroactive polymer actuator), Species B (pressure actuator), and Species C (mechanical actuator). The species are independent or distinct because they recite mutually exclusive and differently classified actuators. In addition, these species are not obvious variants of each other based on the current record.
Applicant is required under 35 U.S.C. 121 to elect a single disclosed species, or a single grouping of patentably indistinct species, for prosecution on the merits to which the claims shall be restricted if no generic claim is finally held to be allowable. Currently, no claims are known to be generic.
There is a serious search and/or examination burden for the patentably distinct species as set forth above because at least the following reason(s) apply: the separate classification of the various actuators and the mutually exclusive nature of the claims thereto, there would be a significant burden involved in examination of all claims.
Applicant is advised that the reply to this requirement to be complete must include (i) an election of a species to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected species or grouping of patentably indistinct species, including any claims subsequently added. An argument that a claim is allowable or that all claims are generic is considered nonresponsive unless accompanied by an election.
The election may be made with or without traverse. To preserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the election of species requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable on the elected species or grouping of patentably indistinct species.
Should applicant traverse on the ground that the species, or groupings of patentably indistinct species from which election is required, are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing them 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 species 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 species.
Upon the allowance of a generic claim, applicant will be entitled to consideration of claims to additional species which depend from or otherwise require all the limitations of an allowable generic claim as provided by 37 CFR 1.141.
During a telephone conversation with D. Burse on 9 June 2026 a provisional election was made without traverse to prosecute the invention of Species A, claims 1-5 and 11-20. Affirmation of this election must be made by applicant in replying to this Office action. Claims 6-10 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
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.
Claim(s) 1-5 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US Pre-Grant Publication 2007/0250036 to Volk et al. (Volk hereinafter).
Regarding claim 1, Volk teaches a catheter system including an elongated, flexible tubular member (30) having an anchoring portion with an intrinsic flexibility (see e.g. paragraph 11), actuators (20) disposed on the tubular member and having non-actuated and actuated states (paragraph 72) wherein the actuated state modifies the shape of the anchoring portion to configure it to anchor in a body lumen (the examiner notes that a bend will anchor to a substantially straight body lumen).
Regarding claim 2, Volk teaches electroactive polymers (EAP 20) which are actuated by control signals.
Regarding claim 3, Volk teaches a controller (microprocessor, paragraph 134) operably coupled to the plurality of actuators to selectively transmit control signals.
Regarding claim 4, Volk teaches conductors (electrodes) which are connected to the controller and to respective EAP actuators (20).
Regarding claim 5, Volk teaches respective voltages (paragraph 125).
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.
Claim(s) 15-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Volk.
Regarding claim 15, Volk teaches an elongated, flexible tubular member (30) and a spiral/helical actuator (20, see Fig. 11 and paragraph 103). Volk does not specifically teaches making circumferential contact to stabilize the tubular member, but does teach causing curvature. Given the spiral shape of the actuator, this will result in the claimed shape. Volk specifically teaches using this to withdraw the catheter (30, paragraph 104), but it would have been equally obvious to do the opposite, that is to actuate the actuator so as to anchor the catheter while performing the operation from which Volk teaches withdrawal. One of ordinary skill in the art would have found it obvious before the effective filing date of the application to anchor the catheter of Volk with the actuator as implicitly taught by Volk.
Regarding claim 16, Volk teaches that the spiral actuator may extend the entire length of the catheter, which leads to the helical shape being configured to make circumferential contact with a body lumen along any desired portion of its length.
Regarding claim 17, Volk teaches electroactive polymers (EAP 20) which are actuated by control signals.
Regarding claim 18, Volk teaches a controller (microprocessor, paragraph 134) operably coupled to the plurality of actuators to selectively transmit control signals.
Regarding claim 19, Volk teaches conductors (electrodes) which are connected to the controller and to respective EAP actuators (20).
Regarding claim 20, Volk teaches respective voltages (paragraph 125).
Claim(s) 11-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Volk in view of US Pre-Grant Publication 2010/0191175 to Couvillon (Couvillon).
Regarding claim 11, Volk teaches an elongated, flexible tubular member (30) with a plurality of electroactive polymer actuators (30). Volk does not teach dynamic cycling between sinusoidal shapes. Couvillon teaches that catheter actuators may have two opposed bending states (Fig. 10) and may take on a sinusoidal shape (Fig. 9) in order to establish the overall shape (paragraph 85). One of ordinary skill in the art would have found it obvious before the effective filing date of the application to bend the catheter of Volk into a sinusoidal shape as taught by Couvillon in order to establish the overall shape for a given application. Thus provided, opposing activation or deactivation according to the diagram of Fig. 10 of Couvillon would result in alternating sinusoidal shapes spaced by 180 degrees.
Regarding claim 12, Volk teaches amplitude and frequency voltage which changes the shape of the actuator, which will at least temporarily reduce the static friction of the tubular member in use.
Allowable Subject Matter
Claims 13-14 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: the limitations of a first and second set of alternative electroactive polymer actuators operating as in claim 11 to create out of phase sinusoidal shapes in a catheter are not shown in or fairly suggested by the prior art of record. While Couvillon teaches a sinusoidal shape, it does not teach the alternating actuators for creating the claimed shapes.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PHILIP E STIMPERT whose telephone number is (571)270-1890. The examiner can normally be reached Monday-Friday, 8a-4p.
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, Chelsea Stinson can be reached at 571-270-1744. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PHILIP E STIMPERT/Primary Examiner, Art Unit 3783 5 August 2026
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