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 .
Response to Arguments
Applicant’s amendment and arguments filed 6/9/2026, with respect to the rejections as set forth in the Non-Final Rejection dated 3/10/2026 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Sobue et al. (2009/0012459).
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they include the following reference character(s) not mentioned in the description: Fig. 33 contains the reference number 112. This number was not found within the disclosure. It appears that Applicant intended for this to be reference number 120 to refer to light sources. Corrected drawing sheets in compliance with 37 CFR 1.121(d), or amendment to the specification to add the reference character(s) in the description in compliance with 37 CFR 1.121(b) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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 1-24 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. Claims 1 and 15 have been amended to require “a plurality of light emitters arranged radially around the hollow core of the light guide”. Applicant’s response and specification points to Fig. 33 providing support for this particular limitation. However, the Examiner notes the drawings are not necessarily drawn to cale and it is not possible to determine from the drawings alone if the light sources are insertable within the core or surround the core as claimed. The only description provided via par. [0306] states light is supplied through the core and no details are provided on the relative orientation of the light sources to the core itself. Yes, it is clear there is a radial pattern of the light sources but it is not cera if this is around the core or within the core. The illustration in Fig. 33 is no of sufficient detail or specificity to resolve this discrepancy alone. Therefore, the amendment, as currently presented, constitutes new matter.
Claim Rejections - 35 USC § 102
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 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 3, 4, 7-11, 15, 17-21 and 24 are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Sobue et al. (2009/0012459).
In regard to Claims 1, 7-11, 15 and 17-21 , Sobue discloses a catheter (par. [0012]) having a plurality of light sources radially mounted on an inner surface of housing 22, which effectively functions as a light guide when closed. The light sources emit UV energy at a peak wavelength of 280 nanometers (par. [0017]) and project the light inwardly toward the hollow core and thus within a cross-section of the light guide to disinfect the interior of the housing. The lumen therein is capable of allowing airflow therethrough. The language of “to permit airflow…” is intended use language and the prior art need only be capable of the claimed function to anticipates the claim.
Claims 3, 4 and 24 amount to intended use recitations of the device of Claim 1. The device of Sobue, while disclosed as being used for dialysis is of sufficient size to be capable of at least patrial insertion into the mouth. The language of “to target…” and “for at least partial insertion…” is intended use language and the prior art need only be capable of the claimed function to anticipates the claim.
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.
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.
Claims 1-24 are rejected under 35 U.S.C. 103 as being unpatentable over Eltorai (2019/0168023).
In regard to Claims 1, 2, 15 and 24, Eltorai discloses a catheter (Abstract),such as used in a ventilator, par. [0085], having a light source (light transmitter 24, Abstract, par. [0071]; Fig. 1A) and a light guide that is hollow to permit air flow (such as common in ventilator catheters (par. [0085]). Eltorai does not disclose a plurality of light emitters and instead discloses a single light source connected to a single optical fiber. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to include a plurality of light sources instead of one, since it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art. St. Regis Paper Co. v. Bemis Co., 193 USPQ 8. Furthermore, it would have been obvious to one having ordinary skill in the art at the time the invention was made to orient the light sources radially, since it has been held that rearranging parts of an invention involves only routine skill in the art. In re Japikse, 86 USPQ 70.
Claims 3 and 4 amount to intended use recitations of the device of Claim 1. Eltorai discloses the catheter can be a ventilator tube and therefore is insertable in the mouth and capable of targeting tissue via the mouth (par. [0085]).
Regarding Claims 5 and 16, Eltorai discloses the catheter can facilitate draining of fluids (par. [0005, 0018]) such as through drain 16 (par. [0071]; Fig. 1A).
In regard to Claim 6, Applicant claims the intended use of suctioning by the tube. Eltorai discloses that the tube can be capable of suctioning fluid (par. [0018, 0085]).
With regard to Claims 7 and 17, Eltorai discloses the device is configured to emit light through the hollow core (tube), see Abstract; par. [0070]).
Regarding Claims 8 and 18, Eltorai discloses emitting light through a cross-sectional area of the light guide (see Fig. 3A-3D).
In regard to Claim 9, Eltorai discloses the light is configured to provide antimicrobial effects (alter growth and/or concentration of microbes), see par. [0018]).
With regard to Claims 10-13 and 19-22, Eltorai discloses applying light in the range of 400-500nm to target microbes such as spore forming bacteria (par. [0019]).
Regarding Claims 14 and 23, Eltorai discloses the light may be pulsed (par. [0018, 0075]).
Claims 1-24 are rejected under 35 U.S.C. 103 as being unpatentable over Eltorai (2019/0168023) in view of Sobue et al. (2009/0012459).
In regard to Claims 1, 2, 15 and 24, Eltorai discloses a catheter (Abstract),such as used in a ventilator, par. [0085], having a light source (light transmitter 24, Abstract, par. [0071]; Fig. 1A) and a light guide that is hollow to permit air flow (such as common in ventilator catheters (par. [0085]). Eltorai does not disclose a plurality of light emitters and instead discloses a single light source connected to a single optical fiber. However, in the same field of endeavor of medical catheters and concerned with the common problem for infection prevention, Sobue disclose providing a plurality of light emitters 30 dispersed radially around a catheter, particularly on a connector 22 at a connection point of the catheter (Fig. 2, 3) for the purpose of keeping the patient connection sterile (par. [0011]), which is a similar concern for Eltorai (see par. [0083]; Fig. 3F). Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the device in the Eltorai reference to include light emitters spaced radially around the hollow core at a connection junction, as taught and suggested by Sobue, for the purpose of keeping the patient connection sterile.
Claims 3 and 4 amount to intended use recitations of the device of Claim 1. Eltorai discloses the catheter can be a ventilator tube and therefore is insertable in the mouth and capable of targeting tissue via the mouth (par. [0085]).
Regarding Claims 5 and 16, Eltorai discloses the catheter can facilitate draining of fluids (par. [0005, 0018]) such as through drain 16 (par. [0071]; Fig. 1A).
In regard to Claim 6, Applicant claims the intended use of suctioning by the tube. Eltorai discloses that the tube can be capable of suctioning fluid (par. [0018, 0085]).
With regard to Claims 7 and 17, Eltorai discloses the device is configured to emit light through the hollow core (tube), see Abstract; par. [0070]).
Regarding Claims 8 and 18, Eltorai discloses emitting light through a cross-sectional area of the light guide (see Fig. 3A-3D).
In regard to Claim 9, Eltorai discloses the light is configured to provide antimicrobial effects (alter growth and/or concentration of microbes), see par. [0018]).
With regard to Claims 10-13 and 19-22, Eltorai discloses applying light in the range of 400-500nm to target microbes such as spore forming bacteria (par. [0019]).
Regarding Claims 14 and 23, Eltorai discloses the light may be pulsed (par. [0018, 0075]).
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 ALLEN PORTER whose telephone number is (571)270-5419. The examiner can normally be reached Mon - Fri 9:00-6:00 EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Unsu Jung can be reached at 571-272-8506. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ALLEN PORTER/Primary Examiner, Art Unit 3796
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