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 .
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.
Election/Restrictions
Applicant’s election without traverse of Group I, Claims 1-9, in the reply filed on 10 March 2026 is acknowledged. Therefore, Group II, Claims 10-20, are withdrawn from consideration.
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they do not include the following reference sign(s) mentioned in the description: Figures 3 and 4 label element “104” but do not label element "107" as recited in the description. Corrected drawing sheets in compliance with 37 CFR 1.121(d) 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.
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(4) because reference characters "123" and "127" have both been used to designate “exterior surface” of element “104”. Corrected drawing sheets in compliance with 37 CFR 1.121(d) 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.
Specification
The disclosure is objected to because of the following informalities: Paragraph [0038] of the description recites "FIG 3" whereas it should recite "FIG. 3" to stay consistent with the label of the drawings as well as to be grammatically correct.
Appropriate correction is required.
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 1-9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ting et. al.'771 (U.S. Patent Publication 20210153771).
Regarding Claim 1, Ting et. al.’771 discloses a device comprising a member comprising a plurality of electroconductive segments arranged between a proximal end and a distal end of the member (Paragraph [0135] - As shown in FIG. 1A, the exemplary insertion device/apparatus can include a needle 105 incorporating two or more, non-planar, concentric conductive electrodes (e.g., electrodes 110 and 120)), wherein
the plurality of electroconductive segments are electrically insulated from one another (Paragraph [0136] - Thus, insulative coating 115 can be used to electrically isolate electrodes 110, 120 from one another); and
a first conductive path, wherein a portion of the first conductive path is electrically coupled to a first electroconductive segment of the plurality of electroconductive segments such that the first electroconductive segment is configured as a first electrode (Paragraph [0135] - One of the electrodes (e.g., electrode 110), can be formed from a conductive coating on or in a surface of the insertion device/apparatus; Paragraph [0137] - alternating current can be transmitted via the conductive/electrical channels of the device (e.g., internal thereto and/or provided on a surface thereof) to reach helically-patterned outer conductive layer (e.g., electrode) 110′ and/or inner conductive base (e.g., inner electrode) 120 so as to generate an electromagnetic field).
Regarding Claim 2, Ting et. al.’771 discloses the device outlined in Claim 1 above as well as comprising a second conductive path, wherein a portion of the second conductive path is electrically coupled to a second electroconductive segment of the plurality of electroconductive segments such that the second electroconductive segment is configured as a second electrode (Paragraph [0136] - electrode 120, which can form an internal portion and/or surface of the insertion device/apparatus itself; Paragraph [0137] - alternating current can be transmitted via the conductive/electrical channels of the device (e.g., internal thereto and/or provided on a surface thereof) to reach helically-patterned outer conductive layer (e.g., electrode) 110′ and/or inner conductive base (e.g., inner electrode) 120 so as to generate an electromagnetic field).
Regarding Claim 3, Ting et. al.’771 discloses the device outlined in Claim 1 above as well as the member comprises at least one conduit defined in an exterior surface of the member, extending along at least one longitudinal portion of the member, wherein the first conductive path is oriented in the at least one conduit (Paragraph [0137] - For example, referring again to FIG. 1B, alternating current can be transmitted via the conductive/electrical channels of the device (e.g., internal thereto and/or provided on a surface thereof) to reach helically-patterned outer conductive layer (e.g., electrode) 110′ and/or inner conductive base (e.g., inner electrode) 120 so as to generate an electromagnetic field).
Regarding Claim 4, Ting et. al.’771 discloses the device outlined in Claim 3 above as well as the at least one conduit is equally circumferentially arranged around the member (Paragraph [0137] - instead of providing electrode 110 which circumferentially surrounds insulating layer 115, masking can be used to produce and/or provide helical-patterned and/or other exemplary patterned structures which define an outer conductive patterned layer 110′. Such exemplary use of the helical-patterned outer conductive layer can improve the transmission of the radiation and/or detection thereof by antennas 140, 145, 150 to facilitate an improved three-dimensional position detection of the tip of the exemplary insertion device; see Annotated Figure 1B below).
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Annotated Figure 1B
Regarding Claim 5, Ting et. al.’771 discloses the device outlined in Claim 1 above as well as comprising at least one insulated segment coupled to at least one of the plurality of electroconductive segments (Paragraph [0136] - A second insulative coating, e.g., can surround electrode 110, to isolate electrode 110, except for, e.g., an uninsulated portion 135 of electrode 110).
Regarding Claim 6, Ting et. al.’771 discloses the device outlined in Claim 5 above as well as the at least one insulated segment is interspersed between two electroconductive segments of the plurality of electroconductive segments (Paragraph [0136] - Thus, insulative coating 115 can be used to electrically isolate electrodes 110, 120 from one another).
Regarding Claim 7, Ting et. al.’771 discloses the device outlined in Claim 1 above as well as comprising at least one insulated segment coupled to at least one of the plurality of electroconductive segments, wherein the at least one insulated segment is interspersed between two electroconductive segments of the plurality of electroconductive segments (Paragraph [0136] - Thus, insulative coating 115 can be used to electrically isolate electrodes 110, 120 from one another).
Regarding Claim 8, Ting et. al.’771 discloses the device outlined in Claim 1 above as well as the member comprises a needle that defines a lumen (Paragraph [0135] - The use of two or more, non-planar, concentric conductive electrodes can leave center lumen 125 open for delivery, collection, or introduction of fluids or other substances or devices).
Regarding Claim 9, Ting et. al.’771 discloses the device outlined in Claim 8 above as well as comprising a suction device configured to remove a substance through the lumen (Paragraph [0201] - a biopsy sample can be obtained from the subject through the lumen; Paragraph [0209] - by extracting or aspirating the targeted fluid, materials, compounds, agents, enzymes, fillers, fluids, etc. This can be done, in one non-limiting example, by…pulling back on the syringe plunger to create suction or a vacuum that draws the targeted fluid, materials, cells, compounds, agents, enzymes, fillers, fluids, etc. into the syringe (e.g., in a reverse direction)).
It is to be noted that Ting et. al.’771 discloses features from multiple embodiments discloses within their description are able to be used together and interchangeable (Paragraph [0239] - Various different exemplary embodiments can be used together with one another, as well as interchangeably therewith, as should be understood by those having ordinary skill in the art).
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
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.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over Claim 20 of co-pending U.S. Application No. 18/512645 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because Claim 20 of the co-pending U.S. Application is narrower in scope than the claim of the instant application, and encompasses the subject matter of the claim of the instant application. Any reference meeting the limitations set forth in Claim 20 of the co-pending U.S. Application would also meet the limitations of Claim 1 of the instant application.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over Claim 11 of U.S. Patent No. 10,765,475 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because Claim 11 of the U.S. Patent is narrower in scope than the claim of the instant application, and encompasses the subject matter of the claim of the instant application. Any reference meeting the limitations set forth in Claim 11 of the U.S. Patent would also meet the limitations of Claim 1 of the instant application.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Cockburn’748 (WO Patent Application 2012038748) teaches a biopsy needle comprising electrically conductive segments separated by insulated segments configured from a proximal point of the needle to a distal point of the needle. Mark et. al.’964 (U.S. Patent Publication 20100081964) teaches a biopsy apparatus comprising a vacuum built into the cannula in order to draw tissue samples through the cannula.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SARAH ANN WESTFALL whose telephone number is (571) 272-3845. The examiner can normally be reached Monday-Friday 7:30am-4:30pm EST.
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/SARAH ANN WESTFALL/Examiner, Art Unit 3791
/ETSUB D BERHANU/Primary Examiner, Art Unit 3791
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