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 Amendment
This action is in response to Applicant’s remarks, filed on 11/7/2025. Claim(s) 1-20 is/are cancelled by Applicant and therefore withdrawn from further consideration pursuant to 37 CFR 1.142(b). Corresponding rejections of claim(s) 1-20 from the prior office action are withdrawn as moot in light of the Applicant’s cancellation. New claim(s) 21-40 have been entered. Accordingly, claim(s) 21-40 are pending in the present application.
Response to Arguments
Applicant's arguments filed 11/7/2025 have been fully considered but they are not persuasive. The new claims do not overcome the prior restriction requirement. The prior rejections and objections issued in the previous office action have been withdrawn and/or revised in view of the newly added claims.
Election/Restrictions
Newly submitted claim(s) 33-40 are directed to an invention that is independent or distinct from the invention originally claimed for the following reasons: the newly claims are nearly identical to the originally presented claim set and remain directed to three inventive groups which are clearly directed to three distinct categories of statutory invention. Again, as laid out in the prior restriction (and in the claim preambles), inventive group I was drawn to marker devices to be tracked; inventive group II was drawn to systems and apparatus for tracking a marker device; and inventive group III was drawn to methods and computer programs for tracking a marker device. Claims 21-32 are drawn to the originally elected inventive group I, claims 33-38 are drawn to the originally withdrawn inventive group II, and claims 39-40 are drawn to the originally withdrawn inventive group III.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claim(s) 33-40 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions 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 inventions 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 invention.
Claim Objections
Claim(s) 21 and 29 recite(s) the limitation “such that […]”. It is suggested to replace the phrase “such that” with the term —wherein— in order to ensure positive recitation of all elements in the claim. The use of the phrase “such that” may be interpreted as a negative limitation in the claim, resulting in an interpretation of subsequent limitations (i.e. “the direction of a magnetic moment is perpendicular to the rotational axis, […] the magnetic moments of the magnetic object and the further magnetic object are arranged in opposite directions”) as preferred or suggested limitations, and therefore may be excluded from examination.
Claims 21 and 29 are further objected to for containing informalities. Claims 21 and 29 recite the limitations “wherein the magnetic and the further magnetic objects are permanent magnets, wherein the said objects are arranged”. The use of ‘magnetic and the further magnetic objects’ and ‘the said objects’ is informal and fails to conform with standard U.S. practice, and claims 21 and 29 must be amended to include the previous recitation of ‘magnetic object’ and ‘further magnetic object’. Additionally, the last clause of the claim 21 should include the word ‘wherein’ (e.g., –in opposite directions, wherein the further magnetic object is either–) to conform with standard U.S. practice. Similarly, the last clause of the claim 29 should include the word ‘and’ (e.g., –via a filament, and the further magnetic object is fixedly attached–) to conform with standard U.S. practice.
Claim 23 is objected to for informalities. The claim recites the limitation “wherein the magnetic and the further magnetic objects […] the said objects adapted to […] and the said object are”. The same informal language is objected to under the rationale applied to claims 21 and 29 above, and similarly must be amended to conform with standard U.S. practice.
Claim 27 is objected to for informalities. The claim recites the limitation “The marker device of claim 21, the marker device adapted to”, which appears to contain typographical/grammatical errors. It is suggested to amend the claim to read –The marker device of claim 21, wherein the marker device is adapted to–.
Appropriate correction is required.
Claim Interpretation
Claims 23-24, 27 and 30 recite the phrase “adapted to”. Applicant is reminded that it has been held that the recitation that an element is "adapted to" perform a function is not a positive limitation but only requires the ability to so perform. It does not constitute a limitation in any patentable sense. see In re Hutchison, 69 USPQ 138.
Claim Rejections - 35 USC § 112
35 USC § 112(b)
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(s) 24, 29 and 30-32 is/are 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. Claims 30 and 32 are also rejected at least by virtue of dependency upon a rejected claim.
Claim 24 recites the limitation "wherein the filament is adapted to". There is insufficient antecedent basis for this limitation in the claim. No ‘filament’ has been introduced in the independent claim 21, and it is unclear what the ‘filament’ in claim 24 is referring to.
Claim 29 recites the limitation “the first magnetic object is connected to the casing via a filament”. There is insufficient antecedent basis for this limitation in the claim. There is no prior recitation of a ‘first magnetic object’, and it is unclear which of the ‘magnetic objects’ is being referred to in the claim.
Claim 30 recites the limitation "wherein at least one of the torsional spring and ". There is insufficient antecedent basis for this limitation in the claim. No ‘torsional spring’ has been introduced in the independent claim 29, and it is unclear what the ‘torsional spring’ in claim 30 is referring to.
Claim 31 recites the limitations “A plurality of marker devices, wherein the marker devices comprise two or more marker devices according to claim 1.” which renders the claim indefinite. First, the claim is in improper dependent form resulting in multiple interpretations: in one interpretation the claim may be a standalone independent claim (i.e., ‘A plurality of marker devices’) distinct from the independent claim; and in another interpretation may be interpreted as dependent upon claim 1. Next, the language is unclear because it is uncertain if the ‘plurality of marker devices’ may comprise new ‘marker devices’ which do not refer to independent claim 1, e.g., a new ‘marker device’ as well as two or more ‘marker devices according to claim 1’. It is suggested to amend the claim language for proper dependency. For the purposes of examination the broadest reasonable interpretation of the claim language is applied to the limitations.
Claim 32 recites the limitations “A medical device comprising one or more of: catheter, a guidewire, implant, the medical device comprising a marker device or a plurality of marker devices of claim 31.” which renders the claim indefinite. First, the claim is written in improper dependent form. Second, the claim language appears to point to different statutory categories of invention, and claims both a ‘medical device’ as well as a/the ‘marker device(s)’ without describing the relationship between the two inventions. Finally, the claim fails to remain consistent regarding the number of ‘marker devices’ present because it is unclear how many are involved with the ‘medical device’. Claim 31 (upon which it appears that claim 32 depends) provides a ‘plurality of marker devices’; however, the instant claim 32 recites either a single ‘marker device’ or multiple ‘marker devices’. Accordingly, there is insufficient antecedent basis for this limitation in the claim, and it is not certain what ‘marker device’, or how many are being claimed (i.e., “a marker device”, “a plurality of marker devices”). It is suggested to amend the claim language for proper dependency, to define how the ‘medical device’ and ‘marker device(s)’ are structurally related, and to define what ‘marker device’ and how many ‘marker devices’ are being claimed. For the purposes of examination the broadest reasonable interpretation of the claim language is applied to the limitations.
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.
Claim(s) 21 and 29 is/are rejected on the ground of nonstatutory double patenting as being unpatentable over claim(s) 1 of U.S. Patent No. 11976985 B2, respectively. Although the claims at issue are not identical, they are not patentably distinct from each other because independent claim(s) 21 and 29 provided in the instant application US 18/626,378 (hereinafter “the ‘378 application”) are anticipated by claim(s) 1 of the cited patent US 11976985 B2 (hereinafter “the ‘985 patent”). The two sets of claims are directly compared below.
From the ‘378 application:
Regarding claim 21, the ‘985 patent teaches a marker device to be tracked (“A marker device to be tracked,” [clm 1]), the marker device comprises:
a casing (“wherein the marker device comprises: a casing,” [clm 1]),
a magnetic object, the magnetic object arranged within the casing and rotatable around a rotational axis centrally traversing the magnetic object in response to
an external magnetic torque acting on the magnetic object (“a magnetic object, wherein the magnetic object is arranged within the casing, wherein the magnetic object is rotatable around a rotational axis centrally transversing the magnetic object out of an equilibrium orientation in response to an external magnetic torque acting on the magnetic object,” [clm 1]),
a further magnetic object (“wherein the restoring torque device comprises a further magnetic object for providing the restoring torque,” [clm 1]),
wherein the magnetic and the further magnetic objects are permanent magnets (“wherein the magnetic object and the further magnetic object are permanent magnets each having a respective magnetic dipole,” [clm 1]),
wherein the said objects are arranged such that the direction of a magnetic moment is perpendicular to the rotational axis, such that the magnetic moments of the magnetic object and the further magnetic object are arranged in opposite directions (“wherein the magnetic object and the further magnetic object are arranged such that in the equilibrium orientation the magnetic dipoles of the magnetic object and the further magnetic object point in opposite directions, wherein a north pole of the magnetic object faces a south pole of the further magnetic object and vice versa, and wherein:” [clm 1]),
the further magnetic object is either directly connected to or connected via a torsional spring to the casing (“the further magnetic object is stationarily attached to the casing, or the restoring torque device further comprises a torsional spring, wherein the torsional spring extends along the rotational axis between the magnetic object and the further magnetic object and connects the magnetic object to the further magnetic object.” [clm 1]).
Regarding claim 29, the ‘985 patent teaches a marker device to be tracked (“A marker device to be tracked” [clm 1]), the marker device comprises:
a casing (“wherein the marker device comprises: a casing,” [clm 1]),
a magnetic object, the magnetic object arranged within the casing and rotatable around a rotational axis centrally traversing the magnetic object in response to an external magnetic torque acting on the magnetic object (“a magnetic object, wherein the magnetic object is arranged within the casing, wherein the magnetic object is rotatable around a rotational axis centrally transversing the magnetic object out of an equilibrium orientation in response to an external magnetic torque acting on the magnetic object,” [clm 1]),
a further magnetic object (“wherein the restoring torque device comprises a further magnetic object for providing the restoring torque,” [clm 1]),
wherein the magnetic and the further magnetic objects are permanent magnets (“wherein the magnetic object and the further magnetic object are permanent magnets each having a respective magnetic dipole,” [clm 1]),
wherein the said objects are arranged such that the direction of a magnetic moment is perpendicular to the rotational axis, such that the magnetic moments of the magnetic object and the further magnetic object are arranged in opposite directions (“wherein the magnetic object and the further magnetic object are arranged such that in the equilibrium orientation the magnetic dipoles of the magnetic object and the further magnetic object point in opposite directions, wherein a north pole of the magnetic object faces a south pole of the further magnetic object and vice versa, and wherein:” [clm 1]), and wherein
the first magnetic object is connected to the casing via a filament (“a magnetic object, wherein the magnetic object is arranged within the casing, […] a restoring torque device, wherein the restoring torque device is configured to provide a restoring torque to force the magnetic object back into the equilibrium orientation […] the restoring torque device further comprises a torsional spring,” [clm 1]),
the further magnetic object is fixedly attached to the casing (“the further magnetic object is stationarily attached to the casing” [clm 1]).
Although the above claims do not identically match claim language, the marker device to be tracked recited in claim 21 of the ‘378 application is directly anticipated by the marker device to be tracked from claim 1 of the ‘985 patent.
Claim(s) 21 and 29, as drafted in the ‘378 application and mapped to claim 1 of ‘985 patent, are nearly identical. The only limitations where claims 21 and 29 of the ‘378 application and claim 1 of the ‘985 patent are not copied nearly word for word is in description of the arrangement of the ‘magnetic object’ and ‘further magnetic object’. The ‘378 application recites “wherein the said objects are arranged such that the direction of a magnetic moment is perpendicular to the rotational axis, such that the magnetic moments of the magnetic object and the further magnetic object are arranged in opposite directions”, while the ‘985 patent recites “wherein the magnetic object and the further magnetic object are arranged such that in the equilibrium orientation the magnetic dipoles of the magnetic object and the further magnetic object point in opposite directions”. The magnetic moment and the magnetic dipole describe the same vector quantity, and therefore the disposition of the ‘magnetic object’ and ‘further magnetic object’ as claimed is identical. Claim 29 includes the limitation “the first magnetic object is connected to the casing via a filament”, which is an indefinite limitation because there is no ‘first magnetic object’. Regarding the ‘filament’ limitation in claim 29 of the ‘378 application, claim 1 of the ‘985 patent provides that the ‘magnetic object’ is disposed within the casing and attached to a ‘restoring torque device’ comprising a ‘torsional spring’ (i.e., filament), which appears to facilitate connection of the ‘magnetic object’ with the casing.
Other than this language between the claim(s), the language of claim(s) 21 and 29 of the ‘378 application and claim(s) 1 of the ‘985 patent, respectively, are nearly verbatim. Accordingly, the inventive concept of claim(s) 21 and 29 of the ‘378 application, a marker device to be tracked, are directly anticipated by the limitations recited in claim 1 of the ‘985 patent.
Regarding the dependent claims:
Claim(s) 30 of the ‘378 application is/are rejected over claim(s) 1 of the ‘985 patent.
Claim(s) 23 and 24 of the ‘378 application is/are rejected over claim(s) 3 of the ‘985 patent.
Claim(s) 25 of the ‘378 application is/are rejected over claim(s) 4 of the ‘985 patent.
Claim(s) 28 of the ‘378 application is/are rejected over claim(s) 17 of the ‘985 patent.
Conclusion
THIS ACTION IS MADE FINAL. 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 James F. McDonald III whose telephone number is (571)272-7296. The examiner can normally be reached M-F; 8AM-6PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Chris Koharski can be reached at 5712727230. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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JAMES FRANKLIN MCDONALD III
Examiner
Art Unit 3797
/CHRISTOPHER KOHARSKI/Supervisory Patent Examiner, Art Unit 3797