DETAILED ACTION
Non-Final Rejection
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
Applicant’s election without traverse of Group II (claims 10-16) in the reply filed on 12/29/2025 is acknowledged.
Claim Rejections - 35 USC § 112
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.
Claims 11, 12, and 16 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. Each claim depends upon a withdrawn claim. However, the limitations within each claim suggests that each claim should be dependent on claim 10. It is unclear how to interpret the claims. For purposes of examination, the Office treated each claim as being dependent on claim 10.
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.
Claims 10-16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims , 3-6, and 8 of U.S. Patent No. 12048515. Although the claims at issue are not identical, they are not patentably distinct from each other because the scope of the claims are anticipated by the claims of the issued patent as outlined and discussed below:
Application 18/680,249
US Patent no. 12048515
Claim 10
A system for measuring the compliance of an aneurysm, comprising:
a hollow ribbed structure having a compressed delivery configuration for placement within a catheter and an expanded configuration configured to be implanted into the aneurysm;
a plurality of coils attached to the hollow ribbed structure, each coil having a number of turns and being configured to be positioned along a different interior portion of the aneurysm when the hollow ribbed structure is in the expanded configuration;
a plurality of capacitors, wherein one of the plurality of capacitors is connected in series with a respective one of the plurality of coils forming a plurality of tank circuits,
(for the above two limitations, the issued patent includes the transition phrase comprising which means additional coils and capacitors are possible and therefore tank circuits are possible)
wherein the plurality of coils are configured to expand or contract in response to the aneurysm expanding or contracting thereby causing a change in a resonant frequency of each of the plurality of tank circuits based on an area inside each of the plurality of coils to provide a plurality of measures of the compliance of the aneurysm; and
an external system comprising an interrogation coil, the external system being configured to determine an amount of blood flowing in and out of the aneurysm based on the plurality of measures of compliance of the aneurysm.
(While the patented claim is broader, as it does not include an external system claimed above, the inclusion of such hardware would have been obvious in view of Sweeney et al. (US 2019/0076033) who teaches a wireless vascular monitoring implant that includes a such hardware, see Abstract and [0008]).
Claim 1
A device for measuring the compliance of an aneurysm, comprising:
a hollow ribbed structure having a compressed delivery configuration for placement within a catheter and an expanded ball-shaped deployed configuration configured to be implanted into the aneurysm;
a coil attached to and encircling the hollow rib structure, the coil having a number of turns and being configured to be positioned along a portion of the aneurysm when the hollow ribbed structure is in the expanded ball-shaped deployed configuration, and;
a capacitor connected in series with the coil forming a tank circuit,
wherein the coil is configured to expand or contract in response to the aneurysm expanding or contracting thereby causing a change in a resonant frequency of the tank circuit based on an area inside the coil that provides a measure of the compliance of the aneurysm.
Claim 11
The system of claim 9, wherein the hollow ribbed structure comprises a ball-shaped structure in the expanded configuration.
Claim 1
… a hollow ribbed structure having a compressed delivery configuration for placement within a catheter and an expanded ball-shaped deployed configuration configured to be implanted into the aneurysm; …
Claim 12.
The system of claim 9, wherein each capacitor has a variable capacitance based on a characteristic of an environment around the capacitor.
Claim 3.
The device of claim 1, wherein the capacitor has a variable capacitance based on a characteristic of an environment around the capacitor.
Claim 13.
The system of claim 11, wherein the variable capacitance is based on pressure.
Claim 4.
The device of claim 3, wherein the variable capacitance is based on pressure.
Claim 14.
The system of claim 11, wherein each capacitor is created using two electrodes exposed to a material inside the aneurysm, wherein the capacitance is a result of an electrode-material interface capacitance of each electrode
Claim 5.
The device of claim 3, wherein the capacitor comprises two electrodes exposed to a material inside the aneurysm, wherein the capacitance is a result of an electrode-material interface capacitance of each electrode.
Claim 15
The system of claim 10, wherein the hollow ribbed structure is configured to substantially fill a space within the aneurysm in the expanded ball-shaped configuration.
Claim 6
The device of claim 1, wherein the hollow ribbed structure is configured to substantially fill a space within the aneurysm in the expanded ball-shaped configuration.
Claim 16
The system of claim 9, wherein the hollow ribbed structure is configured to be compressed so as to fit inside the catheter in the compressed delivery configuration for delivery through a neck of the aneurysm.
Claim 8
The device of claim 1, wherein the hollow ribbed structure is configured to be compressed so as to fit inside the catheter in the compressed delivery configuration for delivery through a neck of the aneurysm.
Conclusion
Claims 10-16 are rejected. No prior art rejections are included for claims 10-16. Resolution of the above issues will likely place the claims in condition for allowance. Similar to the parent case 16/784,156, no prior art of record teaches or fairly suggests, in combination with all other limitations, a system for measuring the compliance of an aneurysm that includes (i) a hollow ribbed structure with a plurality of coils attached where the coils are configured to be positioned within an interior of the aneurysm when the hollow ribbed structure is expanded and (ii) where expansion and contraction of the coils is monitored via a plurality of tank circuits to provide measures of the compliance of the aneurysm. The following references are provided for Applicant’s benefit as they were deemed relevant to the claimed invention:
Takahata et al., "Micromachined Antenna Stents and Cuffs for Monitoring Intraluminal Pressure and Flow," Journal of Microelectromechanical Systems, vol. 15, no. 5, pp. 1289-1298, Oct. 2006
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Tho Q. Tran whose telephone number is (571)270-1892. The examiner can normally be reached 7-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jacqueline Cheng can be reached at 5712725596. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/THO Q TRAN/ Examiner, Art Unit 3791
/JACQUELINE CHENG/Supervisory Patent Examiner, Art Unit 3791