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 .
Information Disclosure Statement
The information disclosure statements (IDS) been submitted on 09/30/25 and 06/06/24 have been considered by the examiner
Election/Restrictions
Applicant’s election without traverse of Invention I (claims 1-18) in the reply filed on June 10, 2026 is acknowledged. Invention II (claim 19) has been withdrawn.
Claim Objections
Claim objected to because of the following informalities:
Claim 1 recites the terms
“the distal end side” in line 1. Examiner notes this should read “a distal end side”
“the proximal end side” in lines 3-4. Examiner notes this should read “a proximal end side”
Appropriate correction is required.
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 1-19 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.
Claim 1 recites the limitations:
“the distal end side” in line 1. There is no antecedent basis for this term
“the distal end portion” in line 3. There is no antecedent basis for this term
“the proximal end side” in lines 3-4. There is no antecedent basis for this term
Claim 2 recites the limitations:
“the outer diameter” in line 3. There is no antecedent basis for this term
“the distal end portion” in line 4. There is no antecedent basis for this term
Claim 3 recites the limitations:
“the outer peripheral surface” in line 2. There is no antecedent basis for this term
“the maximum value” in line 3. There is no antecedent basis for this term
“the outer diameter” in line 3. There is no antecedent basis for this term
“the coil” in line 3. Does this refer to “a magnetized coil” mentioned previously?
“the outer diameter” in line 4. There is no antecedent basis for this term
“the proximal end portion” in line 4. There is no antecedent basis for this term
“the outer diameter” in line 5. There is no antecedent basis for this term
“the distal end portion” in line 6. There is no antecedent basis for this term
“the proximal end side” in line 6. There is no antecedent basis for this term
Claim 4 recites the limitations:
“the maximum value” in lines 1-2. There is no antecedent basis for this term
“the outer diameter” in line 2. There is no antecedent basis for this term
“the outer diameter” in line 3. There is no antecedent basis for this term
“the proximal end portion” in line 3. There is no antecedent basis for this term
the outer diameter” in line 4. There is no antecedent basis for this term
“the distal end portion” in line 5. There is no antecedent basis for this term
“the area” in line 5. There is no antecedent basis for this term
“the proximal end side” in line 5. There is no antecedent basis for this term
Claims 6, 8-10, 12-15, 17 and 18 recites the limitations:
“the proximal end portion” in lines 1. There is no antecedent basis for this term
“the proximal end side” in line 3. There is no antecedent basis for this term
“the distal end side” in line 3. There is no antecedent basis for this term
Claim 7 recites the limitations:
“the proximal end side” in line 3. There is no antecedent basis for this term
“the distal end side” in line 3. There is no antecedent basis for this term
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.
Claims 1, 2, 15, 16 and 18 are rejected under 35 U.S.C. 102(a)(1) as being unpatentable over Sell (US 2007/0032746)
Regarding claim 1, Sell teaches a guide wire [fig. 1, element 20], comprising: a core wire [fig. 2, element 26] having a first magnetized region [fig. 1, element 40 (middle element of the three magnetic elements)] magnetized on the distal end side of the core wire [par. 16, 17], wherein a maximum value of an outer diameter of the first magnetized region is larger than an outer diameter of the distal end portion in an area located to the proximal end side of the first magnetized region [fig. 1, element 40 (middle element of the three magnetic elements); par. 19 “The magnetically responsive element 40 may have a slot, hole or groove through which the core wire 26 may be inserted to secure the element in place”; Examiner interprets the element 40 having a hole through which the wire is inserted to mean element 40 surrounds the core wire]
Regarding claim 2, Sell further teaches the core wire further has a second magnetized region [fig. 1, element 40 (most proximal element of the three magnetic elements)] magnetized at a position that is located to the proximal end side of the first magnetized region and separated from the first magnetized region [par. 18], and the maximum value of the outer diameter of the first magnetized region is larger than the outer diameter of the distal end portion in an area between the first magnetized region and the second magnetized region [fig. 1, element 40 (most proximal element of the three magnetic elements); par. 19; Examiner interprets the element 40 having a hole through which the wire is inserted to mean element 40 surrounds the core wire]
Regarding claims 15 and 18, Sell further teaches the proximal end portion of the first magnetized region is formed with a distal end reduced diameter portion having an outer diameter that gradually decreases from the proximal end side to the distal end side [fig. 1, elements 40 (middle element of the three magnetic elements), 32, 34; par. 19]
Regarding claim 16, Sell further teaches the core wire has a curved portion in which the core wire is curved in the area between the first magnetized region and the second magnetized region [fig. 1, elements 40, 32, 34; par. 19]
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 3, 11 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Sell and in further view of Lafontaine (US 5501228)
Lafontaine was applied in Applicant’s IDS submitted on 09/30/25
Regarding claim 3, Sell teaches an applicator assembly, as disclosed above, and the maximum value of the outer diameter of the second magnetized region as the second magnetized region is larger than the outer diameter of the proximal end portion in the area between the first magnetized region and the second magnetized region, and larger than the outer diameter of the distal end portion in an area located to the proximal end side of the second magnetized region [fig. 1, element 40 (most proximal element of the three magnetic elements); Examiner notes the outer diameter of the second magnetized region is larger than the core wire on either side of second magnetized region]
However, Sell does not teach the second magnetized region comprises a magnetized coil that covers the outer peripheral surface of the core wire
Lafontaine teaches the second magnetized region comprises a magnetized coil that covers the outer peripheral surface of the core wire [fig. 2, element 40; col. 6: lines 1-12]
Therefore, it would have been prima facie obvious to a person having ordinary skill in the art when the invention was filed to modify the method as taught by Sell, to incorporate the second magnetized region comprises a magnetized coil that covers the outer peripheral surface of the core wire, for allowing the spring coil 36 to be interweaved in the space between the magnetic strips, as evidence by Lafontaine [col. 6: lines 1-12].
Regarding claim 11, Sell further teaches the core wire has a curved portion in which the core wire is curved in the area between the first magnetized region and the second magnetized region [fig. 1, elements 40, 32, 34; par. 19]
Regarding claim 13, Sell further teaches the proximal end portion of the first magnetized region is formed with a distal end reduced diameter portion having an outer diameter that gradually decreases from the proximal end side to the distal end side [fig. 1, elements 40 (middle element of the three magnetic elements), 32, 34; par. 19]
Claims 4-10, 14 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Sell and in further view of Hilmersson (US 2013/0172782)
Regarding claim 4, Sell teaches an applicator assembly, as disclosed above, and the core wire is formed so that the maximum value of the outer diameter of the core wire in the second magnetized region is larger than the outer diameter of the proximal end portion in the area between the first magnetized region and the second magnetized region [fig. 1, elements 40, 40 (most proximal element of the three magnetic elements)]
However, Sell does not teach the outer diameter of the core wire in the second magnetized region is larger than the outer diameter of the distal end portion in the area located to the proximal end side of the second magnetized region
Hilmersson teaches the outer diameter of the core wire in the second region is larger than the outer diameter of the distal end portion in the area located to the proximal end side of the second region [fig. 3, elements 10, 11; par. 38; Examiner notes the distal end 10 is tapering proximally and section 11 may also taper proximally]
Therefore, it would have been prima facie obvious to a person having ordinary skill in the art when the invention was filed to modify the method as taught by Sell, to incorporate the outer diameter of the core wire in the second region is larger than the outer diameter of the distal end portion in the area located to the proximal end side of the second region, allowing for improved flexibility, and which at the same time has sufficient pull strength and steering response, as evidence by Hilmersson [par. 16].
Regarding claim 5, Sell further teaches the core wire has a curved portion in which the core wire is curved in the area between the first magnetized region and the second magnetized region [fig. 1, elements 40, 32, 34; par. 19]
Regarding claims 6, 9, 14 and 17, Sell further teaches the proximal end portion of the first magnetized region is formed with an enlarged diameter portion [fig. 1, element 40 (middle element of the three magnetic elements)]
Hilmersson further teaches the proximal end portion of the first region having an outer diameter that gradually increases from the proximal end side to the distal end side [fig. 3, elements 10, 11; par. 38; Examiner notes the distal end 10 is tapering proximally and section 11 may also taper proximally]
Therefore, it would have been prima facie obvious to a person having ordinary skill in the art when the invention was filed to modify the method as taught by Sell, to incorporate the proximal end portion of the first region having an outer diameter that gradually increases from the proximal end side to the distal end side, allowing for improved flexibility, and which at the same time has sufficient pull strength and steering response, as evidence by Hilmersson [par. 16].
Regarding claims 7, 8 and 10, Sell further teaches the proximal end portion of the first magnetized region is formed with a distal end reduced diameter portion having an outer diameter that gradually decreases from the proximal end side to the distal end side [fig. 1, elements 40 (middle element of the three magnetic elements), 32, 34; par. 19]
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Sell and Lafontaine and in further view of Hilmersson
Regarding claim 12, Sell and Lafontaine teach an applicator assembly, as disclosed above.
Sell further teaches the proximal end portion of the first magnetized region is formed with an enlarged diameter portion [fig. 1, element 40 (middle element of the three magnetic elements)]
However, Sell and Lafontaine do not teach the proximal end portion of the first region having an outer diameter that gradually increases from the proximal end side to the distal end side
Hilmersson further teaches the proximal end portion of the first region having an outer diameter that gradually increases from the proximal end side to the distal end side [fig. 3, elements 10, 11; par. 38; Examiner notes the distal end 10 is tapering proximally and section 11 may also taper proximally]
Therefore, it would have been prima facie obvious to a person having ordinary skill in the art when the invention was filed to modify the method as taught by Sell, to incorporate the proximal end portion of the first region having an outer diameter that gradually increases from the proximal end side to the distal end side, allowing for improved flexibility, and which at the same time has sufficient pull strength and steering response, as evidence by Hilmersson [par. 16].
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GRACE L ROZANSKI whose telephone number is (571)272-7067. The examiner can normally be reached M-F 8:30am-5pm, alt F 8:30am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Alexander Valvis can be reached on (571)272-4233. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/GRACE L ROZANSKI/Examiner, Art Unit 3791
/ALEX M VALVIS/Supervisory Patent Examiner, Art Unit 3791
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