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 .
A complete action on the merits of pending claims 1-20 appears herein.
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 3-5 and 12-14 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.
Regarding claims 3 and 12, the claim limitation “first insulator property is made of one color” renders the claim unclear as to how a property can be made of a color. For the purpose of examination, the limitation “first insulator property is made of one color” is interpreted as “first insulator portion is made of one color.” Claims 4, 5, 13, and 14 are rejected due to their respective dependencies on claims 3 and 12.
Regarding claims 4 and 13, the claim limitation “the second insulator property is made of a different color than the first insulator property color” renders the claim unclear as to how a property can be made of a color. For the purpose of examination, the limitation “the second insulator property is made of a different color than the first insulator property color” is interpreted as “the second insulator portion is made of a different color than the first insulator portion color.” Claims 5 and 14 are rejected due to their respective dependencies on claims 4 and 13.
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.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1, 3, 6-10, and 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Viswanathan (US 2009/0138009 A1).
Regarding claim 1, Viswanathan teaches
a core wire having a tapered section; (Fig. 2, Char. 16: electrical conductor)
a first insulator portion having a first insulator property and a first insulator length, (Fig. 2, Char. 42: second electrically insulating layer) and
a second insulator portion having a second insulator property and a second insulator length; (Fig. 2: The structure formed by layer (44) and coating (39); Par. [0028] and [0032])
wherein the first insulator portion and the second insulator portion are positioned along the core wire so as to form an overlap portion aligned with the tapered section of the core wire. (Fig. 2)
Regarding claim 3, Viswanathan further teaches the first insulator property is made of one color. (Absent a statement that the electrically insulating layer (42) is transparent, said layer would comprise at least some color.)
Regarding claim 6, Viswanathan further teaches the first insulator length and the second insulator length define an overall core wire length. (Fig. 2: Layer (42), Layer (44), and coating (39) overlap each other and would define an overall core wire length of at least the portions of conductor (16) coated with the insulating layers/coatings.)
Regarding claim 7, Viswanathan further teaches the first insulator portion and the second insulator portion are overlapped (Layer (42) overlaps at least a portion of layer (44)) to maintain a constant outer diameter. (Fig. 2 and Par. [0028]: Layer (42) and coating (29) abut each other and have roughly the same diameter.)
Regarding claim 8, Viswanathan further teaches the overlap portion is insulated. (Par. [0032])
Regarding claim 9, Viswanathan further teaches the first insulator portion and the second insulator portion are butted and recovered together at the tapered section of the core wire. (Fig. 2)
Regarding claim 10, Viswanathan further teaches the overlap portion includes an orientation in which the first insulator portion is on top of the second insulator portion at the tapered section of the core wire. (Fig. 2)
Regarding claim 20, the method steps for making the radiofrequency guidewire would be intuitive to the structure provided in Viswanathan, given that the method steps of claim 20 appear to make the radiofrequency guidewire of claim 1.
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.
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.
Claim(s) 2, 11, 12, and 15-19 are rejected under 35 U.S.C. 103 as being unpatentable over Viswanathan (US 2009/0138009 A1), as applied to claim 1 above, and further in view of Lettice (US 2002/0120259 A1).
Regarding claim 2, Viswanathan, as applied to claim 1 above, is silent regarding the first insulator portion and the second insulator portion are made of a heat shrink material.
Lettice, in a similar field of endeavor, teaches an insulating sleeve comprising a heat-shrink plastic material. (Par. [0211])
It has been held that “the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination”- MPEP 2144.07 In the instant case, one of ordinary skill in the art would recognize the benefits or suitability of the disclosed materials (e.g. cost-effectiveness, manufacturing feasibility, etc.) It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Viswanathan to incorporate the teachings of Lettice and have the first insulator portion and the second insulator portion be/include the heat shrink plastic material of Lettice since the heat shrink plastic material of Lettice is recognized as being suitable for use as an insulative coating/sleeve.
Regarding claim 11, Viswanathan teaches
a core wire having a tapered section; (Fig. 2, Char. 16: electrical conductor)
a first insulator portion having a first insulator property and a first insulator length, (Fig. 2, Char. 42: second electrically insulating layer) and
a second insulator portion having a second insulator property and a second insulator length; (Fig. 2: The structure formed by layer (44) and coating (39); Par. [0028] and [0032])
wherein the first insulator portion and the second insulator portion are positioned along the core wire so as to form an overlap portion aligned with the tapered section of the core wire. (Fig. 2)
Viswanathan, as applied to claim 11 above, is silent regarding the first insulator portion and the second insulator portion are made of a heat shrink material.
Lettice, in a similar field of endeavor, teaches an insulating sleeve comprising a heat-shrink plastic material. (Par. [0211])
It has been held that “the selection of a known material based on its suitability for its intended use supports a prima facie obviousness determination”- MPEP 2144.07 In the instant case, one of ordinary skill in the art would recognize the benefits or suitability of the disclosed materials (e.g. cost-effectiveness, manufacturing feasibility, etc.) It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Viswanathan, as applied to claim 11 above, to incorporate the teachings of Lettice and have the first insulator portion and the second insulator portion be/include the heat shrink plastic material of Lettice since the heat shrink plastic material of Lettice is recognized as being suitable for use as an insulative coating/sleeve.
Regarding claim 12, the combination of Viswanathan/Lettice, as applied to claim 11 above, teaches the first insulator property is made of one color. (Absent a statement that the electrically insulating layer (42) of Viswanathan is transparent, said layer would comprise at least some color.)
Regarding claim 15, the combination of Viswanathan/Lettice, as applied to claim 11 above, teaches the first insulator length and the second insulator length define an overall core wire length. (Viswanathan: Fig. 2: Layer (42), Layer (44), and coating (39) overlap each other and would define an overall core wire length of at least the portions of conductor (16) coated with the insulating layers/coatings.)
Regarding claim 16, the combination of Viswanathan/Lettice, as applied to claim 11 above, teaches the first insulator portion and the second insulator portion are overlapped (Viswanathan: Layer (42) overlaps at least a portion of layer (44)) to maintain a constant outer diameter. (Viswanathan: Fig. 2 and Par. [0028]: Layer (42) and coating (29) abut each other and have roughly the same diameter.)
Regarding claim 17, the combination of Viswanathan/Lettice, as applied to claim 11 above, teaches the overlap portion is insulated. (Viswanathan: Par. [0032])
Regarding claim 18, the combination of Viswanathan/Lettice, as applied to claim 11 above, teaches the overlap portion includes an orientation in which the first insulator portion is on top of the second insulator portion at the tapered section of the core wire. (Viswanathan: Fig. 2)
Regarding claim 19, the combination of Viswanathan/Lettice, as applied to claim 11 above, teaches the guidewire is inserted into an external device. (Viswanathan: Par. [0046])
Claim(s) 4 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Viswanathan (US 2009/0138009 A1), as applied to claim 3 above, and further in view of Cosman (US 7,976,542 B1).
Regarding claim 4, Viswanathan, as applied to claim 3 above, is silent regarding the second insulator property is made of a different color than the first insulator property color.
Cosman, in a similar field of endeavor, teaches a catheter comprising a first and second insulative coating; (Fig. 5, Char. 271 and 274 respectively) wherein the first and second insulative coatings are different colors from each other. (Col. 9, Lines 61-65)
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified Viswanathan, as applied to claim 3 above, to incorporate the teachings of Cosman, and configure coating (39) of Viswanathan and layer (42) of Viswanathan to be different colors from each other. Doing so would allow for easy differentiation between the two coatings.
Regarding claim 5, the combination of Viswanathan/Cosman, as applied to claim 4 above, teaches the color change of the first insulator portion and the second insulator portion creates a visual marker on the core wire. (The change in colors would create a visual indication for a user, marking the point on the core wire where layer (42) ends and coating (39) begins)
Claim(s) 13 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Viswanathan (US 2009/0138009 A1), in view of Lettice (US 2002/0120259 A1), as applied to claim 12 above, and further in view of Cosman (US 7,976,542 B1).
Regarding claim 13, the combination of Viswanathan/Lettice, as applied to claim 12 above, teaches the second insulator property is made of a different color than the first insulator property color.
Cosman, in a similar field of endeavor, teaches a catheter comprising a first and second insulative coating; (Fig. 5, Char. 271 and 274 respectively) wherein the first and second insulative coatings are different colors from each other. (Col. 9, Lines 61-65)
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the combination of Viswanathan/Lettice, as applied to claim 12 above, to incorporate the teachings of Cosman, and configure coating (39) of Viswanathan and layer (42) of Viswanathan to be different colors from each other. Doing so would allow for easy differentiation between the two coatings.
Regarding claim 14, the combination of Viswanathan/Lettice/Cosman, as applied to claim 13 above, teaches the color change of the first insulator portion and the second insulator portion creates a visual marker on the core wire. (The change in colors would create a visual indication for a user, marking the point on the core wire where layer (42) ends and coating (39) begins)
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NICHOLAS SHEA BORSCH whose telephone number is (571)272-5681. The examiner can normally be reached Monday-Thursday 7:30AM-5:30PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Linda Dvorak can be reached at 5712724764. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LINDA C DVORAK/Primary Examiner, Art Unit 3794
/N.S.B./Examiner, Art Unit 3794