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 . Claims 1-22 are currently pending.
Claim Objections
Claims 2, 5-6, and 9-10 are objected to because of the following informalities: the claims include a number likely not part of the claim, but a line numbering. Appropriate correction is required.
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 1-22 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11 of U.S. Patent No. 12,004,801. Although the claims at issue are not identical, they are not patentably distinct from each other because they include near identical subject matter on all of the elements (‘801 is more specific in claim 1 but includes all of the specifics of the present claim 1 within it).
Claims 1-11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of U.S. Patent No. 10,517,667. Although the claims at issue are not identical, they are not patentably distinct from each other because (‘667 is more specific in claim 1 but includes all of the specifics of the present claim 1 within it).
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 1-7, 10-18 and 21-22 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Koblish US Publication 20150133914 (hereinafter Koblish).
Regarding claims 1 and 12, Koblish discloses an apparatus/method, comprising: providing an insertion tube that is configured to be inserted into a body cavity (element 22); connecting a distal tip to the insertion tube (element 24 as per Figures 2-3 which shows the components connected to each other), the distal tip having an external surface (Figures 2-3 at element 24) and a cavity formed in the external surface (at elements 28, top view of a cross-section shown in Figure 4 that there are several cavities where the electrodes and insulation 28 and 56 are set), the cavity being surrounded by a region of the external surface having a curvature (Figures 2-4, 7-9); and fitting a microelectrode into the cavity so that a base surface of the electrode mates with the base receiving surface of the distal tip (Figure 4 which shows the electrode 28 contacting the base surface 54), and an external surface of the microelectrode is contoured, located and oriented to conform with the curvature of the region (Figures 3-4 which shows that the microelectrodes are contoured in the same way that the distal tip 24 is).
Regarding claims 2 and 13, Koblish discloses that the external surface and the surface of the microelectrode are defined by a common equation (elements 24 and 28 which share the same axis of rotation and same curvatures and thus by extension would include a “common equation” as best understood by the disclosure).
Regarding claims 3 and 14, Koblish discloses locating insulation between the microelectrode and the distal tip so as to electrically insulate the microelectrode from the distal tip (element 56).
Regarding claims 4 and 15, Koblish discloses connecting at least one conductor (element 48), insulated from the distal tip ([0052][0059], see Figures 5-6), to the microelectrode (28) and configuring the conductor to convey an electropotential generated by the body cavity and detected by the microelectrode (0052]).
Regarding claims 5 and 16, Koblish discloses connecting at least two conductors of two different materials at a junction to form a thermocouple (elements 60/62 and [0063], which mentions it can be a thermocouple which includes two dissimilar conductive materials), and connecting the junction to the microelectrode so as to provide a signal representative of a temperature of the microelectrode (Figure 11 which shows the junction near element 60 with the two wires 62 extending out from the microelectrode).
Regarding claims 6 and 17, Koblish discloses configuring the distal tip to receive radiofrequency (RF) energy at an ablation frequency adapted to perform ablation on the body cavity (electrode 24 at [0053][0060][0061]).
Regarding claims 7 and 18, Koblish discloses that the microelectrode is configured to detect an electropotential at a lower frequency than the ablation frequency ([0050] which details the general process for both mapping and ablation).
Regarding claims 10 and 21, Koblish discloses that the external surface and the surface of the microelectrode have a common non-zero first principal curvature and a common second principal curvature equal to zero (Figures 6-7 at elements 24 and 28).
Regarding claims 11 and 22, Koblish discloses the external surface and the surface of the microelectrode have a common surface of revolution (Figures 2-3, 6-8 which shows the tip 24 and electrode surface 28 having identical surfaces of revolution).
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 non-obviousness.
Claims 8 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Koblish in view of Susil et al. US Publication US 2003/0050557 (hereinafter Susil).
Regarding claims 8 and 19, Koblish is silent on the filter. Susil teaches an ablating/mapping catheter that includes coupling a high pass filter, configured to block the lower frequency and to pass the ablation frequency, between the microelectrode and the distal tip ([0037]-[0046] which details filtering out high frequencies along the conductive path). It would have been obvious to the skilled artisan before the effective filing date to utilize the filter as taught by Susil with the device of Koblish as predictable results would have ensued (filtering out of signals via known processes). Susil teaches the filtering components can be bandpass, high-pass, or low-pass depending on the use of the device at that time ([0039]).
Claims 9 and 20 is rejected under 35 U.S.C. 103 as being unpatentable over Koblish in view of Susil, as applied to claim 19, and in further view of Fang et al. US Publication 2012/0095362 (hereinafter Fang).
Regarding claims 9 and 20, Koblish discloses configuring a handle for a used of the apparatus to hold the insertion tube (30) and though details placing other electronic components within the handle ([0047], printed circuit board) and connecting the wiring to a high pass filter for filtering out the ablation frequencies (rendered obvious above via Susil regarding the high pass filter), does not mention the filter 17 is also within the handle itself. Fang teaches a catheter with the filter and other electronic components housed within the handle of the catheter (Figure 8, [0055]-[0056]), It would have been obvious to the skilled artisan at the time of invention to utilize the handle as taught by Fang with the device of Koblish in order to reduce the overall amount of wiring and by extension reduce signal degradation ([0009][0053]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Brian M Antiskay whose telephone number is (571)270-5179. The examiner can normally be reached M-F 10am-6pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Stoklosa can be reached at 571-272-1213. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BRIAN M ANTISKAY/Examiner, Art Unit 3794
/JOSEPH A STOKLOSA/Supervisory Patent Examiner, Art Unit 3794