DETAILED ACTION
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
2. Acknowledgement is made of the timely response to the 10/16/2025 Non-Final Rejection, filed 12/11/2025.
Response to Amendment
3. Acknowledgement is made of the amendment(s) to claim 1 and the addition of new claims 16-20 in the Request for Reconsideration filed 12/11/2025.
Double Patenting
4. 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.
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Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of U.S. Patent No. U.S. Patent No. US 12036042 B2 in view of US 10694999 B2.
Regarding claims 1, 9 & 11-15 US 12036042 B2 teaches at least one substrate layer of an elastically deformable material, the substrate layer extending longitudinally between spaced apart ends thereof; a conductive layer disposed over the at least one substrate layer, the conductive layer including an electrically conductive material adapted to form a strain gauge having anistropic or isotropic compliance; the given direction is longitudinal or radial; advancing the sensor apparatus of claim 1 into a patient; mounting the sensor apparatus to a biological surface of the subject; and generating, by the sensor apparatus, one or more strain measurements associated with the biological surface; the biological surface is a vessel wall; monitoring a condition internal to the biological surface; the monitoring is performed by the measurement system of the sensor apparatus. [Claims 1-8]
Regarding claim 1 U.S. Patent No. US 12036042 B2 as modified by US 10694999 B2 does not explicitly disclose the sensor apparatus is configured to be wrapped at least partially around a tubular structure.
It would have been obvious to a person having ordinary skill in the art of deformable piezoresistive sensing devices before the effective filing date of the claimed invention to interpret and / or utilize the deformable sensing devices taught by US 12036042 B2 as modified by US 10694999 B2 to be capable of being structurally affixed to a graft and / or tubular structure for the purpose of monitoring biological conditions. Moreover, it would appear that this feature could have been claimed in the deformable sensing devices disclosed by Patent No. US 12036042 B2 as modified by US 10694999 B2 since they both possess the same structural features.
Regarding claims 2 & 3 US 12036042 B2 does not explicitly teach a measurement system connected to the sensor apparatus, the measurement system including circuitry configured to measure the electrical resistance between a first electrical contact and a second electrical contact of the sensor apparatus and measured electrical resistance comprises measurement data that is stored in a memory of the measurement system. US 10694999 B2 teaches a measurement system connected to the sensor apparatus, the measurement system including circuitry configured to measure the electrical resistance between a first electrical contact and a second electrical contact of the sensor apparatus and measured electrical resistance comprises measurement data that is stored in a memory of the measurement system..
It would have been obvious to a person having ordinary skill in the art of resistive sensors before the effective filing date of the claimed invention to modify the sensor apparatus as taught by US 12036042 B2 with a measurement system connected to the sensor apparatus, the measurement system including circuitry configured to measure the electrical resistance between a first electrical contact and a second electrical contact of the sensor apparatus and associated data as taught by US 10694999 B2 for the purpose of accurately determining and transmitting a monitored resistance within a resistive sensing device .
Regarding claim 4 does not explicitly teach a processor adapted to process the measurement data to provide processed measurement data, such as pressure and/or blood flow through a site where the sensor apparatus is mounted.
It would have been obvious to a person having ordinary skill in the art of resistive sensors before the effective filing date of the claimed invention to modify the sensor apparatus with respect to the claimed measurement system with a processor adapted to process the measurement data in order to provide processed measurement data, such as pressure and/or blood flow through a site where the sensor apparatus is mounted for the purpose of accurately determining and transmitting a monitored resistance within a resistive sensing device .
Regarding claims 5, 6 & 17 US 12036042 B2 does not explicitly teach a conductive layer of the sensor apparatus forms a piezoresistive strain gauge and the piezoresistive strain gauge has an electrical resistance between respective ends of the conductive layer that varies based on deformation of the conductive layer in at least a longitudinal direction. US 10694999 B2 teaches a conductive layer of the sensor apparatus forms a piezoresistive strain gauge and the piezoresistive strain gauge has an electrical resistance between respective ends of the conductive layer that varies based on deformation of the conductive layer in at least a longitudinal direction. [Claim 16]
It would have been obvious to a person having ordinary skill in the art of resistive sensors before the effective filing date of the claimed invention to modify the sensor apparatus as taught by US 12036042 B2 with a conductive layer of the sensor apparatus forming a piezoresistive strain gauge and the piezoresistive strain gauge having an electrical resistance between respective ends of the conductive layer that varies based on deformation of the conductive layer in at least a longitudinal direction as taught by US 10694999 B2 for the purpose of accurately determining and transmitting a monitored resistance within a resistive sensing device.
Regarding claims 7 & 18 US 12036042 B2 does not explicitly teach the at least one substrate layer further comprises a plurality of substrate layers of the elastically deformable material, the conductive layer being sandwiched between at least two substrate layers. US 10694999 B2 teaches the at least one substrate layer further comprises a plurality of substrate layers of the elastically deformable material, the conductive layer being sandwiched between at least two substrate layers. [Claim 2]
It would have been obvious to a person having ordinary skill in the art of resistive sensors before the effective filing date of the claimed invention to modify the sensor apparatus as taught by US 12036042 B2 with the at least one substrate layer further comprising a plurality of substrate layers of the elastically deformable material, the conductive layer being sandwiched between at least two substrate layers as taught by US 10694999 B2 for the purpose of accurately determining and transmitting a monitored resistance within a resistive sensing device.
Regarding claims 8 & 19 US 12036042 B2 does not explicitly teach the elastically deformable material of each of the substrate layers comprises polydimethylsiloxane (PDMS), and the electrically conductive material of the conductive layer comprises electrically conductive particles integrated with PDMS. US 10694999 B2 teaches the elastically deformable material of each of the substrate layers comprises polydimethylsiloxane (PDMS), and the electrically conductive material of the conductive layer comprises electrically conductive particles integrated with PDMS. [Claim 3]
It would have been obvious to a person having ordinary skill in the art of resistive sensors before the effective filing date of the claimed invention to modify the sensor apparatus as taught by US 12036042 B2 with the elastically deformable material of each of the substrate layers comprising polydimethylsiloxane (PDMS), and the electrically conductive material of the conductive layer comprises electrically conductive particles integrated with PDMS as taught by US 10694999 B2 for the purpose of accurately determining and transmitting a monitored resistance within a resistive sensing device.
Regarding claim 10 US 12036042 B2 does not explicitly teach each of the substrate layers and the conductive layer includes a plurality of substantially-parallel strands of its material arranged to extend in a direction that is parallel or transverse to the given direction, the direction of the strands and spacing between strands in each respective layer defining the anisotropic compliance of the apparatus along respective strand directions. US 10694999 B2 teaches each of the substrate layers and the conductive layer includes a plurality of substantially-parallel strands of its material arranged to extend in a direction that is parallel or transverse to the given direction, the direction of the strands and spacing between strands in each respective layer defining the anisotropic compliance of the apparatus along respective strand directions. [Claim 5]
It would have been obvious to a person having ordinary skill in the art of resistive sensors before the effective filing date of the claimed invention to modify the sensor apparatus as taught by US 12036042 B2 with each of the substrate layers and the conductive layer that includes a plurality of substantially-parallel strands of its material arranged to extend in a direction that is parallel or transverse to the given direction, the direction of the strands and spacing between strands in each respective layer defining the anisotropic compliance of the apparatus along respective strand directions as taught by US 10694999 B2 for the purpose of accurately determining and transmitting a monitored resistance within a resistive sensing device.
Regarding claim 20 US 12036042 B2 does not explicitly teach the plurality of substrate layers and the conductive layer are configured to exhibit anisotropic compliance to enable deformation along a given direction and inhibit deformation along a direction transverse to the given direction. US 10694999 B2 teaches the plurality of substrate layers and the conductive layer are configured to exhibit anisotropic compliance to enable deformation along a given direction and inhibit deformation along a direction transverse to the given direction [Claim 4]
It would have been obvious to a person having ordinary skill in the art of resistive sensors before the effective filing date of the claimed invention to modify the sensor apparatus as taught by US 12036042 B2 with a plurality of substrate layers and conductive layer configured to exhibit anisotropic compliance to enable deformation along a given direction and inhibit deformation along a direction transverse to the given direction.as taught by US 10694999 B2 for the purpose of accurately determining and transmitting a monitored resistance within a resistive sensing device .
Response to Arguments
5. Applicant’s arguments, see pages 1-2 of the remarks, filed 12/11/2025, with respect to claims 1-2 have been fully considered and are persuasive. The 35 USC 102(A)(1) rejection of claims 1-2 has been withdrawn.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 ANDRE J ALLEN whose telephone number is (571)272-2174. The examiner can normally be reached Mon-Fri. 9am-5PM.
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/ANDRE J ALLEN/Primary Examiner, Art Unit 2855