DETAILED ACTION
Election/Restrictions
Applicant’s election without traverse of Group 1, claims 2-13 in the reply filed on 3/26/2026 is acknowledged.
Claims 14-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 3/26/2026.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
Claim Rejections - 35 USC § 102
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.
Claim Rejections - 35 USC § 103
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.
Claim(s) 2-3, 6-10, 12 is/are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under Tieu et al U.S 2010/0268204.
Claim 2: Tieu et al disclose an endovascular heat delivery system 600 as best seen in fig. 13, comprising: a plurality of coil sections 604/602 having a plurality of coil diameters, wherein the plurality of coil section comprises: a first coil section at 604 having a first coil diameter; and a second coil section at 602 having a second coil diameter ; a first wire at 608 connected to a distal region of the first coil section; and a second wire at 610 connected to a proximal region of the first coil section, wherein the first and second wires are electrically connected to a power source (it is noted that a heat generating apparatus (generically referred to as the heater, and a power source to apply energy to the heater, see paragraphs 8,14), wherein the first and second wires are positioned radially within the second coil section, and wherein the first wire 608 is positioned radially outside of the first coil section 604 as best seen in fig. 13. Note that the tether 606 are preferably secured to an outer structural coil 602 of the delivery device 600. For example, the ends of the tether 606 can be tied, glued (e.g., with U.V. cured adhesive), welded or clamped. It should be understood that the ends of the tether 606 can be secured at almost any location along the length of the structural coil 602, as long as those locations allow at least a portion of the tether 606 to pass through the heater coil 604. For example, both ends of the tether 606 can be secured proximal to the heater coil 604. In another example, one end of the tether can be secured proximal to heater coil 604 and another end can be secured distal to the heater coil 604 (see paragraph 120). Alternatively, it would have been obvious that the above description of Tieu et al device show that the second coil with the diameter that is greater than the first coil diameter, thus, claim 2 is unpatentable over Tieu et al.
Claims 3, 6: Tieu et al disclose further comprising a third coil section positioned between the first and second coil sections (it is noted that in other words, the individual loops 306A contact each other when the heater coil 306 is not stretched or radially expanded. Preferably, the heater coil expander 502 may have a coiled shape, similar to the heater coil 306 and as seen in FIG. 10. Alternately, the heater coil expander may have a continuous, tubular shape with helical ridges similar to the individual coil shapes of the expander 502 in FIG. 10. It should be understood that a variety of different expander shapes that expand the loops or coils 306A of the heater coil 306 from each other); wherein the first, the second, and the third coil sections are parts of an integral coil (it is noted that multiple coils or loops at 306A, fig. 10).
Claims 7-8: Tieu et al disclose wherein when in a heating configuration, the power source delivers electricity to the first coil section (see paragraphs 8, 14); wherein when in the heating configuration, the electricity delivered from the power source heats at least a portion of the first coil section at 604..
Claims 9,10,12: Tieu et al disclose wherein the first and second wires connect to the first coil section via soldering (see paragraphs 11,13); further comprising: a sleeve (it is noted that an electrical and/or thermally insulating cover or sleeve may be placed over the heater. The sleeve may be made from insulating materials such as polyester (PET), Teflon, block copolymer, silicone, polyimide, polyamide, and the like, see paragraph 17) positioned over at least a portion of the first coil section, wherein the sleeve comprises an insulation material that prevents at least some heat generated by the first coil section from dissipating over a period of time (see paragraph 46); wherein the sleeve comprises at least one of a polymer, a polyimide, a polyethylene, Teflon, or paralyne (see paragraph 88).
Claim Rejections - 35 USC § 103
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.
Claim(s) 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tieu et al.
Claim 13: Tieu et al disclose the invention substantially as claimed but is silent regarding the sleeve is made out of carbon colorant impregnated polymer material. It would have been obvious to one having ordinary skill in the art at the time the invention was made to construct the device that included carbon colorant impregnated polymer material, since it has been held to be within the general skill of a worker in the art to select a known material on the basic of its suitability for the intended use or as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
Allowable Subject Matter
Claims 4-5, 11 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claim 4: The prior arts fail to disclose or reasonably suggest the claimed including a first coil section further including a fourth coil section that positioned within the first coil section, wherein the fourth coil section has a third diameter that is smaller than the first coil diameter.
Claim 5 is also allowed by virtue of its dependency from claim 4.
Claim 11: The prior arts fail to disclose or reasonably suggest the claimed including a first coil section further including a fourth coil section that positioned within the first coil section, wherein the fourth coil section has a third diameter that is smaller than the first coil diameter; wherein a sleeve is positioned over the fourth coil section.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VI X NGUYEN whose telephone number is (571)272-4699. The examiner can normally be reached Monday-Friday (6:30-4:30).
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/VI X NGUYEN/Primary Examiner, Art Unit 3771
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