DETAILED ACTION
This action is pursuant to the claims filed on 08/17/2026. Claims 1-2, 4-12, 14-19 are pending. A first action on the merits of claims 1-2, 4-12, 14-19 is as follows.
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 .
Response to Amendment
Applicant’s amendment to the claims are acknowledged and entered accordingly.
Response to Arguments
Applicant's arguments filed 08/17/2026 have been fully considered but they are not persuasive. Applicant’s amendment to independent claim 1 reciting “a second spine having a second form comprising a mirror counterpart of the first form” … “a third spine having a third form comprising a different form than the first form and the second form” is not sufficient to overcome the rejection of record.
The Examiner notes the applicant has limited the “second form” of the claim as “comprising a mirror counterpart of the first form”. This results in the claim reciting two distinct forms: “a first form” of the first spine and “a second form” of the second spine being a mirror-counterpart of the first form, such that the first form and the second form are necessarily different. The Buysman reference discloses struts 55a and 55c in Figure 4 having forms that are mirror counterparts of each other.
The claim further recites “a third spine having a third form comprising a different form than the first form and the second form”. The examiner is of the position that the strut 55b defines the third spine with a third form. Buysman discloses the third strut 55b as not being a mirror counterpart to struts 55a and 55c as shown in Figures 3 and 4. As a result, the “form” of the third strut 55b is necessarily a different form than the first form and the second form as claimed.
For the purposes of expedited prosecution, the Examiner is of the position that if the claims defined the first form and the second form as being the same form with the first and second spines/forms being oriented in a mirrored fashion relative to one another, while also reciting the third form as different from the first and second form, then the Buysman reference would no longer read upon this theoretical claim.
Applicant’s arguments with respect to the rejection(s) of claim(s) 5-7 and 11-16 under 35 USC 102 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-2, 4, 8 and 17 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Buysman (U.S. PGPub No. 2015/0011991).
Regarding claim 1, Buysman teaches A catheter comprising: an elongated catheter body (Fig 1); and an electrode assembly distal of the catheter body (Fig 1-2 electrode assembly 33), the electrode assembly comprising a first spine having a first form, a first-spine distal end and a first-spine exposed total length (Fig 3 strut 55A with a first form and first length and first distal end), a second spine having a second form comprising a mirror counterpart of the first form (Fig 4, strut 55c is a mirror counterpart to strut 55a; examiner notes electrodes 57 define a separate structure that is not part of the form of the spine), a second-spine distal end connected to the first-spine distal end and a second-spine exposed total length equal to the first-spine exposed total length (Figs 3-4, strut 55c connected to strut 55a via tip 67; [0066] disclosing same length), and a third spine having a third form (Figs 3-4 strut 55b has third form) comprising a different form than the first form and second form (Figs 3-4, strut 55b has a form different than struts 55a and 55c based at least on the fact that strut 55b projects radially in a different direction than struts 55a and 55c; Examiner notes this interpretation is reasonable given that the claims limit the second form based upon the direction(s) in which the spine extends (i.e., second form comprises a mirror counterpart of the first form)), a third-spine distal end, and a third-spine exposed total length equal to the first-spine exposed total length (Fig 3, strut 55b connected at a distal end at tip 67 to other spines and each having the same length as disclosed in [0066]).
Regarding claim 2, Buysman teaches in which the first spine includes a first distal portion comprising a first convergent distal portion and the first distal end, the second spine includes a second distal portion comprising a second convergent distal portion and the second distal end, and the third spine includes a third distal portion comprising a third convergent distal portion and the third distal end (Fig 3 each strut has a convergent distal portion at the distal end).
Regarding claims 4, Buysman teaches in which the electrode assembly further comprises a fourth spine having a fourth form comprising a mirror counterpart of the form ([0066] fourth spine 55d is a mirror counterpart of third spine 55b to maintain symmetry of assembly 33 and four struts 55a-d).
Regarding claim 8, Buysman teaches in which the first spine and the second spine are each covered by a non-conductive covering ([0060] flange 87 with four slots 89 to receive proximal end of each strut defines a non-conductive covering).
Regarding claim 17, Buysman teaches in which the first spine and the second spine are each covered by a non-conductive covering ([0060] flange 87 with four slots 89 to receive proximal end of each strut defines a non-conductive covering).
Claim Rejections - 35 USC § 103
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) 9-10 and 18-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Buysman in view of Grunewald (U.S. PGPub No. 2013/0053841).
Regarding claims 9-10 and 18-19, Buysman teaches the device of claims 8 and 11 respectivley as stated above. Buysman further teaches electrodes disposed on the fist and second spines (see Fig 3).
Buysman fails to teach in which at least one ring electrode is disposed on the first spine and on the second spine; in which at least one irrigated ring electrode is disposed on the first spine and on the second spine.
In related prior art, Grunewald teaches a similar catheter comprising similar ring electrodes in which at least one ring electrode is disposed on the first spine and on the second spine; in which at least one irrigated ring electrode is disposed on the first spine and on the second spine (Fig 10, [0032] irrigated ring electrodes R). Therefore 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 electrodes of Buysman in view of Grunewald to incorporate the electrodes as irrigated ring electrodes to arrive at the device of claims 9-10 and 18-19. Providing the electrodes as irrigated ring electrodes would advantageously reduce electrode temperature during ablation to minimize the formation of char and coagulum (Grunewald [0005]).
Allowable Subject Matter
Claims 5-7 and 11-16 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.
The following is a statement of reasons for the indication of allowable subject matter: Regarding claims 5-7 and 11-16, the Buysman and Grunewald references fail to teach the fourth-spine distal portion comprising fourth-spine convergent distal portion and a fourth-spine divergent distal portion as recited in claim 5. Similarly, the references fail to teach “a third-spine divergent proximal portion and a third-spine convergent proximal portion” as recited in claim 11. Any such modification of Buysman to incorporate the convergent and divergent portions of the fourth or third spine as respectively recited would necessarily rely on impermissible hindsight benefit using information solely gleaned from the applicant’s specification. Even assuming a combination could be made to provide the claimed divergent and convergent portions of claims 5 and 11, then the resulting combination would fail to read upon the first through third spines have an equal total exposed length. No other pertinent prior art reference were found that would overcome the above deficiencies. Therefore, there is no motivation (either in these references or elsewhere in the art) for making such specific and significant modifications thereto to arrive at claim(s) 5-7, 11-16.
.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 1-2, 4-6, 8-12, 14-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of U.S. Patent No. 10,575,742 in view of Buysman. Although the claims at issue are not identical, they are not patentably distinct from each other because the reference claims anticipate and/or make obvious the instant claims in view of Buysman.
Claims 7 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of U.S. Patent No. 10,575,742 in view of Buysman.
Regarding claim 7, the reference patent recites wherein each spine has a distal end connected to the distal end of at least one other spine, but fails to claim the fourth distal portion includes a fourth distal end connected to the first distal end, the second distal end, and the third distal end.
Buysman teaches in which the fourth distal portion includes a fourth distal end connected to the first distal end, the second distal end, and the third distal end (Fig 3 all four distal ends converge and connect at head 71). Therefore 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 reference patent in view of Buysman to incorporate the first through fourth distal ends connected to each other to arrive at claim 7. Doing so would be obvious to one of ordinary skill in the art to yield predictable results therein.
Claims 1-2, 4-12, 14-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of U.S. Patent No. 10,602,948 in view of Buysman. Although the claims at issue are not identical, they are not patentably distinct from each other because the reference claims anticipate and/or make obvious the instant claims in view of Buysman.
Claims 1-2, 4-12, 14-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-21 of U.S. Patent No. 11,116,436 in view of Buysman. Although the claims at issue are not identical, they are not patentably distinct from each other because the reference claims anticipate and/or make obvious the instant claims in view of Buysman
Conclusion
THIS ACTION IS MADE FINAL. 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 Adam Z Minchella whose telephone number is (571)272-8644. The examiner can normally be reached M-Fri 7-3 EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ADAM Z MINCHELLA/Primary Examiner, Art Unit 3794
Prosecution Insights