X30DETAILED 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 .
Election/Restrictions
Claims 18-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected method, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 11/17/2025.
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.
Claim(s) 1-7, 9-10, and 12-17 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Chi Sing et al. (US 2011/0313288 A1).
Regarding claim 1, Chi Sing et al. (‘288) teach a marking device for implantation into a tissue, comprising: a support structure configured to transition between a radially compressed state and an axially compressed state, the support structure comprising a plurality of substantially rectangular segments bounded by first and second tubular ends, the plurality of substantially rectangular segments extending along a longitudinal axis of the marking device and each having a first end and a second end, at least one of the first ends and the second ends of the plurality of substantially rectangular segments terminating at one of the first and second tubular ends of the support structure (see [0114], [0146], [0150]-[0152]; and Figs. 23A-23D) wherein: when the support structure is in the radially compressed state, the plurality of substantially rectangular segments extend substantially parallel to one another along the longitudinal axis of the marking device (see [0121], [0148]; and Figs. 23A-23D, 29A-29B), and when the support structure is in the axially compressed state, at least a portion of the plurality of substantially rectangular segments flair radially outward such that a central portion of the support structure has a curved shape encompassing an interior space bounded by the first and second tubular ends (see [0114], [0146], [0150]-[0152], [0162]; and Figs. 23A-23D).
Regarding claim 2, Chi Sing et al. (‘288) teach the marking device of claim 1, wherein, when the support structure is in the axially compressed state, the central portion of the support structure has a circular cross-section that varies in diameter along a length of the support structure between the first and second tubular ends (see [0114], [0146], [0150]-[0152]; and Figs. 23A-23D).
Regarding claim 3, Chi Sing et al. (‘288) teach the marking device of claim 1, wherein, when the support structure is in the axially compressed state, a diameter of a cross-section of the central portion of the support structure is larger than a diameter of a cross-section at each of the first and second tubular ends (see [0114], [0146], [0150]-[0152]; and Figs. 23A-23D).
Regarding claim 4, Chi Sing et al. (‘288) teach the marking device of claim 1, wherein a diameter of a cross-section taken at the first tubular end is the same as a diameter of a cross-section taken at the second tubular end (see [0114], [0146], [0150]-[0152]; and Figs. 23A-23D).
Regarding claim 5, Chi Sing et al. (‘288) teach the marking device of claim 1, wherein, when the support structure is in the axially compressed state, a cross-section of the central portion of the support structure, taken parallel to a longitudinal axis of the support structure, has a circular shape (see [0121], [0148], [0162]; and Figs. 23A-23D, 29A-29B).
Regarding claim 6, Chi Sing et al. (‘288) teach the marking device of claim 1, wherein, when the support structure is in the axially compressed state, a cross-section of the central portion of the support structure, taken parallel to a longitudinal axis of the support structure, has an oval shape (see [0114], [0146], [0150]-[0152]; and Figs. 23A-23D).
Regarding claim 7, Chi Sing et al. (‘288) teach the marking device of claim 1, wherein the support structure is textured (see [0145]-[0146]).
Regarding claim 9, Chi Sing et al. (‘288) teach the marking device of claim 1, wherein each of the first and second tubular ends comprise a continuous sheet of material (see [0114], [0146], [0150]-[0152]; and Figs. 23A-23D).
Regarding claim 10, Chi Sing et al. (‘288) teach the marking device of claim 9, wherein the plurality of substantially rectangular segments are separated from one another by slits in the continuous sheet of material (see [0114], [0146], [0150]-[0152]; and Figs. 23A-23D).
Regarding claim 12, Chi Sing et al. (‘288) teach the marking device of claim 1, wherein a diameter of the support structure in the axially compressed state is less than about 8 mm (see [0144]).
Regarding claim 13, Chi Sing et al. (‘288) teach the marking device of claim 12, wherein the diameter of the supports structure in the axially compressed state is about 5 mm (see [0144]).
Regarding claim 14, Chi Sing et al. (‘288) teach the marking device of claim 1, wherein a diameter of the support structure in the radially compressed state is less than about 3 mm (see [0144]).
Regarding claim 15, Chi Sing et al. (‘288) teach the marking device of claim 1, wherein the support structure is made from nitinol (see [0166]).
Regarding claim 16, Chi Sing et al. (‘288) teach the marking device of claim 1, wherein the support structure is self-expanding (see [0121], [0148]; and Figs. 23A-23D, 29A-29B).
Regarding claim 17, Chi Sing et al. (‘288) teach an implantation system comprising: the marking device of claim 1; and an implantation device comprising a cannula, the marking device being positionable within the cannula and configured to be moved out of the cannula by actuation of the implantation device (see [0121], [0148]; and Figs. 23A-23D, 29A-29B).
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.
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) 8 and 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Chi Sing et al. (US 2011/0313288 A1) in view of Zaver et al. (US 2007/0135826 A1).
Regarding claim 8, Chi Sing et al. (‘288) teach the marking device of claim 1, but fail to explicitly teach wherein the support structure is laser engraved. However, Zaver et al. (‘826) from the same field of endeavor do teach wherein the support structure is laser engraved (see [0082]-[0083]). It would be obvious to one of ordinary skill in the art at the time of the invention to combine the invention of Chi Sing et al. with the features of Zaver et al. for the benefit of precise and accurate material structure.
Regarding claim 11, Chi Sing et al. (‘288) teach the marking device of claim 10, but fail to explicitly teach wherein the slits between the plurality of substantially rectangular segments comprise laser cuts in the continuous sheet of material. Zaver et al. (‘826) from the same field of endeavor do teach slits between segments comprise laser cuts in the continuous sheet of material (see [0082]-[0083]). It would be obvious to one of ordinary skill in the art at the time of the invention to combine the invention of Chi Sing et al. with the features of Zaver et al. for the benefit of precise and accurate material structure.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARK REMALY whose telephone number is (571)270-1491. The examiner can normally be reached Mon - Fri 9:00 - 6:00.
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/MARK D REMALY/Primary Examiner, Art Unit 3797