CTNF 18/955,519 CTNF 85841 DETAILED ACTION Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. Claim Objections 07-29-01 AIA Claim 1 is objected to because of the following informalities: line 2 should read “…a proximal end coupled…” . Appropriate correction is required. 07-29-01 AIA Claim 10 is objected to because of the following informalities: line 1 should read “A method of using the end-effector medical device of claim 9” for clarity purposes . Appropriate correction is required. 07-29-01 AIA Claim 15 is objected to because of the following informalities: lines 1-2 can be amended to read “a color of each of the second plurality of indicia is [[a]] different color than a color of each of the first plurality of indicia” for clarity purposes which will avoid any antecedent issues . Appropriate correction is required Claim Rejections - 35 USC § 112 07-30-02 AIA The following is a quotation of 35 U.S.C. 112(b): (b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention. The following is a quotation of 35 U.S.C. 112 (pre-AIA), second paragraph: The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention. 07-34-01 Claims 6, 17-20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. Claim 6 recites the limitation "wherein both of the first plurality of indicia and the second plurality of indicia includes a physical attribute” in lines 1-12. However, claim 6 is dependent off of claim 5 which claims “each indicia of the first plurality of indicia and/or each indicia of the second plurality of indicia includes a physical attribute” in lines 1-2. It is unclear if the “a physical attribute” of claim 6 is a different physical attribute of claim 5 or referring back to the physical attribute of claim 5. Claim 17 recites the limitation "wherein the first plurality of indicia and the second plurality of indicia alternate along a length of each leg of the plurality of expandable legs " in lines 10-11. However lines 6-7 states “at least one leg of the plurality of expandable legs including a plurality of first indicia and a plurality of second indicia”. It is unclear if one leg will have the plurality of first and second indica or if each leg will have the plurality of first and second indicia. Claim Rejections - 35 USC § 103 07-20-aia AIA 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. 07-23-aia AIA 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 nonobviousness. 07-21-aia AIA Claim s 1-5, 7-10 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Publication 2006/0100641 to Teague in view of U.S. Patent Publication 2017/0325829 to Chae and/or U.S. Patent Publication 2009/0162531 to Nesbitt . As to claim 1, Teague discloses a medical device, comprising: a handle assembly (paragraph 49, 56, any known handle can be used, see at least Chae figure 1 as evidence) including an actuator (paragraph 49, 56, any known actuation mechanism can be used, see at least Chae figure 1 as evidence); a sheath (15) having a proximal coupled with the actuator (paragraph 49, 56, the sheath will be coupled to the handle which includes the actuator); and an end-effector (20) moveable relative to the sheath between an extended configuration (paragraph 34) and a retracted configuration (paragraph 34), the end-effector including a plurality of expandable legs (21), wherein the end-effector is a monolithic component formed from a tube (paragraph 29, 35). It is to be noted a comparison of the recited process with the prior art processes does not serve to resolve the issue concerning patentability of the product. Whether a product is patentable depends on whether it is known in the art or it is obvious, and is not governed by whether the process by which it is made is patentable. Teague discloses the retrieval assembly is made of the same piece of material as the elongate member, which can be a tube. Therefore Teague will be able to read on the “monolithic component formed from a tube” limitations. However Teague is silent about at least one leg of the plurality of expandable legs including a plurality of first indicia and a plurality of second indicia. Teague does disclose that the retrieval assembly can have markings (paragraph 45) and can have textured surfaces (paragraph 38). Chae teaches a similar device (retrieval device, abstract) having a plurality of first indicia and a plurality of second indicia on at least on expandable leg (11a,b, c, figure 2; 13a,b,c,d, figure 4; the space between the markings can also be an indicia) in order to identify the end-effector and the size thereof. Nesbitt teaches a similar device (color marking a device, abstract) having a plurality of first indicia and a plurality of second indicia (figure 13, paragraph 81, 82, 83, space between the colorings/markings can also be an indicia for instance figure 6, 11; and/or figure 25-27, paragraph 104-109) for the purpose of differentiating segments of the device. Nesbitt teaches that different colorings can be applied to a leg-like element which can help differentiate the length of the device. Teague does teach the end-effector can have markings. Both Chae and Nesbitt teaches multiple of different embodiments and interpretations of using a plurality first and second indicia along a length of a leg-like element. Using a plurality of first and second indicia along an expandable leg as the markings of Teague will help identify and/or differentiate segments the end-effector. It would have been obvious to one of ordinary skill in the art before the effective filing date to have at least one leg of the plurality of expanding legs of Teague include a plurality of first indicia and a plurality of second indicia in order to identify and/or differentiated the segments of the end-effector. As to claim 2, with the device of Teague and Chae/Nesbitt above, Teague discloses the end-effector comprises a shape memory material (paragraph 37), the end-effector being formed by laser cutting or chemical etching. It is to be noted the claim is “a product-by-process” claim with respect to “forming the end-effector by laser-cutting or chemical etching”. A comparison of the recited process with the prior art processes does not serve to resolve the issue concerning patentability of the product. Whether a product is patentable depends on whether it is known in the art or it is obvious, and is not governed by whether the process by which it is made is patentable. Teague reads on the monolithic shape memory material and therefore can read on the claim limitations. As to claim 3, with the device of Teague and Chae/Nesbitt above, Nesbitt further teaches a length of each of the first plurality of indicia and a length of each of the second plurality of indicia is substantially the same (paragraph 13, 17, figure 10,11). Nesbitt teaches marks can be of a same length, which can be applied to the plurality of first and second indicia. If it would not be known, it would have been obvious to one of ordinary skill in the art before the effective filing date to have the length of each of the first plurality indicia and second plurality of indicia have the substantially same length in order for unitary consistent markings. As to claim 4, with the device of Teague and Chae/Nesbitt above, Nesbitt further teaches the first plurality of indicia and the second plurality of indicia alternate along a length (figure 13, 280 alternates with the other colors) of the at least one leg (of Teague). As to claim 5, with the device of Teague and Chae/Nesbitt above, Nesbitt further teaches each of the first indicia of the first plurality of indicia and/or each indicia of the second plurality of indicia includes a physical attribute (paragraph 56, the wire will be etched/roughened where the color is applied), extending radially outwards or inwards relative to a longitudinal axis of the at least one leg. The roughened surface will have the physical attribute extending in a direction, which will be either outward or inward. Further Teague does disclose the end-effector can have physical attributes (paragraph 38). As to claim 7, with the device of Teague and Chae/Nesbitt above, Nesbitt further teaches the first plurality of indicia includes the physical attribute and the second plurality of indicia does not include a physical attribute. If the indicia is between the colorings, then the indicia will not have the physical attribute since it is not etched to apply the coating. Additionally/Alternatively, claim 7 states that the second plurality of indicia does not include “a physical attribute”. Since the term is “a physical attribute” it can be interpreted to be another/different/new type of physical attribute. A different type of physical attribute may be included in the second plurality of indicia. As to claim 8, with the device of Teague and Chae/Nesbitt above, Chae further teaches each of the first plurality of indicia is a first color and each of the second plurality of indica is a second color, different from the first color (paragraph 34). Nesbitt also teaches the different colors (paragraph 81). As to claim 9, with the device of Teague and Chae/Nesbitt above, Nesbitt further teaches each of the first plurality of indicia includes a friction surface with a first coefficient of friction and each of the plurality of second indicia include a frictional surface with a second frictional surface with a second coefficient of friction, different from the first coefficient of friction (paragraph 105-109, figure 25-27). As to claim 10, Teague as modified by Chae/Nesbitt discloses a method of using the end-effector of claim 9, comprising capturing a target within the end-effector (paragraph 37), manipulating an orientation of the target within the end-effector via the frictional surfaces of the plurality of first indicia and the plurality of second indicia (paragraph 38-39, 40, 54-59). What the orientation is with respect to or if/how the orientation is changed is not further claimed, therefore the retrieval of the device will manipulate the orientation since it is grasped, entrapped, and removed . 07-22-aia AIA Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Publication 2006/0100641 to Teague in view of U.S. Patent Publication 2017/0325829 to Chae and/or U.S. Patent Publication 2009/0162531 to Nesbitt as applied to claim s 1- 5, 7-10 above, and further in view of U.S. Patent Publication 2016/0256179 to Walish . As to claim 6, Teague as modified by Chae/Nesbitt discloses the device above including both the first plurality of indicia and the second plurality of indicia includes a physical attribute (Nesbitt teaches the etching for the coloring, paragraph 56, as well as Teague disclose the textured surfaces, paragraph 37), but is silent about the physical attribute of each of the first plurality of indicia is different from the physical attribute of each of the second plurality of indicia. Walish teaches a similar device (retrieval device, abstract) having first and second indica each with different physical attributes (paragraph 36, etching patterns can be different) for the purpose of differentiating the markings. It would have been obvious to one of ordinary skill in the art before the effective filing date to have the physical attribute of each of the first plurality of indicia is different from the physical attribute of each of the second plurality of indicia in order to differentiate the indicia . 07-21-aia AIA Claim s 11-20 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Publication 2006/0100641 to Teague in view of U.S. Patent Publication 2017/0325829 to Chae and/or U.S. Patent Publication 2009/0162531 to Nesbitt and in view of U.S. Patent Publication 2016/0256179 to Walish . As to claim 11, Teague discloses a medical device, comprising: a handle assembly (paragraph 49, 56, any known handle can be used, at least as evidenced by Chae, figure 1) including an actuator (paragraph 49, 56, any known actuation mechanism can be used, at least as evidenced by Chae, figure 1); a sheath (15) having a proximal end coupled with the actuator (paragraph 49, 56, the sheath will be coupled to the handle which includes the actuator); and an end-effector (20) moveable relative to the sheath between an extended configuration (paragraph 34) and a retracted configuration (paragraph 34), the end-effector including a plurality of expandable legs (21), wherein the end-effector comprises a shape memory material (paragraph 37) but is silent about each of the plurality of expandable legs including a plurality a plurality of first indicia and a plurality of second indicia, wherein each of the first plurality of indicia and/or each of the second plurality of indicia includes a physical attribute extending radially outwards or inwards relative to a longitudinal axis of the respective leg. Teague does disclose that the retrieval assembly can have markings (paragraph 45) and a textured surface (paragraph 38). Chae teaches a similar device (retrieval device, abstract) having a plurality of first indicia and a plurality of second indicia on at least on expandable leg (11a,b, c, figure 2; 13a,b,c,d, figure 4; the space between the markings can also be an indicia) in order to identify the end-effector and the size thereof. Nesbitt teaches a similar device (color marking a device, abstract) having a plurality of first indicia and a plurality of second indicia (figure 13, paragraph 81, 82, 83, space between the colorings/markings can also be an indicia for instance figure 6, 11, figure 25-27, paragraph 104-109; paragraph 56) for the purpose of differentiating segments of the device. Nesbitt teaches that different colorings can be applied to a leg-like element which can help differentiate the length of the device. Further, the wire will be etched/roughened where the color is applied. Therefore the roughened surface will be the physical attribute of the color marking indicia. Walish teaches a similar device having laser etched markings on each expandable leg (figure 6a,b, paragraph 36) to aid in visualizing of the end-effector. Both Chae and Nesbitt teaches multiple of different embodiments and interpretations of using a plurality of first and second indicia along a length of a leg-like element. Walish teaches that markings can be on each leg. Using the plurality of first and second indicia along each expandable leg as the markings of Teague will help identify, visualize, and/or differentiate segments the end- effector. It would have been obvious to one of ordinary skill in the art before the effective filing date to have each leg of the plurality of expanding legs of Teague include a plurality of first indicia and a plurality of second indicia, wherein each of the first plurality of indicia and/or each of the second plurality of indicia includes a physical attribute extending radially outwards or inwards relative to a longitudinal axis of the respective leg in order to identify, visualize, and/or differentiate the segments of the end-effector. As to claim 12, with the device of Teague, Chae/Nesbitt, and Walish above, Nesbitt further teaches a length of each of the first plurality of indicia and a length of each of the second plurality of indicia is substantially the same (paragraph 13, 17, figure 10,11). Nesbitt teaches marks can be of a same length. If it would not be known, it would have been obvious to one of ordinary skill in the art before the effective filing date to have the length of each of the first plurality indicia and second plurality of indicia have the substantially same length in order for unitary consistent markings. As to claim 13, with the device of Teague, Chae/Nesbitt, and Walish above, Nesbitt further teaches the first plurality of indicia and the second plurality of indicia alternate along a length (figure 13, 280 alternates with the other colors) of the at least one leg (of Teague). As to claim 14, with the device of Teague, Chae/Nesbitt, and Walish above, Teague discloses the end-effector is monolithic (paragraph 29, 35). As to claim 15, with the device of Teague and Chae/Nesbitt above, Chae further teaches a color of each of the second plurality of indicia is different color of each of than a color of each of the first plurality of indicia (paragraph 81). Nesbitt also teaches the different colors (paragraph 81). As to claim 16, with the device of Teague, Chae/Nesbitt, and Walish above, Nesbitt further teaches each of the first plurality of indicia includes a friction surface with a first coefficient of friction and each of the plurality of second indicia include a frictional surface with a second frictional surface with a second coefficient of friction, different from the first coefficient of friction (paragraph 105-109, figure 25-27). As to claim 17, Teague discloses a medical device, comprising: a handle assembly (paragraph 49, 56, any known handle can be used, evidenced at least by Chae, figure 1) including an actuator (paragraph 49, 56, any known actuation mechanism can be used, evidenced at least by Chae, figure 1); a sheath (15) having a proximal end coupled with the actuator (paragraph 49, 56, the sheath will be coupled to the handle which includes the actuator); and an end-effector (20) moveable relative to the sheath between an extended configuration (paragraph 34) and a retracted configuration (paragraph 34), the end-effector including a plurality of expandable legs (21), wherein the end-effector is monolithically formed from a shape memory material (paragraph 29, 35, 37). It is to be noted a comparison of the recited process with the prior art processes does not serve to resolve the issue concerning patentability of the product. Whether a product is patentable depends on whether it is known in the art or it is obvious, and is not governed by whether the process by which it is made is patentable. Teague discloses the device can formed from a single material and can be shape memory. However Teague is silent about at least one of the plurality of expandable legs including a plurality of first indicia and a plurality of second indicia, wherein the first plurality of indicia and the second plurality of indicia alternate along a length of each leg of the plurality of expandable legs. Teague does disclose that the retrieval assembly can have markings (paragraph 45) and a textured surface (paragraph 38). Chae teaches a similar device (retrieval device, abstract) having a plurality of first indicia and a plurality of second indicia on at least on expandable leg (11a,b, c, figure 2; 13a,b,c,d, figure 4; the space between the markings can also be an indicia) in order to identify the end-effector and the size thereof. Nesbitt teaches a similar device (color marking a device, abstract) having a plurality of first indicia and a plurality of second indicia (figure 13, paragraph 81, 82, 83, space between the colorings/markings can also be an indicia for instance figure 6, 11, figure 25-27, paragraph 104-109; paragraph 56) for the purpose of differentiating segments of the device. Nesbitt teaches that different colorings can be applied to a leg-like element which can help differentiate the length of the device. Walish teaches a similar device having laser etched markings on each expandable leg (figure 6a,b, paragraph 36) to aid in visualizing of the end-effector. Both Chae and Nesbitt teaches multiple of different embodiments and interpretations of using a plurality of first and second indicia along a length of a leg-like element. Walish teaches that markings can be on each leg. Using the plurality of first and second indicia along each expandable leg as the markings of Teague will help identify, visualize, and/or differentiate segments the end- effector. It would have been obvious to one of ordinary skill in the art before the effective filing date to have at least one leg of the plurality of expanding legs of Teague include a plurality of first indicia and a plurality of second indicia, and the first plurality of indicia and the second plurality of indicia alternate along a length of each leg of the plurality of expandable legs in order to identify, visualize, and/or differentiate the segments of the end-effector. As to claim 18, with the device of Teague, Chae/Nesbitt, and Walish above, Nesbitt further teaches a length of each of the first plurality of indicia and a length of each of the second plurality of indicia is substantially the same (paragraph 13, 17, figure 10,11). Nesbitt teaches marks can be of a same length. If it would not be known, it would have been obvious to one of ordinary skill in the art before the effective filing date to have the length of each of the first plurality indicia and second plurality of indicia have the substantially same length in order for unitary consistent markings. As to claim 19, with the device of Teague, Chae/Nesbitt, and Walish above, Chae further teaches each of the first plurality of indicia is a first color and each of the second plurality of indica is a second color, different from the first color (paragraph 34). Nesbitt also teaches the different colors (paragraph 81). As to claim 20, with the device of Teague, Chae/Nesbitt, and Walish above, Nesbitt further teaches each of the first indicia of the first plurality of indicia and/or each indicia of the second plurality of indicia includes a physical attribute (paragraph 56, the wire will be etched/roughened where the color is applied), extending radially outwards or inwards relative to a longitudinal axis of the at least one leg. The roughened surface will have the physical attribute extending in a direction, which will be either outward or inward. Further Teague does disclose the end-effector can have physical attributes (paragraph 38) . Double Patenting 08-33 AIA 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. 08-36 AIA Claim s 1-9, 11-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim s 1-14 of U.S. Patent No. U.S. Patent No. 11,504,026 in view of U.S. Patent Publication 2006/0100641 to Teague . As to the instant application’s claim 1, the reference patent claims a medical device, comprising: a handle assembly (claim 1, 5, 10) including an actuator (claim 1, 5, 10); a sheath (claim 1, 5, 10) having a proximal coupled with the actuator (claim 1, 5, 10); and an end-effector (claim 1, 5, 10) moveable relative to the sheath between an extended configuration (claim 1, 5, 10) and a retracted configuration (claim 1, 5, 10), the end-effector including a plurality of expandable legs (claim 1, 5, 10), at least one leg of the plurality of expandable legs including a plurality of first indicia and a plurality of second indicia (claim 1, 5, 10); but silent about wherein the end-effector is a monolithic component formed from a tube. Teague teaches a similar device (retrieval device, abstract) having a distal end-effector comprising a plurality of expandable legs be a monolithic component formed from a tube (paragraph 29, 35) for the purpose of fabricating parts of the device by any known means. It is to be noted a comparison of the recited process with the prior art processes does not serve to resolve the issue concerning patentability of the product. Whether a product is patentable depends on whether it is known in the art or it is obvious, and is not governed by whether the process by which it is made is patentable. It would have been obvious to one of ordinary skill in the art before the effective filing date to have the end-effector of the reference patent be a monolithic component formed from a tube in order for fabricating parts of the device by any known means. As to the instant application’s claim 22, see reference patent teaches the shape memory material (paragraph 37). It is also to be noted the claim is “a product-by-process” claim with respect to “forming the end-effector by laser-cutting or chemical etching”. A comparison of the recited process with the prior art processes does not serve to resolve the issue concerning patentability of the product. Whether a product is patentable depends on whether it is known in the art or it is obvious, and is not governed by whether the process by which it is made is patentable. It would have been obvious sot one of ordinary skill in the art before the effective filing date to have the end-effector of the reference patent comprise a shape memory 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 basis of its suitability for the intended use. As to the instant application’s claim 3, see reference patent claim 1. As to the instant application’s claim 4, see reference patent claim 3, 5, 10. As to the instant application’s claim 5, see reference patent claim 1, 5. As to the instant application’s claim 6, see reference patent claim 5. As to the instant application’s claim 7, the reference patent claim 10. As to the instant application’s claim 8, the reference patent claim 1. As to the instant application’s claim 9, the reference patent claim 5 As to the instant application’s claim 11, the reference patent claims a medical device, comprising: a handle assembly (claim 1, 10) including an actuator (claim 1, 10); a sheath (claim 1, 10) having a proximal end coupled with the actuator (claim 1, 5, 10); and an end-effector (claim 1, 10) moveable relative to the sheath between an extended configuration (claim 1, 10) and a retracted configuration (claim 1, 10), the end-effector including a plurality of expandable legs (claim 1, 10), each of the plurality of expandable legs including a plurality of first indicia and a plurality of second indicia (claim 1, 10), wherein each of the first plurality of indicia and/or each of the second plurality of indicia includes a physical attribute extending radially outward or inwards relative to a longitudinal axis of the respect legs (1, 10); but silent about wherein the end-effector comprises a shape memory material. Of note, if a leg has physical attribute, the physical attribute will extend radially inward or outward of the longitudinal axis of the leg. Teague teaches a similar device (retrieval device, abstract) having an end-effector comprising a shape memory material (paragraph 37). It would have been obvious sot one of ordinary skill in the art before the effective filing date to have the end-effector of the reference patent comprise a shape memory 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 basis of its suitability for the intended use. As to the instant application’s claim 12, see reference patent claim 1. As to the instant application’s claim 13, see reference patent claim 3. As to the instant application’s claim 14, see reference patent claim 14. As to the instant application’s claim 15, see reference patent claim 1. As to the instant application’s claim 16, see reference patent claim 13. As to the instant application’s claim 17, the reference patent claims a medical device, comprising: a handle assembly (claim 1, 5) including an actuator (claim 1, 5); a sheath (claim 1, 5) having a proximal coupled with the actuator (claim 1, 5); and an end-effector (claim 1, 5) moveable relative to the sheath between an extended configuration (claim 1, 5) and a retracted configuration (claim 1, 5), the end-effector including a plurality of expandable legs (claim 1, 5), at least one leg of the plurality of expandable legs including a plurality of first indicia and a plurality of second indicia (claim 1, 5), wherein the first plurality of indicia and the second plurality of indicia alternate along a length of each leg of the plurality of expandable legs (claim 3, 5); but silent about wherein the end-effector is a monolithic formed from a shape memory material. Teague teaches a similar device (retrieval device, abstract) having a distal end-effector comprising a plurality of expandable legs be a monolithic formed (paragraph 29, 35) from a shape memory material (paragraph 37) for the purpose of fabricating parts of the device by any known means. It is to be noted a comparison of the recited process with the prior art processes does not serve to resolve the issue concerning patentability of the product. Whether a product is patentable depends on whether it is known in the art or it is obvious, and is not governed by whether the process by which it is made is patentable. It would have been obvious to one of ordinary skill in the art before the effective filing date to have the end-effector of the reference patent be a monolithic formed in order for fabricating parts of the device by any known means and formed from a shape memory 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 basis of its suitability for the intended use. As to the instant application’s claim 18, see reference patent claim 1 As to the instant application’s claim 19, see reference patent claim 1. As to the instant application’s claim 20, see reference patent claim 1 . 08-36 AIA Claim s 1-9, 11-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim s 1-14 of U.S. Patent No. U.S. Patent No. 12,178,569 in view of U.S. Patent Publication 2006/0100641 to Teague . As to the instant application’s claim 1, the reference patent claims a medical device, comprising: a handle assembly (claim 1) including an actuator (claim 1); a sheath (claim 1) having a proximal coupled with the actuator (claim 1); and an end-effector (claim 1) moveable relative to the sheath between an extended configuration (claim 1) and a retracted configuration (claim 1), the end-effector including a plurality of expandable legs (claim 1), at least one leg of the plurality of expandable legs including a plurality of first indicia and a plurality of second indicia (claim 1); but silent about wherein the end-effector is a monolithic component formed from a tube. Teague teaches a similar device (retrieval device, abstract) having a distal end-effector comprising a plurality of expandable legs be a monolithic component formed from a tube (paragraph 29, 35) for the purpose of fabricating parts of the device by any known means. It is to be noted a comparison of the recited process with the prior art processes does not serve to resolve the issue concerning patentability of the product. Whether a product is patentable depends on whether it is known in the art or it is obvious, and is not governed by whether the process by which it is made is patentable. It would have been obvious to one of ordinary skill in the art before the effective filing date to have the end-effector of the reference patent be a monolithic component formed from a tube in order for fabricating parts of the device by any known means. As to the instant application’s claim 22, see reference patent teaches the shape memory material (paragraph 37). It is also to be noted the claim is “a product-by-process” claim with respect to “forming the end-effector by laser-cutting or chemical etching”. A comparison of the recited process with the prior art processes does not serve to resolve the issue concerning patentability of the product. Whether a product is patent depends on whether it is known in the art or it is obvious, and is not governed by whether the process by which it is made is patentable. It would have been obvious sot one of ordinary skill in the art before the effective filing date to have the end-effector of the reference patent comprise a shape memory 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 basis of its suitability for the intended use. As to the instant application’s claim 3, see reference patent claim 1. As to the instant application’s claim 4, see reference patent claim 2. As to the instant application’s claim 5, see reference patent claim 1. As to the instant application’s claim 6, see reference patent claim 6. As to the instant application’s claim 7, the reference patent claim 1. As to the instant application’s claim 8, the reference patent claim 1. As to the instant application’s claim 9, the reference patent claim 8 As to the instant application’s claim 11, the reference patent claims a medical device, comprising: a handle assembly (claim 1) including an actuator (claim 1); a sheath (claim 1) having a proximal end coupled with the actuator (claim 1); and an end-effector (claim 1) moveable relative to the sheath between an extended configuration (claim 1) and a retracted configuration (claim 1), the end-effector including a plurality of expandable legs (claim 1), each of the plurality of expandable legs including a plurality of first indicia and a plurality of second indicia (claim 1), wherein each of the first plurality of indicia and/or each of the second plurality of indicia includes a physical attribute extending radially outward or inwards relative to a longitudinal axis of the respect legs (1); but silent about wherein the end-effector comprises a shape memory material. Teague teaches a similar device (retrieval device, abstract) having an end-effector comprising a shape memory material (paragraph 37). It would have been obvious sot one of ordinary skill in the art before the effective filing date to have the end- effector of the reference patent comprise a shape memory 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 basis of its suitability for the intended use. As to the instant application’s claim 12, see reference patent claim 7. As to the instant application’s claim 13, see reference patent claim 1. As to the instant application’s claim 14, see reference patent claim 9. As to the instant application’s claim 15, see reference patent claim 1. As to the instant application’s claim 16, see reference patent claim 8. As to the instant application’s claim 17, the reference patent claims a medical device, comprising: a handle assembly (claim 1) including an actuator (claim 1); a sheath (claim 1) having a proximal coupled with the actuator (claim 1); and an end-effector (claim 1) moveable relative to the sheath between an extended configuration (claim 1) and a retracted configuration (claim 1), the end-effector including a plurality of expandable legs (claim 1), at least one leg of the plurality of expandable legs including a plurality of first indicia and a plurality of second indicia (claim 1), wherein the first plurality of indicia and the second plurality of indicia alternate along a length of each leg of the plurality of expandable legs (claim 2); but silent about wherein the end-effector is a monolithic formed from a shape memory material. Teague teaches a similar device (retrieval device, abstract) having a distal end-effector comprising a plurality of expandable legs be a monolithic formed (paragraph 29, 35) from a shape memory material (paragraph 37) for the purpose of fabricating parts of the device by any known means. It is to be noted a comparison of the recited process with the prior art processes does not serve to resolve the issue concerning patentability of the product. Whether a product is patentable depends on whether it is known in the art or it is obvious, and is not governed by whether the process by which it is made is patentable. It would have been obvious to one of ordinary skill in the art before the effective filing date to have the end-effector of the reference patent be a monolithic formed in order for fabricating parts of the device by any known means and formed from a shape memory 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 basis of its suitability for the intended use. As to the instant application’s claim 18, see reference patent claim 1 As to the instant application’s claim 19, see reference patent claim 1. As to the instant application’s claim 20, see reference patent claim 1 . Conclusion 07-96 AIA The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. U.S. Patent 5,885,258 to Sachdeva, U.S. Patent 6,613,002 to Clark (as cited as Patent Reference 2 in the IDS filed 11/21/2024), U.S. Patent Publication 2002/0111567 to Vanden Hoek, U.S. Patent Publication 2003/0088254 to Gregory, U.S. Patent Publication 2004/0133129 to Harari, U. S. Patent Publication 2005/0010138 to Mangiardi (as cited as Publication Reference 8 in the IDS filed 11/21/2024), U.S. Patent Publication 2006/0064039 to Griego, U.S. Patent Publication 2009/0082780 to Lu (as cited as Publication Reference 12 in the IDS filed 11/21/2024), U.S. Patent Publication 2013/0184741 to Laroya (as cited reference 15 in the IDS filed 10/19/2022), U.S. Patent Publication 2014/0058251 to Stigall (as cited reference 16 in the IDS filed 11/21/2024), U.S. Patent Publication 2017/0007279 to Sharma (as cited reference 20 in the IDS filed 11/21/2024), and U.S. Patent Publication 2018/0028218 to Pereira (as cited reference 22 in the IDS filed 11/21/2024) all disclose similar devices readble, combinable, and/or capable of providing evidence on the claims of record . Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEXANDER J ORKIN whose telephone number is (571)270-7412. The examiner can normally be reached Monday - Friday 9am - 5pm. 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, Elizabeth Houston can be reached on (571)272-7134. 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. /ALEXANDER J ORKIN/Primary Examiner, Art Unit 3771 Application/Control Number: 18/955,519 Page 2 Art Unit: 3771 Application/Control Number: 18/955,519 Page 3 Art Unit: 3771 Application/Control Number: 18/955,519 Page 4 Art Unit: 3771 Application/Control Number: 18/955,519 Page 5 Art Unit: 3771 Application/Control Number: 18/955,519 Page 6 Art Unit: 3771 Application/Control Number: 18/955,519 Page 7 Art Unit: 3771 Application/Control Number: 18/955,519 Page 8 Art Unit: 3771 Application/Control Number: 18/955,519 Page 9 Art Unit: 3771 Application/Control Number: 18/955,519 Page 10 Art Unit: 3771 Application/Control Number: 18/955,519 Page 11 Art Unit: 3771 Application/Control Number: 18/955,519 Page 12 Art Unit: 3771 Application/Control Number: 18/955,519 Page 13 Art Unit: 3771 Application/Control Number: 18/955,519 Page 14 Art Unit: 3771 Application/Control Number: 18/955,519 Page 15 Art Unit: 3771 Application/Control Number: 18/955,519 Page 16 Art Unit: 3771 Application/Control Number: 18/955,519 Page 17 Art Unit: 3771 Application/Control Number: 18/955,519 Page 18 Art Unit: 3771 Application/Control Number: 18/955,519 Page 19 Art Unit: 3771 Application/Control Number: 18/955,519 Page 20 Art Unit: 3771 Application/Control Number: 18/955,519 Page 21 Art Unit: 3771 Application/Control Number: 18/955,519 Page 22 Art Unit: 3771 Application/Control Number: 18/955,519 Page 23 Art Unit: 3771 Application/Control Number: 18/955,519 Page 24 Art Unit: 3771 Application/Control Number: 18/955,519 Page 25 Art Unit: 3771
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