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 .
Detailed Action
This is first action on the merits (FAOM) to this instant application. This application is a continuation application which claims priority to two different Chinese applications1 as indicated in the ADS filed by the Applicant.
Claims 21-40 are pending. Claims 21, 22 and 40 are independent and claims 22-39 are dependent. Applicant has canceled claims 1-20 by filing preliminary amendments on the same day as this continuation application was filed.
Independent claim 40 is the claim having broadest scope. Content of this claim is very well known in MRI art. For this reason, the application is being rejected in this first action on the merits, see rejection of claim(s) elsewhere in this Office action.
Double Patenting Rejection
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.
Claim 21 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 7 of issued US patent No. 11,493,577 or claim 5 of U.S. Patent No. 12,210,077. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims issued are narrower in scope and hence are fully met by the issued patents.
Rejection under 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.
Claims 40 and 22 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nordmeyer-Massner (US-2009/0261828-A1).
Item matching between claim features and prior art reference, Nordmeyer-Massner are shown in the table below.
Claim No
Claim feature
Prior art
Nordmeyer-Massner
(US-2009/0261828-A1)
40
A coil assembly configured to receive an MR signal generated from a subject, comprising:
one or more coils; and
a baseplate configured to support the one or more coils, wherein at least a region of the baseplate is configured to undergo a tensile deformation when a tensile force is applied to the baseplate in a target direction.
Nordmeyer-Massner discloses a coil assembly to be used in MRI imaging as claimed.
Active coil elements are provided on a flexible and stretchable dielectric material 2, 102.
Flexible and stretchable dielectric material 2, 102 can be equated to claimed baseplate.
The flexible and stretchable dielectric material 2,102 undergoes tensile deformation when a tensile force is applied.
Nordmeyer-Massner fully meets claim 40.
22
A device for magnetic resonance imaging (MRI), comprising: a coil assembly configured to receive an MR signal generated from a subject, including: one or more coils; and a baseplate configured to support the one or more coils, wherein at least a region of the baseplate is configured to undergo a tensile deformation when a tensile force is applied to the baseplate in a target direction.
Scope claim 22 is like that of claim 40, see treatment claim 40 as shown to be anticipated by Nordmeyer-Massner for claim 22.
Allowable Subject Matter
Claims 23-39 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 an examiner’s statement of reasons for allowance:
As to claim 23, the claim would be allowable if written in independent form because the prior art of the record the device of claim 22,
wherein the at least a region of the baseplate includes a first region, the baseplate includes a second region configured to undergo no tensile deformation or undergo a tensile deformation less than the tensile deformation of the first region when the tensile force is applied to the baseplate in the target direction.
As to claims 24-39, these would be allowable if claim 23 is written in independent form because each of these claims, either directly or indirectly, depends from claim 23.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Citation(s)
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Chen (CN-210401638-U) discloses an MRI coil having a baseplate (100) and the baseplate (100) contains holes (perforations 110) for coil conductor wire(s) to pass therethrough where the conductor is disposed on both sides of the baseplate (100), like that of claim 21. However, Chen publication does not mention anything about control circuits, each of which connects one or more coils as set forth in the instant claim 21. Further, the Chen publication (CN-210401638-U) is a patent publication from the same inventive entity2 as that of the instant claims and even though the publication date is 04 April 2020 which is before the US and foreign filing dates of the instant claims but falls within 1 year grace period of US filing date of the grandparent application 17/199400 or the original Chinese parent application No. 202010565504.3 filed on 19 June 2020. Therefore, it is unclear if this prior art reference is available against instant claim 21.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to G.M. HYDER whose telephone number is (571)270-3896. The examiner can normally be reached on M-F 9 AM- 5 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Stephanie Bloss can be reached on (571) 272-3555. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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G.M. HYDER
Primary Examiner
Art Unit 2852
/G.M. A HYDER/Primary Examiner, Art Unit 2852
1 Examiner comment: This instant application claims priority to:
Chinese application No. 202010565504.3 filed in China on 19 June 2020 and
Chinese application No. 20241087500.9 filed in China on 01 July 2024.
2 Examiner Comment: the same inventive entity being, Shanghai United Imaging Healthcare Co. LTD, Shanghai
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