DETAILED 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 .
Specification
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
Claim Objections
Claim 10 is objected to because of the following informalities:
Claim 10 is objected to because “comprises” in the limitation reciting “responsively to the equatorial component comprises a constrained orientation” appears to be a typographical error intended to recite “comprising”.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
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.
Claims 1 - 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.
Claims 1 and 15 are indefinite because it is grammatically unclear whether “with a magnitude and direction” (lines 8 - 9) attempts to modify the “force” or the “indication”. In other words, it is unclear if the claims attempt to set forth (1) that the “force” is applied “with a magnitude and direction”; or (2) that the “indication” is “with a magnitude and direction”. If the latter, examiner suggests amending the claim to recite “an indication of a force , wherein the indication comprises a magnitude and a direction”.
Claims 2 - 14 and 16 - 20 are indefinite by virtue of dependency.
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 1, 4 - 6, 9, 11, 15, and 18 - 20 are rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1, 2 - 4, 5 - 6, and 13 - 16, respectively, of prior U.S. Patent No. U.S. Patent No. 12,263,013. This is a statutory double patenting rejection.
It is noted that claims 1 and 15 recite that the force is “with a magnitude and direction” (lines 8 - 9), whereas the reference claims do not recite this limitation. However, despite this distinction in the claim language, the instant and reference claims noted above are considered to be identical in scope because “force” is a vector quantity that is necessarily “with a magnitude and direction”, by definition. Consequently, the “force” recited in reference claims 1 and 13 is implicitly “with a magnitude and direction”.
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 2 - 3 and 16 - 17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 - 24 of U.S. Patent No. 12,263,013 in view of Bar-Tal et al. (US 2018/0344202).
Instant claims 2 and 16 are suggested by reference claims 1 and 13. However, the reference claims do not recite that the plurality of resilient spines include an even number of resilient spines, and the constrained form of the basket assembly is computed where a pair of resilient spines are selected to lie on a 2D curve.
Bar-Tal discloses catheter navigation. Bar-Tal teaches a plurality of resilient spines include an even number of resilient spines (number of splines 64 may be any convenient odd or even number of splines that is two or more, [0058]).
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 invention of reference claims 1 and 13 to have the plurality of resilient spines include an even number of resilient spines, as taught by Bar-Tal, in order provide desired structural features of the basket assembly, using a convenient number of splines, as suggested by Bar-Tal ([0058]).
Further, 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 invention of the reference claims to have the constrained form of the basket assembly be computed where a pair of resilient spines are selected to lie on a 2D curve, in order to facilitate computing the constrained form by using conventional and well-understood mathematical equations to model shape. It is noted that applicant discloses no criticality of the number of spines or the recited manner in which the constrained form is computed, as the claimed features are mutually exclusive with those of claims 3 and 17.
Instant claims 3 and 17 are suggested by reference claims 1 and 13. However, the reference claims do not recite that the plurality of resilient spines include an odd number of resilient spines, and the constrained form of the basket assembly is computed where a resilient spine and a corresponding mirrored spine are selected to lie on a 2D curve even number of resilient spines.
Bar-Tal discloses catheter navigation. Bar-Tal teaches a plurality of resilient spines include an odd number of resilient spines (number of splines 64 may be any convenient odd or even number of splines that is two or more, [0058]).
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 invention of reference claims 1 and 13 to have the plurality of resilient spines include an odd number of resilient spines, as taught by Bar-Tal, in order provide desired structural features of the basket assembly, using a convenient number of splines, as suggested by Bar-Tal ([0058]).
Further, 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 invention of the reference claims to have the constrained form of the basket assembly be computed where a resilient spine and a corresponding mirrored spine are selected to lie on a 2D curve even number of resilient spines, in order to facilitate computing the constrained form by using conventional and well-understood mathematical equations to model shape. It is noted that applicant discloses no criticality of the number of spines or the recited manner in which the constrained form is computed, as the claimed features are mutually exclusive with those of claims 2 and 16.
Claims 7 - 8, 10, and 12 - 14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 - 24 of U.S. Patent No. 12,263,013. Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims are directed to systems and methods for medical treatment, comprising use of a probe, comprising: an insertion tube having a distal end; a basket assembly comprising multiple resilient spines coupled to the distal end of the insertion tube and joined together in a predefined form when the basket assembly is unconstrained by external forces; and a force sensor configured to output an indication of a force exerted on the basket assembly by physical contact of some of the spines on a member; receiving the indication of the force; computing a constrained form of the basket assembly, different from the predefined form, responsively to the force; and rendering to a display a graphical image representing the constrained form of the basket assembly. In particular:
Instant claims 7 and 8 are suggested by reference claim 5. However, the reference claims differ in that they do not recite the linear metric is inversely proportional to an axial spring constant for the basket assembly, wherein the axial spring constant is predetermined.
Nonetheless, since the linear metric of reference claim 5 is directly proportional to the axial component, it follows that the metric would be inversely proportional to an axial spring constant for the basket assembly. Further, the spring constant is understood to be predetermined, as the constant is not a variable, and is intrinsic.
Alternatively, 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 invention of reference claim 5 to have the metric be inversely proportional to an axial spring constant for the basket assembly, wherein the axial spring constant is predetermined, in order to facilitate computing the constrained form by using conventional and well-understood mathematical equations.
Instant claim 10 is suggested by reference claim 6. However, the reference claims differ in that they do not recite a third assumption of no alteration to the predefined shape.
Nonetheless, 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 invention of reference claim 6 to include a third assumption of no alteration to the predefined shape, in order to treat the predefined shape as a fixed value, to thereby simplify modeling. Such modification would have comprised no more than the application of known mathematical techniques to yield no more than predictable results (i.e., simplifying modeling).
Instant claim 12 is suggested by reference claim 7. The recited linear metric about a rotation axis orthogonal to the assembly axis corresponds to the angle measured about a rotation axis orthogonal to the assembly axis.
Instant claim 13 is likewise suggested by reference claim 7. However, the reference claims differ in that they do not recite that the linear metric is directly proportional to a coefficient of stiffness for the basket assembly.
Nonetheless, the linear metric is understood to be directly proportional to a coefficient of stiffness for the basket assembly, as the coefficient of stiffness limits the motion of the basket assembly about a rotation axis orthogonal to the assembly axis.
Alternatively, 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 invention of reference claim 7 to have the linear metric be directly proportional to a coefficient of stiffness for the basket assembly, in order to use the assembly’s intrinsic physical characteristics to represent the metric.
Instant claim 14 is suggested by reference claim 7. The coefficient of stiffness is understood to be predetermined, as the coefficient is not a variable, and is intrinsic.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Kingston et al. (US 2024/0197393) are discussed in the examiner’s statement of reasons for allowance in parent application 18/091,128, now U.S. Patent No. 12,263,013.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AMELIE R DAVIS whose telephone number is (571)270-7240. The examiner can normally be reached Monday-Friday, 9:30 - 6:00 PST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Pascal Bui-Pho can be reached at (571)272-2714. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/AMELIE R DAVIS/Primary Examiner, Art Unit 3798