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 .
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.
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Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 20 of U.S. Patent No. US 12,303,327. Although the claims at issue are not identical, they are not patentably distinct from each other because both the current application and U.S. Patent No. US 12,303,327 are directed to an apparatus/system comprising a intravascular ultrasound catheter, flexible substrate, the flexible substrate comprising plurality of transducer elements, control circuits and a plurality of grounding regions configured to provide electrical ground for at least one of the plurality of transducer elements or the plurality of control circuits, wherein the plurality of ground regions comprises a first proximal grounding region and a distal grounding region that are spaced from one another along a length dimension of the flexible substrate, and the first proximal grounding region and the distal grounding region are oriented to extend in a width dimension of the flexible substrate. Furthermore, the claims 1 and 20 of U.S. Patent No. US 12,303,327 are narrower than of claim 1 of current application.
Claim Rejections - 35 USC § 103
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.
Claims 1-12 are rejected under 35 U.S.C. 103 as being unpatentable over Saroha et al. (WO 2017/167883), in view of Adachi et al. (US 2008/0089181).
Regarding claim 1, Saroha discloses a flexible support member for intravascular imaging device. Saroha shows an apparatus (see fig. 1), comprising: an intravascular ultrasound catheter configured to be positioned within a blood vessel of a patient (see 102 in fig. 1) and comprising a flexible substrate in rolled configuration (see fig. 3), wherein the flexible substrate comprises: a plurality of ultrasound transducer elements (see 212 in fig. 2) configured to obtain imaging data (see abstract), a plurality of control circuits (see 206 in fig. 2) in communication with the plurality of ultrasound transducer elements (Fig. 2), and length dimension of the flexible substrate (see fig. 3) and a width dimension of the flexible substrate (see fig. 3).
But, Saroha fails to explicitly state a plurality of grounding regions configured to provide electrical ground for at least one of the plurality of transducer elements or the plurality of control circuits, wherein the plurality of grounding regions comprises a first proximal grounding region and a distal grounding region that are spaced from one another along a length dimension of the flexible substrate, wherein the first proximal grounding region and the distal grounding region are oriented to extend in a width dimension of the flexible substrate.
Adachi discloses an ultrasonic transducer cell. Adachi teaches a plurality of grounding regions configured to provide electrical ground for at least one of the plurality of transducer elements or the plurality of control circuits (see 37 in fig. 3; par. [0044], [0045]), wherein the plurality of grounding regions comprises a first proximal grounding region (see one of the 37 in one side in fig. 3) and a distal grounding region (see one of the 37 on the other side in fig. 3) that are spaced from one another along a length dimension of the flexible substrate, wherein the first proximal grounding region and the distal grounding region are oriented to extend in a width dimension of the flexible substrate (see fig. 3).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing of the claimed invention, to have modified the invention of Saroha to incorporate a plurality of grounding regions configured to provide electrical ground for at least one of the plurality of transducer elements or the plurality of control circuits, wherein the plurality of grounding regions comprises a first proximal grounding region and a distal grounding region that are spaced from one another along a length dimension of the flexible substrate, wherein the first proximal grounding region and the distal grounding region are oriented to extend in a width dimension of the flexible substrate, as taught by Adachi, to protect the electronic of the catheter device by providing grounding.
Regarding claim 2, Saroha and Adachi disclose the invention substantially as described in the 103 rejection above, furthermore, Adachi teaches wherein the first proximal grounding region and the distal grounding region each comprise a long axis and a short axis, wherein the long axis is oriented to extend in the width dimension (see fig. 3 and 6). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing of the claimed invention, to have utilized the teaching of wherein the first proximal grounding region and the distal grounding region each comprise a long axis and a short axis, wherein the long axis is oriented to extend in the width dimension in the invention of Saroha, as taught by Adachi, to provide a specific location for the grounding to have a compact ultrasonic transducer array and to protect the electronic of the catheter device.
Regarding claim 3, Saroha and Adachi disclose the invention substantially as described in the 103 rejection above, furthermore, Saroha shows wherein a first transducer element (see one of the 212 in fig. 3) and a second transducer element (see one of the 212 in fig. 3) are spaced from one another in the width dimension by a portion of the flexible substrate between the first transducer element and the second transducer element (see fig. 3 and 6), and Adachi also teaches a first transducer element (see one of the 32 in fig. 3) and a second transducer element (see one of the 32 in fig. 3) are spaced from one another in the width dimension by a portion of the flexible substrate between the first transducer element and the second transducer element (see fig. 3), wherein the long axis of the distal grounding region overlaps the first transducer element (see fig. 3 and 6), the second transducer element, and the portion of the flexible substrate between the first transducer element and the second transducer element (see fig. 3 and 6). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing of the claimed invention, to have utilized the teaching of wherein the long axis of the distal grounding region overlaps the first transducer element, the second transducer element, and the portion of the flexible substrate between the first transducer element and the second transducer element in the invention of Saroha, as taught by Adachi, to provide a specific location for the grounding to have a compact ultrasonic transducer array and to protect the electronic of the catheter device.
Regarding claim 4, Saroha and Adachi disclose the invention substantially as described in the 103 rejection above, furthermore, Saroha shows wherein a first control circuit (see par. [0046]) and a second control circuit (see par. [0046]) are spaced from one another in the width dimension by a portion of the flexible substrate between the first control circuit and the second control circuit (see fig. 2 and 3), and Adachi also teaches a first control circuit (see par. [0043], [0044]) and a second control circuit (see par. [0043], [0044]) are spaced from one another in the width dimension by a portion of the flexible substrate between the first control circuit and the second control circuit (see fig. 3 and 6), wherein the long axis of the first proximal grounding region overlaps the first control circuit (see fig. 3 and 6), the second control circuit, and the portion of the flexible substrate between the first control circuit and the second control circuit (see fig. 3 and 6). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing of the claimed invention, to have utilized the teaching of wherein the long axis of the first proximal grounding region overlaps the first control circuit, the second control circuit, and the portion of the flexible substrate between the first control circuit and the second control circuit in the invention of Saroha, as taught by Adachi, to provide a specific location for the grounding to have a compact ultrasonic transducer array and to protect the electronic of the catheter device.
Regarding claim 5, Saroha and Adachi disclose the invention substantially as described in the 103 rejection above, furthermore, Saroha shows wherein the flexible substrate comprises: a distal portion comprising the plurality of transducer elements (see fig. 2 and 3) and a proximal portion comprising the plurality of control circuits (see fig. 2 and 3), and Adachi also teaches a distal portion comprising the plurality of transducer elements (see fig. 3 and 6) and the distal grounding region (see fig. 3 and 6); and a proximal portion comprising the plurality of control circuits (see fig. 3 and 6) and the first proximal grounding region (see fig. 3 and 6).
Regarding claim 6, Saroha and Adachi disclose the invention substantially as described in the 103 rejection above, furthermore, Adachi teaches wherein the distal grounding region is distal of the plurality of transducer elements (see fig. 3 and 6). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing of the claimed invention, to have utilized the teaching of wherein the distal grounding region is distal of the plurality of transducer elements in the invention of Saroha, as taught by Adachi, to provide a specific location for the grounding to have a compact ultrasonic transducer array and to protect the electronic of the catheter device.
Regarding claim 7, Saroha and Adachi disclose the invention substantially as described in the 103 rejection above, furthermore, Adachi teaches wherein the proximal grounding region is proximal of the plurality of control circuits (see fig. 3 and 6). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing of the claimed invention, to have utilized the teaching of wherein the proximal grounding region is proximal of the plurality of control circuits in the invention of Saroha, as taught by Adachi, to provide a specific location for the grounding to have a compact ultrasonic transducer array and to protect the electronic of the catheter device.
Regarding claim 8, Saroha and Adachi disclose the invention substantially as described in the 103 rejection above, furthermore, Adachi teaches wherein the plurality of grounding regions further comprises a second proximal grounding region distinct from the first proximal grounding region (see fig. 3 and 6). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing of the claimed invention, to have utilized the teaching of wherein the plurality of grounding regions further comprises a second proximal grounding region distinct from the first proximal grounding region in the invention of Saroha, as taught by Adachi, to provide a specific location for the grounding to have a compact ultrasonic transducer array and to protect the electronic of the catheter device.
Regarding claim 9, Saroha and Adachi disclose the invention substantially as described in the 103 rejection above, furthermore, Adachi teaches wherein the first proximal grounding region and the second proximal grounding region are spaced from one another in the width dimension by a portion of the flexible substrate between the first proximal grounding region and the second proximal grounding region (see fig. 3 and 6). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing of the claimed invention, to have utilized the teaching of wherein the first proximal grounding region and the second proximal grounding region are spaced from one another in the width dimension by a portion of the flexible substrate between the first proximal grounding region and the second proximal grounding region in the invention of Saroha, as taught by Adachi, to provide a specific location for the grounding to have a compact ultrasonic transducer array and to protect the electronic of the catheter device.
Regarding claim 10, Saroha and Adachi disclose the invention substantially as described in the 103 rejection above, furthermore, Adachi teaches wherein a long axis of the distal grounding region overlaps the first proximal grounding region, the second proximal grounding region (see fig. 3), and the portion of the flexible substrate between the first proximal grounding region and the second proximal grounding region (see fig. 3 and 6). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing of the claimed invention, to have utilized the teaching of wherein a long axis of the distal grounding region overlaps the first proximal grounding region, the second proximal grounding region, and the portion of the flexible substrate between the first proximal grounding region and the second proximal grounding region in the invention of Saroha, as taught by Adachi, to provide a specific location for the grounding to have a compact ultrasonic transducer array and to protect the electronic of the catheter device.
Regarding claim 11, Saroha and Adachi disclose the invention substantially as described in the 103 rejection above, furthermore, Saroha shows wherein the IVUS catheter comprises a plurality of electrical wires (see par. [0044], [0051]), wherein the flexible substrate comprises an interface region extending in the length dimension from the portion of the flexible substrate (see fig. 2), wherein the plurality of electrical wires is coupled to the flexible substrate at the interface region (see fig. 2 and 3), and Adachi teaches wherein the flexible substrate comprises an interface region extending in the length dimension from the portion of the flexible substrate between the first proximal grounding region and the second proximal grounding region (see fig. 3-5). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing of the claimed invention, to have utilized the teaching of wherein the flexible substrate comprises an interface region extending in the length dimension from the portion of the flexible substrate between the first proximal grounding region and the second proximal grounding region in the invention of Saroha, as taught by Adachi, to provide a specific location for the grounding to have a compact ultrasonic transducer array and to protect the electronic of the catheter device.
Regarding claim 12, Saroha and Adachi disclose the invention substantially as described in the 103 rejection above, furthermore, Saroha shows wherein the IVUS catheter comprises a support member defining guidewire lumen (see par. [0056], [0057]; fig. 4A and 4B), wherein the flexible substrate is in the rolled configuration around the support member (see fig. 3 and 4A and 4B), and Adachi teaches the grounding regions (see fig. 3). The examiner notes that upon modification of prior art Saroha to incorporate the teaching of prior art Adachi would provide wherein the plurality of grounding regions contact the support member.
Conclusion
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/SHAHDEEP MOHAMMED/ Primary Examiner, Art Unit 3797
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