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 .
Claim Status:
Claims 1-20 have been canceled.
Claims 21-36 (See Claim Objection section, regarding renumbered claims) are pending and examined below.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 08/14/2025 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement has been considered by the examiner.
Claim Objections
The numbering of claims is not in accordance with 37 CFR 1.126 which requires the original numbering of the claims to be preserved throughout the prosecution. When claims are canceled, the remaining claims must not be renumbered. When new claims are presented, they must be numbered consecutively beginning with the number next following the highest numbered claims previously presented (whether entered or not).
There are two claim 33 in the claim set of 12/10/2025. Claim 33 that depends from claim 31, is the true claim 33. Misnumbered claim 33, which is an independent claim, has been renumbered to claim 34. Thus all claim numbers following misnumbered claim 33, will be renumbered: previous claim 34 is renumbered to claim 35, and previous claim 35 is renumbered to claim 36.
Claim Rejections - 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.
Claim(s) 21-23, 30, 31, and 33 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US5,819,737 to Young et al. “Young”.
Regarding claim 21, Young teaches a device for magnetic resonance imaging ("MRI") tracking (Abstract, flexible catheter for use in connection with magnetic resonance imaging techniques, wherein the catheter carries a closed loop coil arrangement; Col. 3, Paragraph starting at line 49, wherein the closed loop coil arrangement 27 allows for tracking of movement of the object 25 by use of the magnetic resonance imaging apparatus), comprising:
a) a tunable capacitor (Figs. 3A, 3B, and 4, electrically conducting areas 39A and 39B, with dielectric layer 41 forms a tuning capacitor; See also Col. 4, lines 16-22); and
b) a flexible circuit laminate (Col. 4, lines 4-5, coil arrangement 27 is in the form of a flexible printed circuit, wherein the flexible circuit) comprising a first trace portion (See Fig. 4, portion represented by Refs. 43 and 45) and a second trace portion (Fig. 4, portion represented by Refs. 47, 61, 57, 59, and 63), the first trace portion operably coupled between the tunable capacitor (See Fig. 4, Ref. 43 is connected to Ref. 39A, wherein Ref. 39A is part of the tunable capacitor) and the second trace portion (Fig. 4, first portion is connected to the second portion at the bend between Ref. 47 and 61),
wherein the first trace portion is configured to be wound around a medical device (Col. 4, lines 4-5, coil arrangement 27 is suitably in the form of a flexible printed circuit wrapped around the object 25; wherein the object 25 is a catheter or surgical instrument, Col. 3, lines 42-43; See Fig. 3A and 3B wherein Ref. 45 of first portion is wrapped around the object 25, unlabeled in the figure, but also described in Col. 4, Paragraph starting at 23, Ref. 45 which forms a single helical turn round the object 25, and Ref. 47 which forms a second helical turn round the object 25, overlying the turn formed by Ref. 45) to form at least part of a conductor coil in a device placement configuration (Part of two coils that embody the coil arrangement 27, Col. 4, Paragraph starting at 7), and
wherein the second trace portion is configured to extend back toward the tunable capacitor in the device placement configuration (See Figs. 3A and 3B, section 47 of the portion of the conductive track that that the examiner interprets as part of the second trace portion that extends back toward the tunable capacitor represented by Refs. 39B in Fig. 3B; See also Col. 4, Paragraph starting at line 23) such that a distal end of the second trace portion can be operably coupled to the tunable capacitor (See Fig. 3A and 3B, distal end of the second portion represented by Ref. 63 is coupled to Ref. 39A of the capacitor) to form a resonant marker (closed loop coil arrangement 27 tuned to the r.f. excitation frequency used in operation of the apparatus, to allow tracking of movement of the object 25, which would read on a resonant marker/tracker).
Regarding claims 22 and 23, Young discloses all the features of claim 21 above.
Young further discloses wherein the second trace portion is configured to be wound around the medical device to form at least another part of the conductor coil in the device placement configuration (Col. 4, Paragraph starting at line 23, “section 47 which forms a second helical turn round the object 25, overlying the turn formed by section 45; See Fig. 2B, section 47 which is part of the second trace portion, forms the second part of the coil that includes turns 51 and 49). Additionally, as seen in Fig. 3B, sections 45 and 47 of the coil form turns or windings such that it is in a double helix configuration, similar to what is illustrated in Fig. 1B, except the coil is much shorter in length.
Regarding claim 30, Young discloses all the features of claim 21.
Young further discloses wherein the medical device is a catheter (Abstract, flexible catheter for use in connection with magnetic resonance imaging techniques, wherein the catheter carries a closed loop coil arrangement; wherein the object 25 is a catheter or surgical instrument, Col. 3, lines 42-43).
Regarding claim 31, Young discloses a device for magnetic resonance imaging ("MRI") tracking (Abstract, flexible catheter for use in connection with magnetic resonance imaging techniques, wherein the catheter carries a closed loop coil arrangement; Col. 3, Paragraph starting at line 49, wherein the closed loop coil arrangement 27 allows for tracking of movement of the object 25 by use of the magnetic resonance imaging apparatus), comprising:
a flexible circuit laminate (Col. 4, lines 4-5, coil arrangement 27 is in the form of a flexible printed circuit, wherein the flexible circuit) comprising:
a capacitor comprising first and second contacts (Figs. 3A, 3B, and 4, electrically conducting areas 39A and 39B, with dielectric layer 41 forms a tuning capacitor; See also Col. 4, lines 16-22);
a first trace portion (See Fig. 4, portion represented by Refs. 43 and 45) comprising proximal and distal ends (See Fig. 4, portion represented by Refs. 43 and 45, wherein the end located on Ref. 43 would read on the proximal end, while the end of Ref. 45, towards Ref. 47, would read on the distal end), the proximal end integrally connected to the first contact of the capacitor (See Figs. 3A, 3B, and 4, proximal end of Ref. 43 starts from rectangular area 39A, See Col. 4, Paragraph starting at line 23, where 39A is one part of the tuning capacitor, Col. 4, lines 16-22, and since the trace section 43 starts from Ref. 39A, this would read on the proximal end of the trace portion being integral with the rectangular area 39A); and
a second trace portion (Fig. 4, portion represented by Refs. 47, 61, 57, 59, and 63) comprising proximal (See Fig. 4, end of Ref. 47 that is connected to Ref. 45), and distal ends (See Fig. 4, end of Ref. 63 that is connected to Ref. 39B), the proximal end integrally connected to the distal end of the first trace portion (See Fig. 4, end of Ref. 47 that is connected to Ref. 45);
wherein the first trace portion is configured to be wound around a medical device in a device placement configuration (Col. 4, lines 4-5, coil arrangement 27 is suitably in the form of a flexible printed circuit wrapped around the object 25; wherein the object 25 is a catheter or surgical instrument, Col. 3, lines 42-43; See Fig. 3A and 3B wherein Ref. 45 of first portion is wrapped around the object 25, unlabeled in the figure, but also described in Col. 4, Paragraph starting at 23, Ref. 45 which forms a single helical turn round the object 25, and Ref. 47 which forms a second helical turn round the object 25, overlying the turn formed by Ref. 45) to form a part of a conductor coil (Part of two coils that embody the coil arrangement 27, Col. 4, Paragraph starting at 7),
wherein, in the device placement configuration, the second trace portion is configured to be wound around the medical device overlapping the first trace portion as the second trace portion extends back toward the capacitor to form another part of the conductor coil (See Figs. 3A and 3B, section 47 of the portion of the conductive track that that the examiner interprets as part of the second trace portion that extends back toward the tunable capacitor represented by Refs. 39B in Fig. 3B; Also, as seen in Fig. 3B, section 47 overlaps with section 45 of the first portion on the backside of the device as indicated by the dashed lines representing the trace; See also Col. 4, Paragraph starting at line 23), and
wherein, in the device placement configuration, the distal end of the second trace portion can be operably coupled to the second contact of the capacitor (See Figs. 3A, 3B, and 4, wherein section 63 connects back to the rectangular area 39B, which is part of the tuning capacitor, Col. 4, lines 16-22) to form a resonant marker (closed loop coil arrangement 27 tuned to the r.f. excitation frequency used in operation of the apparatus, to allow tracking of movement of the object 25, which would read on a resonant marker/tracker).
Regarding claim 33, that is dependent from claim 31, Young discloses all the features of claim 31.
Young further discloses wherein the medical device is a catheter (Abstract, flexible catheter for use in connection with magnetic resonance imaging techniques, wherein the catheter carries a closed loop coil arrangement; wherein the object 25 is a catheter or surgical instrument, Col. 3, lines 42-43).
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.
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.
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) 24 and 25 is/are rejected under 35 U.S.C. 103 as being unpatentable over Young, in view of US6,957,098 to Hyde et al. “Hyde”.
Regarding claims 24 and 25, Young discloses all the features of claim 21 above.
However, Young does not disclose wherein, in the device placement configuration, the second trace portion is configured to extend back toward the capacitor without winding about the medical device, and the conductor comprises a solenoid configuration.
Hyde teaches a similar marker for interventional devices in magnetic resonant image (MRI) systems (Title; resonant circuit, Fig. 4 and Col. 5, Paragraph starting at line 53; for MRI interventional procedures, Col. 4, Paragraph starting at line 11; for use as a precision marker, Col. 4, Paragraph starting at line 30). Hyde teaches wherein, in the device placement configuration (See Fig. 4, bottom image, the coil is wrapped around , the second trace portion is configured to extend back toward the capacitor without winding about the medical device (See Fig. 4, top and bottom illustrations, wherein the portion after the windings of coil 404, that connects back to capacitor 403 is straight and does not wind around the tubing 409). Further, as seen in Fig. 4, coil 404 is wound like a spool, and thus would read on a solenoid coil.
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have modified Young's invention wherein, in the device placement configuration, the second trace portion is configured to extend back toward the capacitor without winding about the medical device, and the conductor comprises a solenoid configuration, as taught by Young, in order to configure the coil as part of a LC tank circuit (Col. 4, Paragraph starting at line 11).
Claim(s) 26 is/are rejected under 35 U.S.C. 103 as being unpatentable over Young as applied to claim 21 above, and further in view of US20120146667 to Syms et al. "Syms", and further in view of US2006/0264049 to "Ittel".
Regarding claim 26, Young discloses all the features of claim 21 above.
However, Young does not disclose wherein the tunable capacitor is tunable through chemical modification.
Syms teaches in a similar field of endeavor of a radiofrequency detector coils (Paragraph 0006) especially for magnetic resonance imaging and monitoring systems (Paragraph 0001) that may be applied to a catheter-based probe (Paragraph 0026), that includes two capacitors (Paragraph 0006, 0028) used for matching and tuning the radiofrequency circuit. Syms teaches the capacitors can be tuned by laser trimming instead of mechanical trimming (Paragraph 0072). This is similar to what is disclosed in the instant specification (P057).
However, the teachings of Syms do not explicitly disclose that laser trimming of the capacitor is tuning by chemical modification.
However, laser trimming of the capacitor is taught by Ittel as a form of tuning by chemical modification. Ittel teaches in a relevant field of endeavor of printable circuits and antennae for electromagnetic radiation (Paragraph 0110), wherein tuning of the capacitor by laser trimming involves chemical modification (Paragraph 0060). Ittel teaches laser trimming of the impedance of capacitor dielectric layers can be modified by chemically modifying the dielectric constant of the active layer through the use of a modifier for the dielectric layer (Paragraph 0060).
Therefore, It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have modified Smith's invention, wherein the capacitor is tuned by chemical modification, as taught by Syms, in view of Ittel, in order to prevent shorting of the capacitor that can be found in mechanical tuning or trimming, since small slivers of metal track between the closely spaced conductors (Syms, Paragraph 0072). Further, laser trimming provides a method of tuning that does not require aggressive materials or chemicals and can be used for printed circuits (Ittel, Paragraphs 0058-60).
Claim(s) 27 is/are rejected under 35 U.S.C. 103 as being unpatentable over Young as applied to claim 21 above, and further in view of US20090216109 to Karmarkar et al. “Karmarkar”.
Regarding claim 27, Young discloses all the features of claim 21 above.
However, Young does not explicitly disclose the tunable capacitor is tunable through structural modifications.
Karmarkar teaches a similar MRI resonant mark (RF resonator 10, Paragraph 0070-71; for use in an MRI system, Paragraph 0015; wherein the resonator transmits a signal that causes a relatively bright spot on an image that corresponds to the resonator to appear, Paragraph 0062). Karmarkar teaches tuning the capacitor by adjusting the dielectric volume and material of the capacitor (Paragraph 0072), which would read on a structural modification.
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have modified Young's invention, the tunable capacitor is tunable through structural modifications, as taught by Karmarkar, since both the tunable capacitor of Young and Karmarkar can use capacitors with dielectric material in between the conductive portion of the capacitor, and Karmarkar teaches adjusting the volume of the dielectric material would change/tune the capacitance of the capacitor (Karmarkar, Paragraph 0072).
Claim(s) 28 is/are rejected under 35 U.S.C. 103 as being unpatentable over Young as applied to claim 21 above, and further in view of Syms.
Regarding claim 28, Young discloses all the features of claim 21 above.
However, Young does not disclose an outer sealant layer disposed over the tunable capacitor and the conductor coil.
Syms teaches the coil assembly (Fig. 4a and 4b), which includes the coil (Ref. 12) and the capacitors ("connector pads for tunable capacitors", Ref. 16, 18, 20, 22), is placed in a shrink-wrap sleeve (Paragraph 0059), which reads on an outer sealant layer.
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have modified the system as described by Young’s invention, wherein the device contains an outer sealant layer disposed over the tunable capacitor and the conductor coil, as further taught by Syms, in order to hold the coil assembly in place on the catheter (Syms, Paragraph 0059).
Claim(s) 29 is/are rejected under 35 U.S.C. 103 as being unpatentable over Young as applied to claim 21 above, and further in view of Hyde.
Regarding claim 29, Young discloses all the features of claim 21 above.
However, Young does not disclose a resistor operably coupled to the tunable capacitor and the conductor coil.
Hyde teaches a resistor coupled to the tunable capacitor and the conductor coil (Fig. 4, Ref. 402, pressure sensor resistor, coupled to capacitor 403, and coil 404).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have modified Young's invention, as taught by Hyde, in order to change the resonant frequency of the circuit, and allow for cycling the resonant oscillating frequency on and off, for optimal imaging of the device marker and the anatomy it is tracking (Col. 7, Paragraph starting at line 16).
Claim(s) 32 is/are rejected under 35 U.S.C. 103 as being unpatentable over Young as applied to claim 31 above, and further in view of Syms.
Regarding claim 32, Young discloses all the features of claim 31.
However, Young does not disclose wherein the capacitor comprises at least one tuning extension for tuning the capacitor through structural modification.
Syms teaches in a similar field of endeavor of a radiofrequency detector coils (Paragraph 0006) especially for magnetic resonance imaging and monitoring systems (Paragraph 0001) that may be applied to a catheter-based probe (Paragraph 0026), that includes two capacitors (Paragraph 0006, 0028) used for matching and tuning the radiofrequency circuit. As can be seen in Fig. 6b, an extended portion of the capacitor CM can be trimmed away to tune the capacitor (See comparison of the top illustration in Fig. 6b, versus the bottom illustration of Fig. 6b; also see Paragraphs 0066-0067). Removing/trimming an extended portion of the capacitor would read on at least one tuning extension for tuning the capacitor through structural modifications.
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have modified Young's invention wherein the capacitor comprises at least one tuning extension for tuning the capacitor through structural modification, as taught by Syms, in order to determine the tuning and/or matching capacitance value needed for an integrated coil that is formed from electroplating (Syms, Paragraphs 0066, 0070), which is similar to the coil of Young, which is produced from a printed circuit technique.
Claim(s) 34 and 36 is/are rejected under 35 U.S.C. 103 as being unpatentable over Young, in view of Hyde.
Regarding claim 34, Young discloses a device for magnetic resonance imaging ("MRI") tracking (Abstract, flexible catheter for use in connection with magnetic resonance imaging techniques, wherein the catheter carries a closed loop coil arrangement; Col. 3, Paragraph starting at line 49, wherein the closed loop coil arrangement 27 allows for tracking of movement of the object 25 by use of the magnetic resonance imaging apparatus), comprising:
a flexible circuit laminate (Col. 4, lines 4-5, coil arrangement 27 is in the form of a flexible printed circuit, wherein the flexible circuit) comprising:
a capacitor comprising first and second contacts (Figs. 3A, 3B, and 4, electrically conducting areas 39A and 39B, with dielectric layer 41 forms a tuning capacitor; See also Col. 4, lines 16-22);
a first trace portion (See Fig. 4, portion represented by Refs. 43 and 45) comprising proximal and distal ends (See Fig. 4, portion represented by Refs. 43 and 45, wherein the end located on Ref. 43 would read on the proximal end, while the end of Ref. 45, towards Ref. 47, would read on the distal end), the proximal end integrally connected to the first contact of the capacitor (See Figs. 3A, 3B, and 4, proximal end of Ref. 43 starts from rectangular area 39A, See Col. 4, Paragraph starting at line 23, where 39A is one part of the tuning capacitor, Col. 4, lines 16-22, and since the trace section 43 starts from Ref. 39A, this would read on the proximal end of the trace portion being integral with the rectangular area 39A); and
a second trace portion (Fig. 4, portion represented by Refs. 47, 61, 57, 59, and 63) comprising proximal (See Fig. 4, end of Ref. 47 that is connected to Ref. 45), and distal ends (See Fig. 4, end of Ref. 63 that is connected to Ref. 39B), the proximal end integrally connected to the distal end of the first trace portion (See Fig. 4, end of Ref. 47 that is connected to Ref. 45);
wherein the first trace portion is configured to be wound around a medical device in a device placement configuration (Col. 4, lines 4-5, coil arrangement 27 is suitably in the form of a flexible printed circuit wrapped around the object 25; wherein the object 25 is a catheter or surgical instrument, Col. 3, lines 42-43; See Fig. 3A and 3B wherein Ref. 45 of first portion is wrapped around the object 25, unlabeled in the figure, but also described in Col. 4, Paragraph starting at 23, Ref. 45 which forms a single helical turn round the object 25, and Ref. 47 which forms a second helical turn round the object 25, overlying the turn formed by Ref. 45) to form a part of a conductor coil (Part of two coils that embody the coil arrangement 27, Col. 4, Paragraph starting at 7); and
wherein, in the device placement configuration, the distal end of the second trace portion can be operably coupled to the second contact of the capacitor (See Figs. 3A, 3B, and 4, wherein section 63 connects back to the rectangular area 39B, which is part of the tuning capacitor, Col. 4, lines 16-22) to form a resonant marker (closed loop coil arrangement 27 tuned to the r.f. excitation frequency used in operation of the apparatus, to allow tracking of movement of the object 25, which would read on a resonant marker/tracker).
However, Young does not disclose wherein, in the device placement configuration, the second trace portion is configured to extend back toward the capacitor without winding about the medical device.
Hyde teaches a similar marker for interventional devices in magnetic resonant image (MRI) systems (Title; resonant circuit, Fig. 4 and Col. 5, Paragraph starting at line 53; for MRI interventional procedures, Col. 4, Paragraph starting at line 11; for use as a precision marker, Col. 4, Paragraph starting at line 30). Hyde teaches wherein, in the device placement configuration (See Fig. 4, bottom image, the coil is wrapped around , the second trace portion is configured to extend back toward the capacitor without winding about the medical device (See Fig. 4, top and bottom illustrations, wherein the portion after the windings of coil 404, that connects back to capacitor 403 is straight and does not wind around the tubing 409).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have modified Young's invention wherein, in the device placement configuration, the second trace portion is configured to extend back toward the capacitor without winding about the medical device, as taught by Young, in order to configure the coil as part of a LC tank circuit (Col. 4, Paragraph starting at line 11).
Regarding claim 36, the modifications of Young and Hyde disclose all the features of claim 34.
Young further discloses wherein the medical device is a catheter (Abstract, flexible catheter for use in connection with magnetic resonance imaging techniques, wherein the catheter carries a closed loop coil arrangement; wherein the object 25 is a catheter or surgical instrument, Col. 3, lines 42-43).
Claim(s) 35 is/are rejected under 35 U.S.C. 103 as being unpatentable over Young in view of Hyde as applied to claim 34 above, and further in view of Syms.
Regarding claim 35, the modifications of Young and Hyde disclose all the features of claim 34.
However, the modifications of Young and Hyde do not disclose wherein the capacitor comprises at least one tuning extension for tuning the capacitor through structural modification.
Syms teaches in a similar field of endeavor of a radiofrequency detector coils (Paragraph 0006) especially for magnetic resonance imaging and monitoring systems (Paragraph 0001) that may be applied to a catheter-based probe (Paragraph 0026), that includes two capacitors (Paragraph 0006, 0028) used for matching and tuning the radiofrequency circuit. As can be seen in Fig. 6b, an extended portion of the capacitor CM can be trimmed away to tune the capacitor (See comparison of the top illustration in Fig. 6b, versus the bottom illustration of Fig. 6b; also see Paragraphs 0066-0067). Removing/trimming an extended portion of the capacitor would read on at least one tuning extension for tuning the capacitor through structural modifications.
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have modified the device as described by Young and Hyde, wherein the capacitor comprises at least one tuning extension for tuning the capacitor through structural modification, as taught by Syms, in order to determine the tuning and/or matching capacitance value needed for an integrated coil that is formed from electroplating (Syms, Paragraphs 0066, 0070), which is similar to the coil of Young, which is produced from a printed circuit technique.
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.
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 21, 22, 24, and 26-30 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2-4, 7, 14, and 15 of U.S. Patent No. 12,405,327. Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding claim 21, ‘327 discloses a device for magnetic resonance imaging ("MRI") tracking (claim 1, col. 10, lines 26-27, omnidirectional magnetic resonance imaging resonant marker), comprising:
a) a tunable capacitor (claim 1, col. 10, line 28); and
b) a flexible circuit laminate (claim 1, col. 10, line 30-31, second flexible laminate) comprising a first trace portion and a second trace portion, the first trace portion operably coupled between the tunable capacitor and the second trace portion (claim 1, col. 10, lines 32-35),
wherein the first trace portion is configured to be wound around a medical device to form at least part of a conductor coil in a device placement configuration (claim 1, col. 10, lines 36-39), and
wherein the second trace portion is configured to extend back toward the tunable capacitor in the device placement configuration such that a distal end of the second trace portion can be operably coupled to the tunable capacitor to form a resonant marker (claim 1, col. 10, lines 39-41).
Regarding claims 22, 24, and 26-30, the correspondence between the instant claim limitations and ‘327 are mapped in the table below.
Claim 25 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 15 of U.S. Patent No. 12,405,327, in view of US6,957,098 to Hyde et al. “Hyde”.
Regarding claim 25, ‘327 discloses all the features of claim 24.
However, ‘327 does not disclose wherein the conductor coil comprises a solenoid configuration.
Hyde teaches a similar marker for interventional devices in magnetic resonant image (MRI) systems (Title; resonant circuit, Fig. 4 and Col. 5, Paragraph starting at line 53; for MRI interventional procedures, Col. 4, Paragraph starting at line 11; for use as a precision marker, Col. 4, Paragraph starting at line 30). Hyde teaches wherein, in the device placement configuration (See Fig. 4, bottom image, the coil is wrapped around , the second trace portion is configured to extend back toward the capacitor without winding about the medical device (See Fig. 4, top and bottom illustrations, wherein the portion after the windings of coil 404, that connects back to capacitor 403 is straight and does not wind around the tubing 409). Further, as seen in Fig. 4, coil 404 is wound like a spool, and thus would read on a solenoid coil.
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have modified the invention wherein, in the device placement configuration, the second trace portion is configured to extend back toward the capacitor without winding about the medical device, and the conductor comprises a solenoid configuration, as taught by Young, in order to configure the coil as part of a LC tank circuit (Col. 4, Paragraph starting at line 11).
Claims 31, 33 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 8 and 9, of U.S. Patent No. 12,405,327, in view of US 5,819,737 to Young et al. “Young”.
Regarding claim 31, ‘327 discloses a device for magnetic resonance imaging ("MRI") tracking (claim 8, col. 10, line 58, omnidirectional resonant marker) comprising:
a flexible circuit laminate (claim 8, col. 10, lines 62-63);
a capacitor comprising first and second contacts (claim 8, col. 10, lines 59-60);
a first trace portion comprising proximal and distal ends, the proximal end integrally connected to the first contact of the capacitor (claim 8, col. 10, lines 63-64); and
a second trace portion comprising proximal and distal ends, the proximal end integrally connected to the distal end of the first trace portion (claim 8, col. 10, lines 65-67);
wherein the first trace portion is configured to be wound around a medical device in a device placement configuration to form a part of a conductor coil (claim 8, col. 11, lines 4-7),
wherein, in the device placement configuration, the second trace portion is configured to be wound around the medical device and the second trace portion extends back toward the capacitor to form another part of the conductor coil (claim 8, col. 11, lines 1-7), and
wherein, in the device placement configuration, the distal end of the second trace portion can be operably coupled to the second contact of the capacitor to form a resonant marker (claim 8, col. 11, lines 1-3).
However, the embodiment of claim 8 of ‘327 do not disclose wherein the flexible circuit laminate comprises the capacitor, and the windings of the second trace portion overlaps the first trace portion.
Young teaches wherein the flexible circuit laminate comprises the capacitor (Col. 4, lines 4-5, coil arrangement 27 is in the form of a flexible printed circuit; col. 4, Paragraph starting at line 7, coil arrangement 27 includes the conductive track 35 and substrate 37, wherein the substrate 37 includes the two rectangular metallised electrically conducting areas 39A and 29B that make up the capacitor) and the windings of the second trace portion overlaps the first trace portion (Col. 4, Paragraph starting at line 23, Ref. 45 which forms a single helical turn round the object 25, and Ref. 47 which forms a second helical turn round the object 25, overlying the turn formed by Ref. 45, wherein Ref. 45 is part of the first trace portion, and Ref. 47 is part of the second trace portion).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have modified the invention wherein the flexible circuit laminate comprises the capacitor, and the windings of the second trace portion overlaps the first trace portion, as taught by Young, in order to form two helical turns of the same coil (Young, Col. 4, Paragraph starting at line 23) in a double helical configuration (Young, See Fig. 3B).
Regarding claim 33, the correspondence between the instant claim limitations and ‘327 are mapped in the table below.
Claim 32 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 8, of U.S. Patent No. 12,405,327, in view of Young, as applied in claim 31, and further in view of US20120146667 to Syms et al. “Syms”.
Regarding claim 32, the modifications of ‘327 and Young disclose all the features of claim 31.
However, the modifications of ‘327 and Young do not disclose wherein the capacitor comprises at least one tuning extension for tuning the capacitor through structural modification.
Syms teaches in a similar field of endeavor of a radiofrequency detector coils (Paragraph 0006) especially for magnetic resonance imaging and monitoring systems (Paragraph 0001) that may be applied to a catheter-based probe (Paragraph 0026), that includes two capacitors (Paragraph 0006, 0028) used for matching and tuning the radiofrequency circuit. As can be seen in Fig. 6b, an extended portion of the capacitor CM can be trimmed away to tune the capacitor (See comparison of the top illustration in Fig. 6b, versus the bottom illustration of Fig. 6b; also see Paragraphs 0066-0067). Removing/trimming an extended portion of the capacitor would read on at least one tuning extension for tuning the capacitor through structural modifications.
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have modified the invention, wherein the capacitor comprises at least one tuning extension for tuning the capacitor through structural modification, as taught by Syms, in order to determine the tuning and/or matching capacitance value needed for an integrated coil that is formed from electroplating (Syms, Paragraphs 0066, 0070), which is similar to the coil of Young, which is produced from a printed circuit technique.
Claim 34 and 36 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 8, 9, and 18, of U.S. Patent No. 12,405,327, in view of Young.
Regarding claim 34, 327 discloses a device for magnetic resonance imaging ("MRI") tracking (claim 8, col. 10, line 58, omnidirectional resonant marker), comprising:
a flexible circuit laminate (claim 8, col. 10, lines 62-63);
a capacitor comprising first and second contacts (claim 8, col. 10, lines 59-60);
a first trace portion comprising proximal and distal ends, the proximal end integrally connected to the first contact of the capacitor (claim 8, col. 10, lines 63-64); and
a second trace portion comprising proximal and distal ends, the proximal end integrally connected to the distal end of the first trace portion (claim 8, col. 10, lines 65-67);
wherein the first trace portion is configured to be wound around a medical device in a device placement configuration to form at least part of a conductor coil (claim 8, col. 11, lines 4-7), and
wherein, in the device placement configuration, the second trace portion is configured to extend back toward the capacitor without winding about the medical device (claim 18, col. 12, lines 6-8); and
wherein, in the device placement configuration, the distal end of the second trace portion can be operably coupled to the second contact of the capacitor to form a resonant marker (claim 8, col. 11, lines 1-3).
However, the embodiment of claim 8 of ‘327 do not disclose wherein the flexible circuit laminate comprises the capacitor.
Young teaches wherein the flexible circuit laminate comprises the capacitor (Col. 4, lines 4-5, coil arrangement 27 is in the form of a flexible printed circuit; col. 4, Paragraph starting at line 7, coil arrangement 27 includes the conductive track 35 and substrate 37, wherein the substrate 37 includes the two rectangular metallised electrically conducting areas 39A and 29B that make up the capacitor)
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have modified the invention wherein the flexible circuit laminate comprises the capacitor, as taught by Young, in order to allow the coil arrangement, which includes the capacitor, to be formed using a printed circuit technique (Young, Col. 4, Paragraph starting at line 7), such that the coil arrangement can be flexible wrapped around the object/ medical tool (Col. 4, lines 4-5).
Regarding claim 36, the correspondence between the instant claim limitations and ‘327 are mapped in the table below.
Claim 35 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 8 and 18, of U.S. Patent No. 12,405,327, in view of Young, as applied in claim 31, and further in view of US20120146667 to Syms et al. “Syms”.
Regarding claim 35, the modifications of ‘327 and Young disclose all the features of claim 34.
However, the modifications of ‘327 and Young do not disclose wherein the capacitor comprises at least one tuning extension for tuning the capacitor through structural modification.
Syms teaches in a similar field of endeavor of a radiofrequency detector coils (Paragraph 0006) especially for magnetic resonance imaging and monitoring systems (Paragraph 0001) that may be applied to a catheter-based probe (Paragraph 0026), that includes two capacitors (Paragraph 0006, 0028) used for matching and tuning the radiofrequency circuit. As can be seen in Fig. 6b, an extended portion of the capacitor CM can be trimmed away to tune the capacitor (See comparison of the top illustration in Fig. 6b, versus the bottom illustration of Fig. 6b; also see Paragraphs 0066-0067). Removing/trimming an extended portion of the capacitor would read on at least one tuning extension for tuning the capacitor through structural modifications.
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have modified the invention, wherein the capacitor comprises at least one tuning extension for tuning the capacitor through structural modification, as taught by Syms, in order to determine the tuning and/or matching capacitance value needed for an integrated coil that is formed from electroplating (Syms, Paragraphs 0066, 0070), which is similar to the coil of Young, which is produced from a printed circuit technique.
The following is mapping between claims of the instant application to the claims
of the ‘327 patent.
Instant Application
‘327 Patent
21
1
22
14
23
1+14, inherent in the second trace portion extending back towards the tunable capacitor and overlapping the windings of the first trace portion
24
15
25
1+15+Hyde
26
2
27
2
28
3
29
4
30
7
31
8+Young
32
8+Young+Syms
33
9
34
8+18+Young
35
8+18+Young+Syms
36
9
Claims 21, 23, 26-30 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 6, and 8-11 of U.S. Patent No. 11,714,143. Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding claim 21, ‘143 discloses a device for magnetic resonance imaging ("MRI") tracking (claim 6, col. 10, line 56, omnidirectional magnetic resonance imaging resonant marker), comprising:
a) a tunable capacitor (claim 6, col. 10, line 58); and
b) a flexible circuit laminate (claim 6, col. 10, line 57, flexible circuit laminate) comprising a first trace portion (claim 6, col. 10, lines 62, “trace connected to tunable capacitor”) and a second trace portion (claim 6, col. 10, line 63, return trace), the first trace portion operably coupled between the tunable capacitor and the second trace portion (claim 6, col. 10, lines 61-64),
wherein the first trace portion is configured to be wound around a medical device to form at least part of a conductor coil in a device placement configuration (claim 6, col. 10, lines 65-66, trace is formed around a catheter), and
wherein the second trace portion is configured to extend back toward the tunable capacitor in the device placement configuration such that a distal end of the second trace portion can be operably coupled to the tunable capacitor to form a resonant marker (claim 6, col. 11, lines 3-5).
Regarding claims 23, 26-30, the correspondence between the instant claim limitations and ‘143 are mapped in the table below.
Claim 22 and 24 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 6, of U.S. Patent No. 11,714,143, in view of US5,819,737 to Young et al. “Young”.
Regarding claim 22, ‘143 discloses all the features of claim 21 above.
However, ‘143 does not disclose wherein the second trace portion is configured to be wound around the medical device to form at least another part of the conductor coil in the device placement configuration.
Young teaches wherein the second trace portion is configured to be wound around the medical device to form at least another part of the conductor coil in the device placement configuration (See Fig. 3B and 4, portions 61, 57, 59, and 63 would read on the second trace portion, wherein portion 61 initially extends back towards the capacitor plate 39B, and then portions 57 and 59 further wraps around the object 25, which is a catheter, Col. 3, lines 42-43).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have modified the invention wherein the second trace portion is configured to be wound around the medical device to form at least another part of the conductor coil in the device placement configuration, as taught by Young, in order to form a secondary coil on the coil arrangement on the catheter.
Regarding claim 24, ‘143 discloses all the features of claim 21 above.
‘143 discloses that the second trace portion is configured to extend back toward the tunable capacitor such that the distal end of the return trace contacts the tunable capacitor (claim 6, col. 11, line 3-5).
However, ‘143 does not disclose wherein the second trace portion is configured to extend back toward the tunable capacitor in the device placement configuration without winding around the medical device.
Young teaches section 63 of the conductive track 35 (See Fig. 3A and 4) that as seen in the figures, extends back toward the tunable capacitor (Ref. 39B), in the device placement configuration (See Fig. 3A), without winding around the medical device (See Fig. 3A), section 63 extends straight back to the capacitor plate 39B.
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have modified the invention wherein the second trace portion is configured to extend back toward the tunable capacitor in the device placement configuration without winding around the medical device, as taught by Young, in order to serve only as a connection between the coil and the capacitor (col. 4, lines 37-39).
Claim 31 and 33 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 6, of U.S. Patent No. 11,714,143, in view of Young.
Regarding claim 31, ‘143 discloses a device for magnetic resonance imaging ("MRI") tracking (claim 6, col. 10, line 56, omnidirectional magnetic resonance imaging resonant marker), comprising:
a flexible circuit laminate (claim 6, col. 10, line 57, flexible circuit laminate) comprising:
a capacitor (claim 6, col. 10, line 58);
a first trace portion comprising proximal and distal ends, the proximal end integrally connected to the capacitor (claim 6, col. 10, lines 62, “trace connected to tunable capacitor”, and also the end of the trace opposite to the connection of the capacitor, the return trace is connected to the trace, claim 6, col. 10, lines 62-64; therefore, if the end of the trace connected to the return trace is the distal end, then the end connected to the capacitor would be the proximal end); and
a second trace portion comprising proximal and distal ends, the proximal end integrally connected to the distal end of the first trace portion (the return trace is connected to the trace, claim 6, col. 10, lines 62-64; the distal end of the return trace is connected to the capacitor, claim 6, col. 11, lines 3-5, therefore the end connected to the trace must be the proximal end);
wherein the first trace portion is configured to be wound around a medical device in a device placement configuration to form a part of a conductor coil (claim 6, col. 10, lines 65-66, trace is formed around a catheter), and
wherein, in the device placement configuration, the distal end of the second trace portion can be operably coupled to the capacitor to form a resonant marker (claim 6, col. 11, lines 3-5).
However, ‘143 does not explicitly disclose a first contact of the capacitor and second contacts of the capacitor, wherein the proximal end of the first trace portion is connected to the first contact of the capacitor, and wherein the distal end of the second trace portion is connected to the second contact of the capacitor, and wherein, in the device placement configuration, the second trace portion is configured to be wound around the medical device overlapping the first trace portion as the second trace portion extends back toward the capacitor to form another part of the conductor coil.
Young teaches a first contact of the capacitor and second contacts of the capacitor (Figs. 3A, 3B, and 4, electrically conducting areas 39A and 39B; See also Col. 4, lines 16-22), wherein the proximal end of the first trace portion is connected to the first contact of the capacitor (See Fig. 4, portion represented by Refs. 43 and 45 would read on the first trace portion, and the proximal end of Ref. 43 connects to the rectangular area 39A, as seen in Figs. 3A and 4), and
wherein the distal end of the second trace portion is connected to the second contact of the capacitor (See Fig. 4, Refs. 47, 61, 59, and 63 would read on the second trace portion; See Figs. 3A and 4, distal end of Ref. 63 is connected to rectangular area 39B), and
wherein, in the device placement configuration, the second trace portion is configured to be wound around the medical device overlapping the first trace portion as the second trace portion extends back toward the capacitor to form another part of the conductor coil (See Fig. 3B, Ref. 47 of second trace portion wraps around the object and overlaps with Ref. 45 of the first trace portion, before extending back toward the capacitor/rectangular area 39B).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have modified the invention wherein a first contact of the capacitor and second contacts of the capacitor, wherein the proximal end of the first trace portion is connected to the first contact of the capacitor, and wherein the distal end of the second trace portion is connected to the second contact of the capacitor, and wherein, in the device placement configuration, the second trace portion is configured to be wound around the medical device overlapping the first trace portion as the second trace portion extends back toward the capacitor to form another part of the conductor coil, as taught by Young, in order to form a coil arrangement that consist of two double helices.
Regarding claims 33, the correspondence between the instant claim limitations and ‘143 are mapped in the table below.
Claim 32 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 6, of U.S. Patent No. 11,714,143, in view of Young, as applied in claim 31, and further in view of US20120146667 to Syms et al. “Syms”.
Regarding claim 35, the modifications of ‘143 and Young disclose all the features of claim 31.
However, the modifications of ‘143 and Young do not disclose wherein the capacitor comprises at least one tuning extension for tuning the capacitor through structural modification.
Syms teaches in a similar field of endeavor of a radiofrequency detector coils (Paragraph 0006) especially for magnetic resonance imaging and monitoring systems (Paragraph 0001) that may be applied to a catheter-based probe (Paragraph 0026), that includes two capacitors (Paragraph 0006, 0028) used for matching and tuning the radiofrequency circuit. As can be seen in Fig. 6b, an extended portion of the capacitor CM can be trimmed away to tune the capacitor (See comparison of the top illustration in Fig. 6b, versus the bottom illustration of Fig. 6b; also see Paragraphs 0066-0067). Removing/trimming an extended portion of the capacitor would read on at least one tuning extension for tuning the capacitor through structural modifications.
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have modified the invention, wherein the capacitor comprises at least one tuning extension for tuning the capacitor through structural modification, as taught by Syms, in order to determine the tuning and/or matching capacitance value needed for an integrated coil that is formed from electroplating (Syms, Paragraphs 0066, 0070), which is similar to the coil of Young, which is produced from a printed circuit technique.
Claims 34 and 36 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 6, of U.S. Patent No. 11,714,143, in view of Young.
Regarding claim 34, ‘143 discloses a device for magnetic resonance imaging ("MRI") tracking (claim 6, col. 10, line 56, omnidirectional magnetic resonance imaging resonant marker), comprising:
a flexible circuit laminate (claim 6, col. 10, line 57, flexible circuit laminate) comprising:
a capacitor (claim 6, col. 10, line 58);
a first trace portion comprising proximal and distal ends, the proximal end integrally connected to the capacitor (claim 6, col. 10, lines 62, “trace connected to tunable capacitor”, and also the end of the trace opposite to the connection of the capacitor, the return trace is connected to the trace, claim 6, col. 10, lines 62-64; therefore, if the end of the trace connected to the return trace is the distal end, then the end connected to the capacitor would be the proximal end); and
a second trace portion comprising proximal and distal ends, the proximal end integrally connected to the distal end of the first trace portion (the return trace is connected to the trace, claim 6, col. 10, lines 62-64; the distal end of the return trace is connected to the capacitor, claim 6, col. 11, lines 3-5, therefore the end connected to the trace must be the proximal end);
wherein the first trace portion is configured to be wound around a medical device in a device placement configuration to form a part of a conductor coil (claim 6, col. 10, lines 65-66, trace is formed around a catheter), and
wherein, in the device placement configuration, the distal end of the second trace portion can be operably coupled to the capacitor to form a resonant marker (claim 6, col. 11, lines 3-5).
However, ‘143 does not explicitly disclose a first contact of the capacitor and second contacts of the capacitor, wherein the proximal end of the first trace portion is connected to the first contact of the capacitor, and wherein the distal end of the second trace portion is connected to the second contact of the capacitor, and wherein, in the device placement configuration, the second trace portion is configured to extend back toward the capacitor without winding about the medical device.
Young teaches a first contact of the capacitor and second contacts of the capacitor (Figs. 3A, 3B, and 4, electrically conducting areas 39A and 39B; See also Col. 4, lines 16-22), wherein the proximal end of the first trace portion is connected to the first contact of the capacitor (See Fig. 4, portion represented by Refs. 43, 45, 47, 61, and 59 would read on the first trace portion, and the proximal end of Ref. 43 connects to the rectangular area 39A, as seen in Figs. 3A and 4), and
wherein the distal end of the second trace portion is connected to the second contact of the capacitor (See Fig. 4, Ref. 63 would read on the second trace portion; See Figs. 3A and 4, distal end of Ref. 63 is connected to rectangular area 39B), and
wherein, in the device placement configuration, the second trace portion is configured to extend back toward the capacitor without winding about the medical device (See Figs. 3A and 4, section 63 extends back toward the tunable capacitor, Ref. 39B, in the device placement configuration, Fig. 3A, without winding around the medical device: See Fig. 3A, section 63 extends straight back to the capacitor plate 39B).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have modified the invention wherein a first contact of the capacitor and second contacts of the capacitor, wherein the proximal end of the first trace portion is connected to the first contact of the capacitor, and wherein the distal end of the second trace portion is connected to the second contact of the capacitor, and wherein, in the device placement configuration, the second trace portion is configured to extend back toward the capacitor without winding about the medical device, as taught by Young, in order to form the coil arrangement such that the second trace portion only serves as a connection between the coil and the capacitor (col. 4, lines 37-39).
Regarding claim 36, the correspondence between the instant claim limitations and ‘143 are mapped in the table below.
Claim 35 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 6, of U.S. Patent No. 11,714,143, in view of Young, as applied in claim 34, and further in view of Syms.
Regarding claim 35, the modifications of ‘327 and Young disclose all the features of claim 34.
However, the modifications of ‘327 and Young do not disclose wherein the capacitor comprises at least one tuning extension for tuning the capacitor through structural modification.
Syms teaches in a similar field of endeavor of a radiofrequency detector coils (Paragraph 0006) especially for magnetic resonance imaging and monitoring systems (Paragraph 0001) that may be applied to a catheter-based probe (Paragraph 0026), that includes two capacitors (Paragraph 0006, 0028) used for matching and tuning the radiofrequency circuit. As can be seen in Fig. 6b, an extended portion of the capacitor CM can be trimmed away to tune the capacitor (See comparison of the top illustration in Fig. 6b, versus the bottom illustration of Fig. 6b; also see Paragraphs 0066-0067). Removing/trimming an extended portion of the capacitor would read on at least one tuning extension for tuning the capacitor through structural modifications.
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have modified the invention, wherein the capacitor comprises at least one tuning extension for tuning the capacitor through structural modification, as taught by Syms, in order to determine the tuning and/or matching capacitance value needed for an integrated coil that is formed from electroplating (Syms, Paragraphs 0066, 0070), which is similar to the coil of Young, which is produced from a printed circuit technique.
Note: Regarding claim 25, there is no double patenting rejection for claim 25, based on ‘143.
The following is mapping between claims of the instant application to the claims
of the ‘143 patent.
Instant Application
‘143 Patent
21
6
22
6+Young
23
6, col. 10, line 65-66
24
6+Young
25
Patent eligible
26
11
27
10, removal of a portion of the capacitor reads on structural modification
28
8
29
9
30
6, lines 65-66
31
6+Young
32
6+Young+Syms
33
6, lines 65-66
34
6+Young
35
6+Young+Syms
36
6, lines 65-66
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Milton Truong whose telephone number is (571)272-2158. The examiner can normally be reached 9AM - 5PM, MON-FRI.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Keith Raymond can be reached at (571) 270-1790. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MT/Examiner, Art Unit 3798
/KEITH M RAYMOND/Supervisory Patent Examiner, Art Unit 3798
