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 .
Amendment
2. Receipt is acknowledged of the Amendment filed July 15, 2026.
Terminal Disclaimer
3. The terminal disclaimer filed on June 11, 2026 has been reviewed and is accepted. The terminal disclaimer has been recorded.
Information Disclosure Statement
4. The Information Disclosure Statement filed on July 15, 2026 has been considered. An initialed copy of the Form 1449 is enclosed herewith.
Remarks
5. Upon further review, the examiner has determined that the pending claims are also not patentably distinct from the claims of U.S. Patent No. 12,676,258. Accordingly, a nonstatutory obviousness-type double patenting rejection based on 12,676,258 is included in this Office action.
Double Patenting
6. 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 claims because the examined application claim is either anticipated by, or would have been obvious over, the reference claims. 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 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.
7. Claims 1-10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 12,676,528, hereinafter ‘528. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claimed invention recites similar limitations of ‘528.
Application 19/356,886 (claim 1)
Patent No. 12,676,528 (claim 1)
1. A method of imprinting a magnetic signature onto a medical device, comprising: receiving at least a portion of the medical device within an imprinting space of a magnetic signature imprinting system; determining an identity of the medical device; determining a defined magnetic signature to imprint onto the medical device;
imprinting a magnetic signature based on the defined magnetic signature onto the medical device to define an imprinted magnetic signature; and validating that the imprinted magnetic signature matches the defined magnetic signature.
1. A method of imprinting a magnetic signature onto a medical device, comprising: receiving at least a signature portion of the medical device within an imprinting space of a magnetic signature imprinting system; determining an identity of the medical device; determining a defined magnetic signature to imprint onto the signature portion; imprinting the magnetic signature onto the portion of the medical device based on the defined magnetic signature, thereby defining an imprinted magnetic signature; and validating that the imprinted magnetic signature matches the defined magnetic signature.
Application 19/356,886 (claim 2)
Patent No. 12,676,528 (claim 5)
2. The method according to claim 1, wherein the magnetic signature includes a series of dipoles disposed along the medical device.
5. The method according to claim 1, wherein the magnetic signature includes a series of dipoles disposed along the signature portion.
Application 19/356,886 (claim 3)
Patent No. 12,676,528 (claim 13)
3. The method according to claim 1, further comprising: receiving at least one of data or electrical signals from a number of sensors of the system, the at least one of data or electrical signals based on a number of physical characteristics of the medical device, wherein determining an identity of the medical device is based on at least one of the number of physical characteristics of the medical device.
13. The method according to claim 10, wherein the plurality of identification sensors include one or more first sensors configured to provide the data and/or electrical signals based on physical characteristics of the medical device, wherein said determining the identity of the medical device is based on at least one of the physical characteristics of the medical device.
Application 19/356,886 (claim 4)
Patent No. 12,676,528 (claims 3)
4. The method according to claim 1, wherein validating the imprinted magnetic signature includes: determining the imprinted magnetic signature via a number of magnetometers of the system; and comparing the imprinted magnetic signature with the defined magnetic signature to verify that the imprinted magnetic signature matches the defined magnetic signature.
3. The method according to claim 1, wherein said validating that the imprinted magnetic signature matches the defined magnetic signature comprises determining the imprinted magnetic signature based on electrical signals provided by a plurality of magnetometers of the magnetic signature imprinting system.
Application 19/356,886 (claim 5)
Patent No. 12,676,528 (claim 5)
5. The method according to claim 1, wherein: the magnetic signature includes a number of dipoles disposed along the medical device, imprinting a magnetic signature includes activating one or more electromagnets of the system, and each electromagnet is configured to imprint a dipole onto the medical device when activated.
5. The method according to claim 1, wherein the magnetic signature includes a series of dipoles disposed along the signature portion.
Application 19/356,886 (claim 6)
Patent No. 12,676,528 (claim 8)
6. The method according to claim 5, wherein activating one or more electromagnets includes: activating a first pair of electromagnets separated by a first electromagnet spacing, the first electromagnet spacing defining a first spacing be adjacent dipoles, and activating a second pair of electromagnets separated by a second electromagnet spacing, the second electromagnet spacing defining a second spacing between adjacent dipoles, and the second spacing between adjacent dipoles is different from the first spacing be adjacent dipoles.
8. The method according to claim 5, wherein a first spacing between a first pair of adjacent dipoles of the series of dipoles is different from a second spacing between a second pair of adjacent dipoles of the series of dipoles.
Application 19/356,886 (claim 7)
Patent No. 12,676,528 (claim 6)
7. The method according to claim 5, wherein: the one or more electromagnets includes a first electromagnet having a first electromagnet length and second electromagnet having a second electromagnet length different from the first electromagnet length, and activating one or more electromagnets includes: activating the first electromagnet to imprint a dipole having a first dipole length; and activating the second electromagnet to imprint a dipole having a second dipole length, wherein the second dipole length is different from the first dipole length.
6. The method according to claim 5, wherein at least one dipole of the series of dipoles includes a first length and at least one other dipole of the series of dipoles includes a second length different from the first length.
Application 19/356,886 (claim 8)
Patent No. 12,676,528 (claim 8)
8. The method according to claim 5, wherein: a power converted of the system is configured to supply power to the one or more electromagnets in a first polarity and an opposite second polarity, and activating one or more electromagnets includes: supplying power to one electromagnet in a first polarity to imprint a first dipole having a first orientation; and supplying power to the one electromagnet in a second polarity to imprint a second dipole having a second orientation opposite the first orientation.
8. The method according to claim 5, wherein a first spacing between a first pair of adjacent dipoles of the series of dipoles is different from a second spacing between a second pair of adjacent dipoles of the series of dipoles.
Application 19/356,886 (claim 9)
Patent No. 12,676,528 (claim 17)
9. The method according to claim 5, wherein: a device engagement mechanism of the system is configured to displace the medical device along the imprinting space, and activating one or more electromagnets includes: activating a first subset of the electromagnets; displacing the medical device from a first position within the imprinting space to a second position within the imprinting space; and activating a second subset of the electromagnets.
17. The method according to claim 1, wherein: said receiving at least the signature portion of the medical device includes coupling the medical device with a device engagement member of the magnetic signature imprinting system, magnetic signature imprinting system, and said imprinting the magnetic signature includes displacing the device engagement member based on the defined magnetic signature between: (i) a first engagement member position defining a first longitudinal position of the signature portion within the imprinting space of the magnetic signature imprinting system, and (ii) a second engagement member position defining a second longitudinal position of the signature portion within the imprinting space, wherein the second engagement member position is different from the first engagement member position.
Application 19/356,886 (claim 10)
Patent No. 12,676,528 (claim 18)
10. The method according to claim 9, wherein imprinting a magnetic signature includes: determining a longitudinal position of at least a portion of the imprinted magnetic signature within the imprinting space via one or more magnetometers of the system; and displacing the medical device via device engagement mechanism to adjust the longitudinal position of the at least a portion of the imprinted magnetic signature within the imprinting space.
18. The method according to claim 17, wherein said imprinting the magnetic signature includes: determining a longitudinal position of a portion of the imprinted magnetic signature within the imprinting space via one or more magnetometers, and displacing the first engagement member to adjust the longitudinal position of the portion of the imprinted magnetic signature within the imprinting space.
The only difference between the present claimed invention and ‘528 is the utilization of different terminologies and/or rephrasing of the terminologies. Due to the similarities of the pending claims and the claims set forth in ‘528, the Examiner believes that the scope of each claim set is almost identical.
Conclusion
8. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Allyson N. Trail whose telephone number is (571) 272-2406. The examiner can normally be reached between the hours of 7:30AM to 4:00PM Monday thru Friday.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael G. Lee, can be reached on (571) 272-2398. The fax phone number for this Group is (571) 273-8300.
Communications via Internet e-mail regarding this application, other than those under 35 U.S.C. 132 or which otherwise require a signature, may be used by the applicant and should be addressed to [allyson.trail@uspto.gov].
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/ALLYSON N TRAIL/ Primary Examiner, Art Unit 2876 July 27, 2026
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