`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`www .uspto.gov
`
`APPLICATION NO.
`
`14/195,435
`
`
`
`
` FILING DATE
`
`
`03/03/2014
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKETNO.
`
`CONFIRMATIONNO.
`
`Howard C. Root
`
`2005.86USREI6
`
`9278
`
`PATTERSON THUENTE PEDERSEN,P.A. aee
`PAIR
`SERSED
`rT
`PAT
`4800 IDS CENTER
`WILLIAMS, CATHERINE SERKE
`80 SOUTH 8TH STREET
`MINNEAPOLIS, MN 55402-2100
`
`PAPER NUMBER
`
`3993
`
`MAIL DATE
`
`03/15/2016
`
`DELIVERY MODE
`
`PAPER
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`PTOL-90A (Rev. 04/07)
`
`

`

`
`
`Status
`1)X] Responsive to communication(s)filed on 12/18/15.
`LJ A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiledon__
`2a)L] This action is FINAL.
`2b)L] This action is non-final.
`3)L] Anelection was made bythe applicant in responsetoarestriction requirementset forth during the interview on
`
`___} the restriction requirement and election have been incorporated into this action.
`4)X] Since this application is in condition for allowance exceptfor formal matters, prosecution as to the merits is
`closed in accordance with the practice under Ex parte Quayle, 1935 C.D. 11, 453 O.G. 213.
`
`Disposition of Claims*
`5)KX] Claim(s) 25-55 is/are pending in the application.
`5a) Of the above claim(s)
`is/are withdrawn from consideration.
`6)X] Claim(s) 25-55 is/are allowed.
`7)L) Claim(s)
`is/are rejected.
`8)L] Claim(s)
`is/are objected to.
`9)L] Claim(s)
`are subject to restriction and/or election requirement.
`* If any claims have been determined allowable, you may be eligible to benefit from the Patent Prosecution Highway program at a
`participating intellectual property office for the corresponding application. For more information, please see
`
`nite://www.usoto.gov/patenis/init events/pph/index.isp
`
`or send an inquiry to PPHieedback@uspto.qov.
`
`
`
`Application Papers
`10)L] The specification is objected to by the Examiner.
`
`11)L] The drawing(s)filed on
`is/are: a)L_] accepted or b)L_] objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121(d).
`
`Priority under 35 U.S.C. § 119
`12)[] Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
`a)L] All
`b)[-] Some** c)L] None ofthe:
`1..] Certified copies of the priority documents have been received.
`2.L] Certified copies of the priority documents have been received in Application No.
`3.L] Copies of the certified copies of the priority documents have been receivedin this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
`““ See the attached detailed Office action for a list of the certified copies not received.
`
`
`
`Applicant(s)
`Application No.
` 14/195,435 ROOT ETAL.
`
`Examiner
`Art Unit
`AIA(First Inventorto File)
`Office Action Summary
`
`3993CATHERINE S. WILLIAMS Na
`
`-- The MAILING DATEof this communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLYIS SET TO EXPIRE 2MONTHS FROM THE MAILING DATE OF
`THIS COMMUNICATION.
`Extensions of time may be available underthe provisions of 37 CFR 1.136(a).
`after SIX (6) MONTHS from the mailing date of this communication.
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Anyreply received by the Office later than three months after the mailing date of this communication, evenif timely filed, may reduce any
`earned patent term adjustment. See 37 CFR 1.704(b).
`
`In no event, however, may a reply betimely filed
`
`Attachment(s)
`3) CT] Interview Summary (PTO-413)
`1) CT] Notice of References Cited (PTO-892)
`Paper No(s)/Mail Date.
`:
`.
`4) Ol Other:
`2) CT] Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mail Date
`U.S. Patent and Trademark Office
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20160310
`
`

`

`Application/Control Number: 14/195,435
`
`Art Unit: 3993
`
`Page 2
`
`Thepresent application is being examined underthe pre-AIAfirst to invent provisions. '
`
`This application is in condition for allowance except for the following formal matters:
`
`Application Data Sheet
`
`The Application Data Sheet (“ADS”) filed 3/3/14 under Domestic Benefit/National Stage
`
`Information incorrectly lists the continuity type of the current application. The current
`
`application should be denoted on two separate lines as (1) a continuation of prior reissue
`
`application number 14/070,161 and (2) a reissue of application 13/359,059 resulting in US Patent
`
`No. 8,292,850, the underlying patent. Below is copied text from the Reissue Application Filing
`
`Guide discussing an example of howtofill out the ADS whenthe application is a reissue
`
`continuation or divisional:
`
`In the ADS, the application should both be identified as a continuation (or
`divisional) of the parent reissue application, and should also be identified as a
`reissue application of the underlying patent. Here is an example of the proper way
`to make suchidentifications:
`
`Facts for this example:
`* U.S. Patent Application 32/456789 wasfiled January 14, 2003 andis a
`continuation-in-part of 32/012345 wasfiled June 6, 2002.
`= U.S. Patent Application 32/456789 wasissued as U.S. Patent No.
`9,876,543 on November 20, 2007.
`" Reissue Application 33/123456 wasfiled November15, 2011, for U.S.
`Patent No. 9,876,543.
`« The application currently being filed is a reissue continuation application,
`meaning it is a continuation of reissue application 33/123456, andis also
`a reissue of U.S. Patent No. 9,876,543.
`
`"It is noted that while the examination of the currentreissue application falls under the pre-AIAfirst to invent
`provisions dueto the filing date of US Patent No. 8,292,850 (“the ‘850 patent’); the application for reissuefiling
`date is after September 16, 2012 and therefore is subject to the reissue rule changes enacted under the Leahy-Smith
`American Invents Act (AJA), see Federal Register, Vol. 77, No. 157, pg. 48820, August 16, 2012.
`
`

`

`Application/Control Number: 14/195,435
`
`Art Unit: 3993
`
`Page 3
`
`
`
`SECS
`
`Phos io Benafit/National Stage fnfarmation: RSS EPS
`
`
`
`eonadponanedennnen
`
`(Screen shot of relevant portion of USPTO Form PTO/AIA/14, Application Data
`Sheet)
`
`Whenthefield on the left side beneath “Application Number” is left blank, it
`signifies “This Application is a” to refer to the application being submitted. Thus,
`the information above clearly indicates that this application is both a continuation
`of 33/123,456 and a reissue of U.S. Patent No. 9,876,543.
`
`See The Reissue Application Filing Guide: 7. Additional Information for Continuation
`
`Reissue and Divisional Reissue Applications.”
`
`A corrected ADS mustidentify the information that is being changed with underlining
`
`for insertions and strike-through or brackets for text removed, except that identification of
`
`information being changedis not required for an ADSincluded with an initial submission under
`
`35 U.S.C. 371. In general, the identification of the information being changed should be made
`
`relative to the most recent filing receipt. A corrected ADS mayincludeall of the section
`
`° http://www.uspto.gov/forms/uspto_reissue_ads_guide_Sept2014.pdf
`
`

`

`Application/Control Number: 14/195,435
`
`Art Unit: 3993
`
`Page 4
`
`headings listed in 37 CFR 1.76(b) with all appropriate data for each heading or only those
`
`sections (including the section headings) containing changes or updated information. See 37
`
`CFR 1.76(c)(2).°. Additionally, the corrected ADS should befiled with a request for a corrected
`
`filing receipt unless accompanied by a request to take some other action as per MPEP 601.05(a)
`
`Il.
`
`Allowable Subject Matter
`
`Claims 25-55 are allowed.
`
`The following is an examiner’s statement of reasons for allowance: regarding new
`
`independent claims 25 and 52 and thereby dependent claims 26-42, 44-50 and 53-55, the prior
`
`art fails to teach, amongall the limitations, maintaining the distal end portion of the tubular
`
`structure of the guide extension catheter in position beyondthe distal end of the guide catheter;
`
`and while maintaining the distal end of the guide extension catheter positioned beyondthe distal
`
`end of the guide catheter, advancing a balloon catheter or stent at least partially through the
`
`guide catheter and the guide extension catheter and into the coronary artery, including advancing
`
`the balloon catheter or stent through a hemostatic valve associated with a proximal endof the
`
`guide catheter.
`
`Regarding new independentclaims 43 and 51, the priorart fails to teach, amongall the
`
`limitations, a method including advancing a distal end of a guide catheter, advancing a distal end
`
`of a guide extension catheter through, and beyondthedistal end of, the guide catheter while a
`
`segmentdefining a side opening of the guide extension catheter and a proximalend of a tubular
`
`> MPEP 601.05(a) II. Correcting and Updating an ADS orInformation Otherwise of Record.
`
`

`

`Application/Control Number: 14/195,435
`
`Art Unit: 3993
`
`Page 5
`
`structure of the guide extension catheter remain within the guide catheter in combination with
`
`advancing the treatmentcatheter at least partially through the side opening includes advancing
`
`the treatment catheter through a structure having an arcuate cross-sectional shape extending for a
`
`length of 15cm.
`
`Theprior art most similar is to Adamset al. US Pub # 2004/0010280 (“Adams‘280”’)
`
`and to Adamset al US Pat. # 5,527,292 (“Adams *292”). Applicant’s arguments regarding these
`
`two references on pages 25-40 in their response filed 12/18/15 are persuasive and are
`
`incorporated by reference. Additionally, while paragraph [0061] of Adams ‘280 states that the
`
`embolic protection device could be an occlusive device such as a balloon, figures 2B and 2C in
`
`conjunction with paragraph 0064 clearly state that the embolic protection device is advanced into
`
`the guide seal when the guidesealis still within the guide catheter. This disclosed advancement
`
`of the embolic protection device does not read on “while maintaining the distal end of the guide
`
`extension catheter positioned beyondthe distal end of the guide catheter, advancing a balloon
`
`catheter or stent at least partially through the guide catheter and the guide extension catheter and
`
`into the coronary artery, including advancing the balloon catheter or stent through a hemostatic
`
`valve associated with a proximal end ofthe guide catheter.”
`
`Noneofthe prior art of record discloses ““a method including advancinga distal end of a
`
`guide catheter, advancing a distal end of a guide extension catheter through, and beyond the
`
`distal end of, the guide catheter while a segmentdefining a side opening of the guide extension
`
`catheter and a proximalend of a tubular structure of the guide extension catheter remain within
`
`the guide catheter in combination with advancing the treatment catheter at least partially through
`
`

`

`Application/Control Number: 14/195,435
`
`Art Unit: 3993
`
`Page 6
`
`the side opening includes advancing the treatment catheter through a structure having an arcuate
`
`cross-sectional shape extending for a length of 15cm.”
`
`Any comments considered necessary by applicant must be submitted no later than the
`
`paymentof the issue fee and, to avoid processing delays, should preferably accompanythe issue
`
`fee. Such submissions should be clearly labeled “Comments on Statement of Reasonsfor
`
`Allowance.”
`
`Conclusion
`
`Prosecution on the merits is closed in accordance with the practice under Ex parte
`
`Quayle, 25 USPQ 74, 453 O.G. 213, (Comm’r Pat. 1935).
`
`A shortenedstatutory period for reply to this action is set to expire TWO MONTHS
`
`from the mailing date ofthis letter.
`
`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to CATHERINE S. WILLIAMSwhosetelephone numberis
`
`(571)272-4970. The examiner can normally be reached on Monday- Friday.
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
`
`supervisor, Lillis Eileen can be reached on 571/272-6928. The fax phone numberfor the
`
`organization where this application or proceeding is assigned is 571-273-8300.
`
`

`

`Application/Control Number: 14/195,435
`
`Art Unit: 3993
`
`Page 7
`
`Information regarding the status of an application may be obtained from the Patent
`
`Application Information Retrieval (PAIR) system. Status information for published applications
`
`maybe obtained from either Private PAIR or Public PAIR. Status information for unpublished
`
`applications is available through Private PAIR only. For more information about the PAIR
`
`system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR
`
`system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would
`
`like assistance from a USPTO Customer Service Representative or access to the automated
`
`information system, call 800-786-9199 (IN USA OR CANADA)or 571-272-1000.
`
`/Catherine S. Williams/
`Primary Examiner
`CRU 3993
`
`Conferees:
`/PLE/
`/GAS/
`
`