DETAILED ACTION
This Office Action is responsive to the Amendment filed 2 May 2024. Claims 1,
3-8 and 22-34 are now pending. The Examiner acknowledges the amendments to
claims 1, 3, 5, 6, 8, 28, 30, 33 and 34, as well as the cancellation of claims 2 and 35. It
is noted that claim 9 did not exist in the original claims as filed, therefore it will be
indicated on the requisite forms as Canceled for purposes of examination.
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Specification
The amendment filed 09 November 2020 is objected to under 35 U.S.C. 132(a) because it introduces new matter into the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The added material which is not supported by the original disclosure is as follows: the incorporation by reference of Australian Patent Application No(s) 2018901790 and 2019900191. See MPEP 608.01(p)(I)(B) and 1893.03(b), wherein an incorporation by reference statement added after an application’s filing date is not effective because no new matter can be added to an application after its filing date and wherein the filing date of a national state application is the filing date of the international application (in this case 05/22/2019), not the date in which the application enters the national stage (in this case 11/09/2020).
Applicant is required to cancel the new matter in the reply to this Office Action. As such, it is suggested that Applicant file an amendment to the Specification of 11/09/2020, with deletion of “, the disclosure of each is incorporated herein in their entirety by reference” per the conversation with Gerard Wissing, and as per the attached Interview Summary email of 16 May 2024.
Claim Objections
Claims 1, 22 and 24 are objected to because of the following informalities: at line 8 of claim 1, “a penis” should apparently read –the penis--; at line 3 of claim 22, “a penis” should apparently read –the penis--; at line 3 of claim 24, “a penis” should apparently read –the penis--; and at line 5 of claim 24, “an electrical supply” should apparently read –the electrical supply--. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1, 3-8 and 22-34 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
At line 19 of claim 1, it is unclear if “the distal end” is referencing the distal end of “an elongate vessel” recited at line 2, or “a distal end of the tube” recited at line 19. If it is the latter, a suggested amendment is –the distal end of the tube--.
At line 13 of claim 34, it is unclear if “the distal end” is referencing the distal end of “an elongate vessel” recited at lines 1-2, or “a distal end of the tube” recited at line 13. If it is the latter, a suggested amendment is –the distal end of the tube--.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 32 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 32 does not further limit claim 1, from which it depends, as it appears that all limitations from claim 32 were added into independent claim 1. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Allowable Subject Matter
Claims 1, 3-8 and 22-34 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, and 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, set forth in this Office action.
Response to Arguments
Applicant’s arguments filed 2 May 2024 with respect to the objection do not address the objection to the Specification set forth in the previous Office action, therefore it has been maintained. A phone call (and corresponding email) was sent to Gerard Wissing on 16 May 2024 to clarify the objection and provide appropriate instructions to delete the subject matter in a subsequent filing (as per the attached Interview Summary). Applicant's representative indicated time would be required to contact international applicants to seek approval, however in the interest of time, this Office action is being mailed out to further prosecution.
Applicant’s arguments filed 2 May 2024 with respect to the rejection of claims 3, 4, 8, 22 and 30 under 35 U.S.C. 112(b) have been fully considered and are persuasive, however new grounds of rejection are presented above in light of the amendments, and as outlined in the attached email.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTINE HOPKINS MATTHEWS whose telephone number is (571)272-9058. The examiner can normally be reached Monday - Friday, 7:30 am - 4:00 pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Charles A Marmor, II can be reached on (571) 272-4730. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHRISTINE H MATTHEWS/Primary Examiner, Art Unit 3791
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