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 .
Election/Restrictions
Newly submitted claim 66 is directed to an invention that is independent or distinct from the elected invention, an implantable felt (Group I). It is noted that applicant affirmatively elected Group I drawn to an implantable felt in the reply dated March 28, 2025. Claim 66 is directed to a method of repairing or augmenting soft tissue which is similar in scope to withdrawn claim 57 (Group III).
Applicant affirmatively elected the implantable felt material (and NOT a method of repairing or augmenting tissue). Additionally, applicant has received an action on the merits for the originally elected invention (See Non-Final Rejection dated July 1, 2025).
Accordingly, claim 66 is withdrawn from consideration as being directed to a non-elected invention, namely Group III as set forth in the Restriction Requirement dated March 6, 2025. See 37 CFR 1.142(b) and MPEP § 821.03.
Applicant’s request for rejoinder is denied as there are currently no allowable claims. As noted in the Non-Final Rejection dated March 6, 2025, the restriction requirement has been deemed proper and was made final.
Response to Amendment
Claims 37-39 and 41-66 are pending in the application. Claims 58-66 were newly added. Claims 51-57 and 66 are withdrawn. Claims 37-39 and 41-50 have been amended. Claims 37-39, 41-50, and 58-65 are rejected.
Claim Objections
Claims 37-39, 41-50, and 58-65 are objected to because of the following informalities:
Claim 37 recites “a second surface for contacting a surface of soft tissue, the second surface a continuous and flat area…” in lines 4-5. Examiner suggests amending the claim to read “the second surface is a continuous and flat area” (emphasis added) for clarity and to comply with proper grammatical form.
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.
Claim 41 is 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.
Claim 41 recites “The felt material according to claim 37, wherein the felt material further comprises at least one additional monofilament or multifilament strings having a higher tensile strength or having a larger diameter, wherein the ratio between the tensile strength of the additional string and of the multitude of fibers of the felt material is minimum 1.5.” As currently presented it appears the claim requires strings either having higher tensile strength or a larger diameter. As such, the limitations regarding the tensile strength ratios are deemed to only be required as applied to the higher tensile strength. It is unclear whether or not the ratio of tensile strengths is positively required if the limitation of “a larger diameter” is met since tensile strength and larger diameter are presented as alternative limitations.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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) 37-39 and 42 and 45-50 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Seedhom et al (US PG Pub 2014/0222038).
Regarding claim 37, Seedhom teaches a felt material (10) comprising a multitude of fibers for use in a method of repairing or augmenting soft tissues (See paragraphs [0059] and [0061]), wherein the felt material is in the form of a felted patch (non-woven filamentous material 11) comprising a first surface and oppositely arranged a second surface for contacting a surface of soft tissue (See paragraphs [0059]), the second surface is a continuous and flat area (See Figs. 1-2; paragraphs [0032]-[0039] and paragraph [0061] which states the repair patch is “substantially planar”) wherein some of the multitude of fibers of the felted patch are configured1 to be pushed or pulled through the second surface into the soft tissue by a needle2 to be displaced from the continuous and flat area thereby connecting the felt material to the soft tissue3. (See also paragraphs [0032]-[0039]).
Regarding claim 38, Seedhom teaches the felt material with the limitations as required by claim 37 above and further teaches the felt is capable of being used with a needle4 comprising barbs wherein the barbs are spaced at intervals along the needle. (See paragraph [0032])
Regarding claim 39, Seedhom teaches a felt material with the limitations as required by claim 38 above and further teaches the needle5 comprises a tip portion and the barbs alternatingly face forward and backward with respect to the tip portion.
Regarding claim 42, Seedhom teaches a felt material with the limitations as required by claim 37 above and further teaches the felted patch additionally comprises at least a second layer, wherein the at least one second layer is differently configured or comprises a different material than the felted patch. (See paragraph [0033] which states the device comprises two layers and paragraph [0038] which states the second layer may be a woven layer which is a different configuration than the non-woven first layer). (See also paragraph [0071])
Regarding claim 45, Seedhom teaches a felt material with the limitations as required by claim 37 above and further teaches the felted patch comprises—before attachment to the soft tissue—one or more sutures (cord 13/21/74) which are incorporated in the felt material (See paragraphs [0032]-[0037] and [0059]-[0064] which state the cords are added to the device during the manufacturing process which is clearly before attachment to soft tissue).
Regarding claim 46, Seedhom teaches a felt material with the limitations as required by claim 46 above and further teaches the one or more sutures (cords 13/21/74) —before attachment of the felted patch soft tissue—protrude from the felted patch (See Fig. 4; paragraph [0075]) so as to form an anchor member (loops), wherein before attachment of the felted patch to soft tissue one end of a braided textile, preferably a suture, is unraveled6 and reorganized to a felted textile and affixed to the felted patch to form a second layer. This is a product-by-process limitation and as such only the product will be examined. In the instant case, the product is a second layer affixed to the felted patch. Seedhom teaches a suture attached (note multiple separate cords are part of Seedhom’s invention – see paragraphs [0064]-[0069]). Further, Seedhom teaches the felt material may have a second layer which is “loosely woven” which is deemed to meet the claimed limitation. (See paragraph [0078])
Regarding claim 47, Seedhom teaches a felt material with the limitations as required by claim 37 above and further teaches the multitude of fibers of the felt material are aligned7. (See Fig. 5; paragraph [0078] which shows an embodiment where a layer of the felt material is woven and thus “aligned”.
Regarding claim 48, Seedhom teaches a felt material with the limitations as required by claim 37 above and further teaches during attachment8 of the felted patch to soft tissue the needle is guided at an angle different from 90° with respect to the second surface of the felted patch. As noted above, applicant has elected to pursue the invention of Group I which is directed to an implantable felt material. As such the limitations regarding how a connection is formed between the implant and soft tissue, including details regarding instruments used to create such a connection are not positively required by the claim. The prior art needs only to be capable of having a needle with the recited features used upon it. In the instant case, the fibers of the felt as taught by Seedhom are capable of being pushed or pulled through the second surface of the felt as evidenced by paragraphs [0032]-[0039] which expressly state the fibers of the felt are entangled with the chord via hydroentanglement which is disclosed to be an analogous process to needle punching. (See paragraph [0032]) Additionally, paragraph [0039] states the material “will easily be penetrated by the various pins” (of the manufacturing plate). Thus, the fibers of the felt as taught by Seedhom are capable of having a needle with the recited features be used upon it.
Regarding claim 49, Seedhom teaches a felt material with the limitations as required by claim 37 above and further teaches during attachment9 of the felted patch to soft tissue the needle is subsequently or alternatingly guided10 at angles larger and smaller than 90° with respect to the second surface of the felted patch . As noted above, applicant has elected to pursue the invention of Group I which is directed to an implantable felt material. As such the limitations regarding how a connection is formed between the implant and soft tissue, including details regarding instruments used to create such a connection are not positively required by the claim. The prior art needs only to be capable of having a needle with the recited features used upon it. In the instant case, the fibers of the felt as taught by Seedhom are capable of being pushed or pulled through the second surface of the felt as evidenced by paragraphs [0032]-[0039] which expressly state the fibers of the felt are entangled with the chord via hydroentanglement which is disclosed to be an analogous process to needle punching. (See paragraph [0032]) Additionally, paragraph [0039] states the material “will easily be penetrated by the various pins” (of the manufacturing plate). Thus, the fibers of the felt as taught by Seedhom are capable of having a needle with the recited features be used upon it.
Regarding claim 50, Seedhom teaches a felt material with the limitations as required by claim 37 above and further teaches wherein more than one needle11 is used to displace some of the multitude of fibers of the felted patch to penetrate through the second surface into the soft tissue at the same time and from two or more directions. As noted above, applicant has elected to pursue the invention of Group I which is directed to an implantable felt material. As such the limitations regarding how a connection is formed between the implant and soft tissue, including details regarding instruments used to create such a connection are not positively required by the claim. The prior art needs only to be capable of having multiple needles with the recited features used upon it. In the instant case, the fibers of the felt as taught by Seedhom are capable of being pushed or pulled through the second surface of the felt as evidenced by paragraphs [0032]-[0039] which expressly state the fibers of the felt are entangled with the chord via hydroentanglement which is disclosed to be an analogous process to needle punching. (See paragraph [0032]) Additionally, paragraph [0039] states the material “will easily be penetrated by the various pins” (of the manufacturing plate). Thus, the fibers of the felt as taught by Seedhom are capable of having more than one needle with the recited features be used upon it.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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) 41 is/are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Seedhom et al (US PG Pub 2014/0222038).
Regarding claim 41, Seedhom teaches a felt material with the limitations as required by claim 37 above and further teaches the felt material further comprises at least one additional monofilament or multifilament strings (chords/ yarns 13/21/74) (note the chords are formed of a large number (90-100) of monofilaments) (See paragraphs [0063]-[0064]) and having a larger diameter (note the multifilament chords 13/21 have a larger diameter than any single fiber of the felt (11/22). See Figs. 1-2).
As noted above, it is unclear whether or not the limitations with respect to the tensile strength are positively required by the claim if the prior art teaches the strings have a larger diameter. (Since tensile strength and diameter are presented as alternate limitations). It is the examiner’s position that since Seedhom teaches an additional string with a larger diameter, the presently presented claim limitations are anticipated by Seedhom. However, in the interest of compact prosecution, the optional limitations will also be addressed.
Seedhom further teaches the strings have a higher tensile strength than the multitude of fibers (See paragraphs [0027], [0059]-[0060]). Seedhom is silent as to the specific ration between the tensile strength of the additional string and the multitude of fibers.
As disclosed, the ratio of tensile strength of the additional string and the multitude of fibers being at least 1.5 is a result effective variable which assists with stiffness and patch stability. Further it appears one of ordinary skill in the art would have a reasonable expectation of success in modifying Seedhom to have the ratio of tensile strength of the additional string and the multitude of fibers being at least 1.5, as it only involves adjusting the dimension of a component already disclosed to be adjustable. Additionally, Seedhom explicitly states the additional string is a tensile load bearing component of the patch. (See paragraphs [0013], [0014], [0027], [0059], and [0060]) Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the ratio of tensile strength between the additional string and the multitude of fibers as a matter of routine optimization since it has been held that “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 223, 235 (CCPA 1955). See also MPEP §2144.05
Claim(s) 43, 44, and 58 is/are rejected under 35 U.S.C. 103 as being unpatentable over Seedhom et al (US PG Pub 2014/0222038) in view of Persson (US PG Pub 2011/0015735).
Regarding claim 43, Seedhom teaches the felt material as set forth in claim 37 above but does not explicitly teach the felt material before attachment to the soft tissue is pre-stretched in at least one direction along the first and second surfaces of the felted patch.
Persson teaches an analogous fibrous implant for connection to soft tissue where the fabric is pre-stretched in at least one direction before implantation and attachment to tissue. Persson teaches pre-stretching a fabric implant can be helpful in providing active joint stabilization which is helpful in ligament reconstruction. (See paragraph [0009]).
It would have been obvious to one of ordinary skill in the art at the time of filing to modify the felt as taught by Seedhom to incorporate the teachings of Persson such that the felt material is pre-stretched in at least one direction along the first and second surfaces of the felt patch prior to implantation to aid with joint stabilization and ligament reconstruction. Furthermore, pre-stretching the implant as taught by Seedhom is merely applying a known technique to a known device to yield predictable results. (See MPEP §2143(I)(C)).
Regarding claim 44, modified Seedhom teaches the felt material as required by claim 43 above and further teaches the felted patch comprises one or more augmented zones12 which each comprise either fibers or strings (cords) of monofilament or multifilament nature (cords 13/21/74) (See paragraphs [0063]-[0064]) having a larger diameter (See Figs. 1-2; paragraphs [0063]-[0064]), or a second layer (See paragraphs [0033]-[0037]) or at least one suture (13) arranged with a diagonal stitching pattern (See Figs. 2, 3, 4, 4a).
Regarding claim 58, modified Seedhom teaches the felt material as required by claim 43 above and further teaches the felted patch comprises one or more augmented zones which each comprise a second layer (See paragraphs [0033]-[0037]) arranged with a diagonal stitching pattern (See Figs. 2, 3, 4, 4a – note the diagonal lines)
Claims 59-62 is/are rejected under 35 U.S.C. 103 as being unpatentable over Seedhom et al (US PG Pub 2014/0222038) in view of Toyoda et al (US PG Pub 2016/0184488).
Regarding claims 59 and 60, modified Seedhom teaches the felt material as required by claim 37 above but does not explicitly teach the fineness of the multitude of fibers is less than 17 dtex and greater than 0.9 dtex.
Toyoda teaches an analogous implantable medical device (See abstract) which uses an ultrafine fiber having a fineness of less than 17 dtex (See paragraph [0019] which states the fineness of the fibers is between 7 and 120 dtex) Toyoda teaches having ultrafine fibers ensures biological safety as well as long-term stability in the body (See Paragraphs [0035])
It would have been obvious to one of ordinary skill in the art before the effective filing date to have the fibers in the patch as taught by Seedhom have a fineness of less than 17 dtex and greater than 0.9 detx as taught by Toyoda since ultrafine fibers are known to ensure biological safety and long-term stability in the body. Additionally, such a modification would have involved a mere change in the size of a component. A change in size is generally recognized as being within the level of ordinary skill in the art. In re Rose, F.2d 459, 105 USPQ 237 (CCPA 1955). Additionally, In Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), the Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. See also MPEP §2144.04(IV)(A). Furthermore, applicant has not disclosed that having a fineness greater than 0.9dtex and less than 17 dtex solves any stated problem or is for any particular purpose and it appears that the device would perform equally well with either designs. Furthermore, absent a teaching as to criticality of the fineness of the multitude of fibers, this particular arrangement is deemed to have been known by those skilled in the art since the instant specification and evidence of record fail to attribute any significance (novel or unexpected results) to a particular arrangement. In re Kuhle, 526 F.2d 553,555,188 USPQ 7, 9 (CCPA 1975).
Regarding claim 61, modified Seedhom teaches the felt material as required by claim 59 above and further teaches the multitude of fibers are of a synthetic material (See Seedhom paragraph [0028]).
Regarding claim 62, modified Seedhom teaches the felt material as required by claim 59 above and further teaches the multitude of fibers are of a material having a natural origin basis. (See Seedhom paragraph [0028]).
Claims 63-65 is/are rejected under 35 U.S.C. 103 as being unpatentable over Seedhom et al (US PG Pub 2014/0222038) in view of Toyoda et al (US PG Pub 2016/0184488) as applied to claim 59 above and further in view of Alessandrino (US PG Pub 2017/0312387).
Regarding claims 63 and 64, modified Seedhom teaches the felt material as required by claim 59 above but does not explicitly teach the multitude of fibers have a thickness between 5-200 µm.
Alessandrino teaches an analogous implantable fibrous device where the multitude of fibers have an average thickness of 50 µm. (See paragraph [0104]).
As disclosed, the thickness of the multitude of fibers is a result effective variable which assists with stiffness of the felted patch. Further it appears one of ordinary skill in the art would have a reasonable expectation of success in further modifying Seedhom to have thickness of the multitude of fibers be between 5-200 µm, as it only involves adjusting the dimension of a component already disclosed to be adjustable. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the thickness of the multitude of fibers as a matter of routine optimization since it has been held that “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 223, 235 (CCPA 1955). See also MPEP §2144.05
Regarding claim 65, modified Seedhom teaches the felt material as required by claim 59 above but does not explicitly teach the multitude of fibers have a length of 2-500mm or 1-90mm.
Alessandrino teaches an analogous implantable fibrous device where the multitude of fibers have a length of 20-27mm. (See paragraph [0093]).
As disclosed, the length of the multitude of fibers is a result effective variable which assists with stiffness of the felted patch. Further it appears one of ordinary skill in the art would have a reasonable expectation of success in further modifying Seedhom to have length of the multitude of fibers be between 2-500mm or 1-90mm, as it only involves adjusting the dimension of a component already disclosed to be adjustable. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the length of the multitude of fibers as a matter of routine optimization since it has been held that “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 223, 235 (CCPA 1955). See also MPEP §2144.05
Response to Arguments
Applicant’s amendments have overcome the previous 35 U.S.C. §112 rejections.
Applicant's arguments filed November 3, 2025 have been fully considered but they are not persuasive.
Applicant argues Seedhom does not teach the invention as claimed. This is unpersuasive. Applicant states that Seedhom teaches a preformed loop which provides an attachment means that is “pre-formed” and “separate from the rest of the patch. Firstly, this characterization of the reference is not entirely accurate. Seedhom teaches the preformed loops are laminated between two layers of material to form the patch, thus the loop (elongate cord) is an integral part of the patch.
Next applicant states “This arrangement is not the same as a unitary felt material made from a multitude of fivers that can be displaced from the unitary surface to attach to the soft tissue.”
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., unitary felt material and unitary surface) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Secondly, there are no structures in the patch of Seedhom which would prevent the fibers from being pushed/pulled by a needle from one surface to another. To the contrary, Seedhom expressly states the fibers of the felt are entangled with the chord via hydroentanglement which is disclosed to be an analogous process to needle punching. (See paragraph [0032]) Thus, the fibers of the felt as taught by Seedhom are capable of performing the recited function. Additionally, paragraph [0039] states the material “will easily be penetrated by the various pins” (of the manufacturing plate).
As noted above, applicant elected the invention of Group I which is drawn to an implantable felt material. As such the limitations regarding tools or steps used to attach the felt to soft tissue are recitations of intended us and are not positively required by the claim. So long as the felt material is capable of being used with the recited tools or in the recited steps, the claimed limitations are deemed to be met by the prior art. The fibers of the felted material as taught by Seedhom are clearly capable of being pushed or pulled through the second surface by any applicable means including a barbed needle. (See Seedhom paragraph [0032]).
If applicant wishes to have a patent with claims directed to a method of attaching a felt to soft tissue using a barbed needle, such claims will need to be pursued in a divisional application.
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 nonprovisional extension fee (37 CFR 1.17(a)) 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 mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RACHEL S. HIGHLAND whose telephone number is (571)270-3254. The examiner can normally be reached on Monday through Thursday between 9:30am and 2:30pm .
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Melanie Tyson can be reached at 571-272-9062. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/R.S.H/Examiner, Art Unit 3774
/MELANIE R TYSON/Supervisory Patent Examiner, Art Unit 3774
1 It is noted that the instant claims are drawn to an apparatus, and “"[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original).” A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). See MPEP §2114(II). It is also noted that the functional limitation "configured to" is not given full patentable weight. As long as the prior art meets the structural requirements and is capable of performing the functions, the prior art meets the limitations. In the instant case, the device of Seedhom meets all the structural requirements and is capable of performing the intended function, namely if a needle were pushed into the patch, fibers would be resultingly displaced and would be capable of forming a connection between the felt and the soft tissue.
2 It is noted applicant elected the invention of Group I which is drawn to an implantable felt material. As such the limitations regarding tools or steps used to implant the felt are not positively required by the claim. So long as the felt material is capable of being used with the recited tools or in the recited steps, the claimed limitations are deemed to be met by the prior art.
3 It is noted that the instant claims are drawn to an apparatus, and “"[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original).” A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). See MPEP §2114(II). Applicant elected the invention of Group I which is drawn to an implantable felt material. As such the limitations regarding how the connection is formed with soft tissue are not positively required by the claim. The felt material of the prior art needs to only be capable of having the fibers pushed or pulled from one surface to another in order to meet the claimed invention. In the instant case, the fibers of the felt as taught by Seedhom are capable of being pushed or pulled through the second surface of the felt as evidenced by paragraphs [0032]-[0039] which expressly state the fibers of the felt are entangled with the chord via hydroentanglement which is disclosed to be an analogous process to needle punching. (See paragraph [0032]) Thus, the fibers of the felt as taught by Seedhom are capable of performing the recited function. Additionally, paragraph [0039] states the material “will easily be penetrated by the various pins” (of the manufacturing plate).
4 As noted in footnote 2 above, applicant has elected to pursue the invention of an implantable felt. All limitations directed to the means by which the felt is attached to soft tissue are deemed to be recitations of intended use and are not part of the invention. Is it further noted that needle attachment is widely known in the medical arts as evidenced by Williams et al (US PG Pub 2019/0269822) which would likely be applicable to claims directed to a kit. As for claim 38, the prior art need only teach a felt material which is capable of having the fibers pushed or pulled through the second surface and into soft tissue. The fibers of the felted material as taught by Seedhom are clearly capable of being pushed or pulled through the second surface by any applicable means including a barbed needle. (See Seedhom paragraph [0032])
5 As noted above in footnotes 2 and 3 the needle is not part of the elected invention and as such any limitations directed thereto are not positively required by the claim. In the instant case, the fibers of the felt as taught by Seedhom are capable of being pushed or pulled through the second surface of the felt as evidenced by paragraphs [0032]-[0039] which expressly state the fibers of the felt are entangled with the chord via hydroentanglement which is disclosed to be an analogous process to needle punching. (See paragraph [0032]). Further barbed needles are known attachment means in the art. See Williams et al (US PG Pub 2019/0269822)
6 It is noted that this is a product-by-process limitation, and as such only the product will be examined. As noted by the court in Thorpe. “[e]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe. 777 F.2d 695, 698 (Fed. Cir. 1985) (citations omitted). The court further stated in Brown. “[w]e are therefore of the opinion that when the prior art discloses a product which reasonably appears to be either identical with or only slightly different than a product claimed in a product by process claim, a rejection based alternatively on either section 102 or section 103 of the statute is eminently fair and acceptable. As a practical matter the Patent Office is not equipped to manufacture products by the myriad of processes put before it and then obtain prior art products and make physical comparisons therewith.” In re Brown, 173 USPQ 685, 688 (CCPA 1972)
7 MPEP §2111 requires claim limitations be given their “broadest reasonable interpretation in light of the specification”. Additionally, claim terms are given their “plain meaning” unless applicant has provided a special definition. However, it is improper to import claim limitations from the specification into the claims. In the instant case, applicant’s specification states the fibers may be “randomly aligned” (paragraph [0061]); “aligned in parallel” (paragraph [0083]) or just “aligned”(paragraph [0061]).
8 See also footnotes 7 and 8 above
9 As noted above, applicant elected the invention of Group I which is drawn to the implantable felt material. As such the limitations regarding how the connection is formed with soft tissue or any instruments used to perform those steps are not positively required by the claim. The felt material of the prior art needs to only be capable of having the fibers be pushed or pulled through the second surface by a needle. See footnote 2 above.
10 It is noted that this is a product-by-process limitation, and as such only the product will be examined. As noted by the court in Thorpe. “[e]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe. 777 F.2d 695, 698 (Fed. Cir. 1985) (citations omitted). The court further stated in Brown. “[w]e are therefore of the opinion that when the prior art discloses a product which reasonably appears to be either identical with or only slightly different than a product claimed in a product by process claim, a rejection based alternatively on either section 102 or section 103 of the statute is eminently fair and acceptable. As a practical matter the Patent Office is not equipped to manufacture products by the myriad of processes put before it and then obtain prior art products and make physical comparisons therewith.” In re Brown, 173 USPQ 685, 688 (CCPA 1972)
11 See footnotes 7 and 8 above.
12 As set forth above under the 35 U.S.C. 112(b) rejections, it is unclear which of these recited alternatives are intended to be positively claimed. Examiner as addressed the limitations as can best be understood. Although it appears many of these recited features are not currently required by the claim, the examiner has nevertheless addressed them in the interests of compact prosecution.