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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on July 24, 2026 has been entered.
Response to Amendment
Claims 1 and 5-23 are pending in the application. Claims 11-16 are withdrawn. Claims 1, 17, 18, 22, and 23 have been amended. Claims 1, 5-10, 17-23 are rejected.
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) 1, 5, 6, 7, 9, and 21-23 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Stone et al (US PG Pub 2006/0190042).
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Regarding claim 1, Stone teaches a tissue anchor delivery device (150) (See Figs. 18-24 and 29-33) comprising:
a needle (156) including a hollow shaft portion (156 – See Figs. 29-30), a tip portion (160), and an outlet opening (158 – see Figs. 30 and 32; paragraphs [0054] and [0060]);
a plurality of tissue anchors (102 an 102’) (See, for example, Figs. 17 and 22) disposed within the shaft portion of the needle (See Figs. 19, 22, 23, 29; paragraphs [0050]-[0055]), each of the plurality of tissue anchors (102/102’) including:
a main body portion (120) that is elongate in a longitudinal dimension (See Fig. 2) and forms a flat tissue-contact surface1 (126 as well as side walls of the anchor); and
a tab (128) that projects transversely from the main body portion, the tab having a flat tissue-contact surface that extends the flat tissue-contact surface of the main body portion (See annotated Figs. 2&3 above, note the tab (128) has the same thickness and extends upwardly from the main body) the tab (128) forming a suture aperture (130) having an axis oriented in a direction perpendicular to the longitudinal dimension such that the suture aperture extends from the flat tissue-contact surface to an opposite surface of the tab (See Figs 2 & 3; paragraphs [0050]-[0051] not the aperture extends through the entire thickness of the tab); and
a suture (106) running through the suture aperture (130) of the tab of each of the plurality
of tissue anchors in the perpendicular direction within the shaft portion of the needle (See Figs. 19, 22, 23, 25, and 29; paragraphs [0050]-[0054])
wherein the plurality of tissue anchors are configured2 so that upon implantation the flat tissue-contact surface of the main body and the flat tissue-contact surface of the tab of each tissue anchor contacts the tissue and the suture exits the tissue to pass through the suture aperture of each tissue anchor and loops over the tab to re-enter the tissue to provide an even load distribution on each tissue anchor (See Fig. 1; note the suture 106 extends through the tissue, through the opening in the tab of the anchor and back into the tissue).
Regarding claim 5, Stone teaches the tissue anchor delivery device as set forth in claim 1 above and further teaches a pusher device (162) disposed at least partially within the shaft portion (156) of the needle and configured to move the plurality of tissue anchors within the shaft portion, wherein the suture is disposed at least partially within a lumen of the pusher device. (See paragraphs [0054] and [0057]).
Regarding claim 6, Stone teaches the tissue anchor delivery device as set forth in claim 1 above and further teaches the outlet opening (158) is an opening in a sidewall of the shaft portion of the needle (note the opening includes the slot in the side wall – See Fig. 19; paragraphs [0053]-[0055] and [0060]).
Regarding claim 7, Stone teaches the tissue anchor delivery device as set forth in claim 1 above and further teaches the outlet opening is associated with the tip portion (160) of the needle (See Figs. 19, 22, 23, 29; paragraphs [0050]-[0055]).
Regarding claim 9, Stone teaches the tissue anchor delivery device as set forth in claim 1 above and further teaches a retractable puncturing feature3 configured to extend from the tip portion (160) of the needle. (note the tubular sleeve 170 can extend and cover the tip (160) of the needle. This is deemed sufficient to encompass a “retractable puncturing feature”) (See paragraph [0055])
Regarding claim 21, Stone teaches the tissue anchor delivery device as set forth in claim 1 above and further teaches wherein bunched lengths of suture (note additional lengths of suture 106 in Fig. 19) are collected in open spaces between tabs of adjacent ones of the plurality of tissue anchors, the open spaces being partially bounded by the suture-holding surfaces of the adjacent ones of the plurality of tissue anchors. (See Fig. 19, note the suture is open space between the anchors (102/102’) what are partially bounded by the surfaces of the anchors including directing grooves 132 – See also paragraph [0050]).
Regarding claim 22, Stone teaches the tissue anchor delivery device as set forth in claim 1 above and further teaches the suture (106) passes through the suture apertures (130) of each of the plurality of tissue anchors (102/102’) in a direction that is perpendicular to a longitudinal axis of the inner lumen of the needle (See Figs. 4, 19, 22, and 23 and paragraph [0067]).
Regarding claim 23, Stone teaches the tissue anchor delivery device as set forth in claim 1 above and further teaches needle further includes a protruding member (166) disposed on an interior wall of the hollow shaft portion at a position longitudinally overlapping with the outlet opening (See Figs. 19-23), the protruding member (166) being configured to4 interfere with distal movement of the tabs of the plurality of tissue anchors to prevent pre-deployment exit through the outlet opening and to cause rotation of the plurality of tissue anchors when exiting the outlet opening; and the protruding member is disposed on an interior wall of the needle that is circumferentially opposite the outlet opening. (See paragraphs [0054]-[0055] and [0057]).
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) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Stone et al (US PG Pub 2006/0190042) in view of previously cited Keidar et al (US PG Pub 2017/0304050).
Regarding claim 8, Stone teaches the tissue anchor delivery device as set forth in claim 1 above but does not explicitly teach a suction device configured to hold the tissue anchor delivery device to a heart valve annulus.
Keidar teaches an analogous tissue anchor delivery device featuring a needle (801) including a hollow shaft portion (703), a tip portion (802), and an outlet opening (803) (See Figs. 8A & 8B); a plurality of tissue anchors (503, 504, 505) disposed within the shaft portion of the needle (See Fig. 5; paragraphs [0059] and [0062]); and a suture (507) coupled to each of the plurality of tissue anchors and disposed at least partially within the shaft portion of the needle (See Fig. 5; paragraphs [0059]-[0062]) and a suction device configured5 to hold the tissue anchor delivery device to a heart valve annulus. (See paragraphs [0067] and [0077] which disclose a suction cup 1904 to assist in holding target tissue during deployment).
It would have been obvious to one of ordinary skill in the art before the effective filing date to incorporate a suction device as taught by Keidar into the tissue anchor delivery device as taught by Stone so as to allow the device to be securely and reliably positioned at the desired deployment location.
Claim(s) 10 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 Stone et al (US PG Pub 2006/0190042).
Regarding claim 10, Stone teaches the tissue anchor delivery device as set forth in claim 1 above and further teaches the tip portion is a separate component6 from the shaft portion; and
the tip portion is attached to an end of the shaft portion.
Alternatively, it would have been obvious to one of ordinary skill in the art before the effective filing date to have the tip be a separate component from the shaft since it has been held that making an article separable is within the scope of ordinary skill in the art. See MPEP §2144.04(V)(C) In re Dulberg, 289 F.2d 522, 523, 129 USPQ 348, 349 (CCPA 1961) “The court held that "if it were considered desirable for any reason to obtain access to the end of [the prior art’s] holder to which the cap is applied, it would be obvious to make the cap removable for that purpose.")
Claims 17-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Stone et al (US PG Pub 2006/0190042) in view of previously cited Vargas (US PG Pub 2015/0250470).
Regarding claim 17, Stone teaches a tissue anchor delivery device (150) (See Figs. 18-24 and 29-33) comprising: a shaft (sleeve 170) having a distal opening (See Figs. 20-22; paragraph [0055];
a hollow needle (156) disposed within the shaft (170), the needle including a tip (160), an inner lumen (See Figs. 29-30; paragraphs [0054] and [0060]), and a distal outlet (158);
first (102) and second (102’) tissue anchors (See Figs. 17 and 22) disposed in the inner lumen of the needle (See Figs. 19, 22, 23, 29 and paragraphs [0050]-[0055]), each of the first and second tissue anchors comprising:
a main body portion (120);
a tab portion (128) that projects transversely from the main body portion and forms an aperture (130) having an axis that is perpendicular to a length dimension of the main body portion (See Figs. 2&3; paragraphs [0050]-[0051]; and
a suture (106) portion that extends through the aperture perpendicular to the length
dimension (See Fig. 6); and
an advancement member (162) configured7 to push the first and second tissue
anchors through the inner lumen of the needle and out of the distal outlet (See Figs. 19, 22, and 23; paragraphs [0054]-[0056]).
wherein the first and second tissue anchors are configured8 so that upon implantation the tab portion of each tissue anchor contacts the tissue and the suture exits the tissue to pass through the aperture of each tissue anchor and loops over the tab portion to re-enter the tissue to provide
an even load distribution on each tissue anchor, the axis of the aperture being perpendicular to the tissue (See Fig. 1; note the suture 106 extends through the tissue, through the opening in the tab of the anchor and back into the tissue).
Stone does not explicitly teach each of the first and second anchors has a tongue portion and a groove portion wherein the tongue portion of the first tissue anchor and the groove portion of the second tissue anchor are engaged within the inner lumen of the needle.
Vargas teaches an analogous tissue anchor delivery device (See Figs. 2, 3, and 10) featuring a hollow needle (210/610/810) having a distal opening with at least two tissue anchors (300/220a/220b) disposed in the hollow needle where each anchor has a tongue (306) and groove (305) portion where the tongue portion (306) of the first tissue anchor (220a) and the groove portion (305) of the second tissue anchor (220b) are engaged within the inner lumen of the needle (See paragraph [0095]). Vargas teaches it is advantageous for the anchors to each have a male and female (tongue & groove) interlocking portion which hold the anchors together and prevent relative rotation between the anchors while constrained inside the hollow inner lumen of the delivery device.
It would have been obvious to one of ordinary skill in the art before the effective filing date to incorporate the tongue and groove interlocking end portions on the anchors as taught by Vargas into the delivery device as taught by Stone so as to ensure the anchors did not rotate relative to one another and ensured proper relative positioning while the anchors are inside the delivery device.
Regarding claim 18, modified Stone teaches the tissue anchor delivery device as required by claim 17 above and further teaches each of the first and second tissue anchors comprises a recess (132) on each side of the of the respective tissue anchor (See Stone Figs. 2 and 3 above); and at least a portion of the suture portion (106) of the first tissue anchor is disposed in the recess of the first tissue anchor when the first and second tissue anchors are disposed in the inner lumen of the needle. (See paragraph [0050]).
Regarding claim 19, modified Stone teaches the tissue anchor delivery device as required by claim 17 above and further teaches the needle (156) comprises a protruding member (166) disposed in the inner lumen within an area spanned by the distal outlet (See Figs. 19-23); the protruding member (166) is positioned to contact9 the tab portions of the of the first and second tissue anchors as the first and second tissue anchors are advanced through the inner lumen of the hollow needle; and the protruding member is configured10 to rotate each of the first and second tissue anchors when the first and second tissue anchors are pushed out of the distal outlet by the advancement member. (See paragraphs [0054]-[0055] and [0057]).
Regarding claim 20, modified Stone teaches the tissue anchor delivery device as required by claim 17 above and further teaches the needle is retractable (See paragraphs [0054]-[0060]; note the outer sleeve 170 covers the tip 160 of the needle, thus the needle is “retractable” relative to the sleeve).
Response to Arguments
Applicant’s amendments to the claims have overcome the previous 35 U.S.C. 112 rejections of claim(s) 6, 9, and 22.
Applicant's arguments filed July 24, 2026 have been fully considered but they are not persuasive.
Applicant argues the cited art, Stone, fails to teach the newly added limitations. This is unpersuasive.
It is noted that applicant elected to pursue the invention of a delivery device (See response filed September 24, 2025. 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). In the instant case the claims are directed to a tissue anchor delivery device. As set forth above, Stone teaches all the structural limitations as currently claimed and is capable of performing the recited function. It is noted that the claims are not drawn to a method of implanting an anchor. It is further noted that the anchor as taught by Stone would be capable of being positioned with the flat sidewalls adjacent tissue and the suture looped over the tab to provide an even load distribution.
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
The remainder of applicant’s arguments amount to an allegation of patentability based on the alleged deficiencies of the primary reference. For the reasons set forth above, this is unpersuasive.
Citation of Relevant Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Noblitt et al (US Pat. No 5,203,787) teaches a tissue anchor deliver device featuring an anchor with flat tissue contacting surfaces and a tab projecting from the body of the device with an opening for a suture. (See Figs. 2a & 2b).
Forsberg et al (US Pat. No. 7,597,705) teaches a tissue anchor deliver device featuring an anchor with flat tissue contacting surfaces and a tab projecting from the body of the device with an opening for a suture. (See Figs. 7-11).
Conclusion
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 Mondays, Tuesdays, Thursdays, and Fridays generally between 9:30am and 2:30pm .
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 call the examiner at the number listed above. Applicant may 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, 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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/R.S.H/Examiner, Art Unit 3774
/SARAH W ALEMAN/Primary 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). In the instant case, Stone teaches the anchor (102/102’) has a flat base (126) (See Fig. 2; paragraph [0050]). It is noted that the base 126 and both side walls are capable of contacting tissue as there is nothing which would prevent the base from contacting tissue if so deployed. Additionally, it is noted that since the anchor is implanted within the body, almost all of the exterior surfaces will be in contact with at least some type of tissue. It is further noted that applicant has used the transitional phrase “comprising” “which is synonymous with "including," "containing," or "characterized by," is inclusive or open-ended and does not exclude additional, unrecited elements or method steps. See, e.g., Mars Inc. v. H.J. Heinz Co., 377 F.3d 1369, 1376, 71 USPQ2d 1837, 1843 (Fed. Cir. 2004). See MPEP §2111.03(I). The grooves 132 are deemed to be additional elements.
2 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). In the instant case, the claims are directed to a tissue anchor delivery device, not a method of delivering an anchor. It is noted that the anchor as taught by Stone is capable of performing the recited functional limitation since there is no structure which would prevent the anchor being deployed such that the flat side surfaces contact the tissue. Additionally, there is no structure which would prevent the suture being looped in the manner as claimed. So long as the prior art device is capable of deploying an anchor in the recited manner, the claimed limitations are deemed to have been met by the prior art.
3 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. It is noted that “retractable puncturing feature” is a very broad limitation and encompasses a broad range of structures so long as it can puncture and retract.
4 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). In the instant case, Stone teaches a tab 166 projecting into the interior of the needle shaft 156 for the purpose of preventing accidental launching of the second anchor. It is noted that “configured to” is a recitation of intended use. As long as the prior art meets the structural requirements and is capable of performing the function, the prior art is deemed to meet the limitation. In the instant case, Stone teaches a protruding member (166) which has the same structure as claimed.
5 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). In the instant case, the device as taught by Keidar teaches a suction catheter (See paragraph [0077]) which is capable of holding the device to a heart valve annulus or any other desired tissue deployment location.
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). In the instant case, the tip 160 is attached to an end of the needle shaft 156. See 19, 22, 23, 29.
7 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). In the instant case, Stone teaches slider 162 pushes and advances the anchor(s) (See paragraph [0054])
8 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). In the instant case, the claims are directed to a tissue anchor delivery device, not a method of delivering an anchor. It is noted that the anchor as taught by Stone is capable of performing the recited functional limitation since there is no structure which would prevent the anchor being deployed such that the tab portion contacts the tissue. Additionally, there is no structure which would prevent the suture being looped in the manner as claimed. So long as the prior art device is capable of deploying an anchor in the recited manner, the claimed limitations are deemed to have been met by the prior art.
9 Note that Stone as modified to incorporate the tongue and groove interlocking elements as set forth above would also result in the anchors being adjacent one another within the lumen of the needle and could thus have the tab portioned be aligned with the bottom of the needle where the protrusion 166 is located.
10 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). In the instant case, Stone teaches a tab 166 projecting into the interior of the needle shaft 156 for the purpose of preventing accidental launching of the second anchor. It is noted that “configured to” is a recitation of intended use. As long as the prior art meets the structural requirements and is capable of performing the function, the prior art is deemed to meet the limitation. In the instant case, Stone teaches a protruding member (166) which has the same structure as claimed and would be capable of causing rotating the anchors as they are pushed passed the protruding member and out of the delivery device.
Prosecution Insights