DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Response to Amendment
The Amendment filed 05/09/25 has been entered. Claim 55 has been amended, and claims 42-54 remain withdrawn. Claims 55-62 are addressed in the following office action.
Claim Objections
Claim 55 is objected to because of the following informalities: In line 26, “which between” should be “which is between”. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
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 55-62 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Concerning claim 55, the applicant’s original disclosure fails to divulge “an expansion limiting member where an entire length of the expansion limiting member extending between the longitudinal member and the longitudinally extending cross-member extends perpendicular to a longitudinal axis of the implantable device” and “the expansion limiting member the entire length of which between the longitudinal member and the longitudinally extending cross-member extends perpendicular to the longitudinal axis of the implantable device”. Hence, the limitations are considered new matter. Claims 56-62 are rejected for the same reasons as claim 55 by virtue of dependency on claim 55.
Claim 55-62 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.
Claim 55 recites the limitation "an expansion limiting member where an entire length of the expansion limiting member extending between the longitudinal member and the longitudinally extending cross-member extends perpendicular to a longitudinal axis of the implantable device" in lines 9-12. It is unclear if the expansion limiting member or the longitudinally extending cross-member extends perpendicular to a longitudinal axis of the implantable device. For examination purposes, the limitation will be read as “an expansion limiting member, wherein an entire length of the expansion limiting member, extending between the longitudinal member and the longitudinally extending cross-member, extends perpendicular to a longitudinal axis of the implantable device”. Claims 56-62 are rejected for the same reasons as claim 55 by virtue of dependency on claim 55.
NO PRIOR ART REJECTION
Response to Arguments
Applicant’s arguments, see page 1, filed 05/09/25, with respect to the rejections of claims under 35 USC § 103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new grounds of rejection is made in view of amended claim interpretation.
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 Examiner Chima Igboko whose telephone number is (571)272-8422. The examiner can normally be reached on Monday-Friday 9:00am-6:00pm.
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/C.U.I/ Examiner, Art Unit 3771
/ASHLEY L FISHBACK/Primary Examiner, Art Unit 3771 September 15, 2025