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 .
This Office action is responsive to an amendment filed July 29, 2026. Claims 1-5, 7-9, 11-16, 18-21 & 26 are pending. Claims 6, 10, 17-19, 22-25 & 27-31 have been canceled.
Claim Rejections - 35 USC § 102
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 19-21 & 26 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Dai et al. (WO 2011/0150726) (“Dai” hereinafter).
In regards to claim 19, Dai discloses an in-line cage device 1 comprising:
an elongated housing 11 comprising inner and outer walls;
a proximal opening 1110 and a distal opening 1120;
wherein the elongated housing 11 comprises a first housing portion 111 comprising a proximal end and a distal end,
a second housing portion 112 comprising proximal end and a distal end, and
a third housing portion 12 comprising a proximal end and a distal end,
wherein the first housing portion 111 can be attached and detached (via threads as shown in fig. 2) from the second housing portion 112 and the second housing portion 112 can be attached and detached from the third housing portion 12; and
the in-line cage device 1 further comprises:
the first screen 121 at the distal end of the first housing portion 111; and the second screen 122 at the proximal end of the third housing portion 12 such that the first screen 121 and second screen 122 form a chamber when the first, second, and third housing portion (111, 112, 12) are assembled into the in-line cage device 1 (see at least fig. 2);
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wherein the first and second screens (121, 122) are configured such that any fluid entering the proximal opening 1110 and exiting the distal opening 1120 must pass through the first screen 121 and the second screen 122; and
a graft 5 within the chamber;
wherein the proximal opening 1110 is configured to allow a fluid to flow through the first screen 121 into the chamber, through the second screen 122, and out of the distal opening 1120 (see at least fig. 2).
In regards to claim 20, Dai discloses the in-line cage device 1 of claim 19, wherein the chamber is formed of the inner walls of the elongated housing 11, the first screen 121, and the second screen 122 (see at least fig. 2).
In regards to claim 21, Dai discloses the in-line cage device 1 of claim 19, wherein the graft 5 comprises (allogeneic) bone, or an artificial scaffold (see machine translation, which states that “the porous material 5 may be allogeneic bone, collagen, degradable artificial bone or surface-modified cell scaffold material” and fig. 2).
In regards to claim 26, Dai discloses a method of collecting stem cells comprising:
a) connecting the proximal opening 1110 of the in-line cage device 1 of claim 19 to a second device 6 for liberating cells from a tissue in a fluid (i.e., anti-coagulated bone marrow blood) (see at least figs. 1 & 3);
b) connecting the distal opening 1120 of the in-line cage device 1 to a suction or aspiration apparatus 4 (see at least figs. 1 & 3); and
c) collecting stem cells on the graft 5 (see machine translation, which reads “One of the two-way tee plate 2 is opened as a blood injection port 21, the blood injection port 21 is connected to a puncture device 6 to connect the blood bag, and the other switch is also opened as the exhaust port 22, and the anti-coagulated bone marrow blood is opened. Slowly pushing into the extension tube 3 from the injection port 21, the blood enters the filter 1 through the extension tube 3 in the direction of the arrow in FIG. 3, and the blood inlet port 21 and the row of the two-way tee plate 2 are closed after the filter 1 is filled with blood. The gas port 22 allows the blood to pass through the filter-like lid 121 located at the front end of the screening enrichment chamber of the filter cartridge 12, and is subjected to screening and enrichment of the stem cells through the porous material 5 in the screening enrichment chamber of the filter 1 and simultaneously compounding After the screening and enrichment of the bone marrow stem cells by the biological material, the switch of the two-way tee plate 2 is opened as a recovery port, and the blood after the enrichment of the stem cells is recovered through the recovery port, and finally opened. The filter 1 takes out the porous material 5 enriched for stem cells for use.”).
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1-5 & 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Masini et al. (US 2001/0043918) (“Masini” hereinafter) in view of Diresta et al. (US 2005/0101008) (“Diresta” hereinafter).
In regards to claim 1, Masini discloses a cell collection device 10 comprising:
a container with a removable lid (28, 38) (see at least fig. 1 and par 0026);
an inlet port 12 and an outlet port 16 (see at least fig. 1 and par 0025);
a graft chamber 22 (see at least fig. 1 and par 0025),
wherein the graft chamber 22 is configured to divide an interior of the container into a first inner compartment (i.e., facing a first side of the scaffold 20) and a second inner compartment (i.e., facing a second side of the scaffold 20) (see at least fig. 1); and
a graft material 20 (see at least fig. 1 and par 0025);
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wherein the inlet port 12 is configured to allow a fluid to flow into the first inner compartment and the outlet port 16 is configured to allow a fluid to flow out of the second inner compartment (see at least fig. 1 and par 0025).
Masini discloses a cell collection device 10, as described above, that fails to explicitly teach a cell collection device 12 with the graft chamber comprising at least two panels, wherein a first panel comprises a first opening and a second panel comprises a second opening; a connector that holds the at least two panels together; and the graft material positioned between the first and second panels 13 and at least partially covering the first and second openings.
However, Diresta teaches that it is known to provide a cell collection device with graft chamber (i.e., cell growing chamber) comprising at least two panels (13, 21, 24), wherein a first panel 13 comprises a first opening (see fig. 2) and a second panel (13, 21, 24) (second panel is mirror image of first panel, see par 0015) comprises a second
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opening (see fig. 2); a connector (i.e., hinge) that holds the at least two panels (13, 21, 24) together (see at least fig. 2 and par 0015 & 0033); and the graft material (i.e., cell membrane) positioned between the first and second panels (13, 21, 24) and at least partially covering the first and second openings (shown in fig. 2) (see at least par 0030, 0032-0033, 0039-0048 & 0054-0055).
Therefore, it would have been obvious to one of ordinary skill in the art at the time Applicant’s invention was filed to provide the cell collection device of Masini with the graft chamber comprising at least two panels, wherein a first panel comprises a first opening and a second panel comprises a second opening; a connector that holds the at least two panels together; and the graft material positioned between the first and second panels 13 and at least partially covering the first and second openings as taught by Diresta since such a modification would amount to a simple substitution of one known element (i.e., as taught by Masini) for another (i.e., as taught by Diresta) to obtain predictable results such as culturing a variety of single cell organisms in a cassette under typical pressurized media culture conditions including elevated and pulsatile interstitial pressure without significant changes in the cassette’s internal volume (see at least par 0144-0148 of Diresta)--See KSR, 550 U.S. at___, 82 USPQ2d at 1396 (See MPEP § 214 3 for a discussion of the rationale(s) listed above. See also MPEP § 2144 - §2144.09 for additional guidance regarding support for obviousness determinations).
In regards to claim 2, Masini discloses the cell collection device 10 of claim 1, wherein the graft chamber 22 is configured to allow a fluid to flow from the first inner compartment to the second inner compartment through the first and second openings (see at least fig. 1 and par 0025).
In regards to claim 3, Masini discloses the cell collection device 10 of claim 2, that fails to explicitly teach a cell collection device wherein the first and second openings are at least partially aligned to allow fluid to flow from the first inner compartment through the first and second openings and into the second inner compartment. However, Diresta teaches that it is known to provide a cell collection device 12 wherein the first and second openings are at least partially aligned to allow fluid to flow from the first inner compartment through the first and second openings and into the second inner compartment (first and second panels (13, 21, 24) are mirror images of each other, see par 0015 & 0033) . Therefore, it would have been obvious to one of ordinary skill in the art at the time Applicant’s invention was filed to provide the cell collection device of Masini wherein the first and second openings are at least partially aligned to allow fluid to flow from the first inner compartment through the first and second openings and into the second inner compartment as taught by Diresta since such a modification would amount to a simple substitution of one known element (i.e., as taught by Masini) for another (i.e., as taught by Diresta) to obtain predictable results such as culturing a variety of single cell organisms in a cassette under typical pressurized media culture conditions including elevated and pulsatile interstitial pressure without significant changes in the cassette’s internal volume (see at least par 0144-0148 of Diresta)--See KSR, 550 U.S. at___, 82 USPQ2d at 1396 (See MPEP § 214 3 for a discussion of the rationale(s) listed above. See also MPEP § 2144 - §2144.09 for additional guidance regarding support for obviousness determinations).
In regards to claim 4, Masini discloses the cell collection device 10 of claim 1, wherein the graft material 20 comprises a bone, cartilage, tendon, ligament, or an artificial scaffold (such as porous glass, sol, gel, aerogel, porous ceramic, nylon or other biocompatible polymers) (see at least par 0027-0028).
In regards to claim 5, Masini discloses the cell collection device 10 of claim 1, that fails to explicitly teach a cell collection device wherein the first opening, the second opening, or both the first and second openings comprise a screen or filter. However, Diresta teaches that it is known to provide cell collection device wherein the first opening, the second opening, or both the first and second openings comprise a screen (i.e., rigid support of frame (13, 21, 24) contains mesh 22) (see at least par 0033 & 0039). Therefore, it would have been obvious to one of ordinary skill in the art at the time Applicant’s invention was filed to provide the cell collection device of Masini wherein the first opening, the second opening, or both the first and second openings comprise a screen as taught by Diresta since such a modification would amount to a simple substitution of one known element (i.e., as taught by Masini) for another (i.e., as taught by Diresta) to obtain predictable results such as culturing a variety of single cell organisms in a cassette under typical pressurized media culture conditions including elevated and pulsatile interstitial pressure without significant changes in the cassette’s internal volume (see at least par 0144-0148 of Diresta)--See KSR, 550 U.S. at___, 82 USPQ2d at 1396 (See MPEP § 214 3 for a discussion of the rationale(s) listed above. See also MPEP § 2144 - §2144.09 for additional guidance regarding support for obviousness determinations).
In regards to claim 11, Masini discloses the cell collection device 10 of claim 1, that fails to explicitly teach a cell collection device wherein the graft chamber comprises two panels and a hinged connector, wherein the hinged connector is configured so that the two panels can open while remaining connected. However, Diresta teaches that it is known to provide a cell collection device wherein the graft chamber comprises two panels (13, 21, 24) and a hinged connector, wherein the hinged connector is configured so that the two panels (13, 21, 24) can open while remaining connected (see at least fig. 2 and par 0015 & 0033). Therefore, it would have been obvious to one of ordinary skill in the art at the time Applicant’s invention was filed to provide the cell collection device of Masini wherein the graft chamber comprises two panels and a hinged connector, wherein the hinged connector is configured so that the two panels can open while remaining connected as taught by Diresta since such a modification would amount to a simple substitution of one known element (i.e., as taught by Masini) for another (i.e., as taught by Diresta) to obtain predictable results such as culturing a variety of single cell organisms in a cassette under typical pressurized media culture conditions including elevated and pulsatile interstitial pressure without significant changes in the cassette’s internal volume (see at least par 0144-0148 of Diresta)--See KSR, 550 U.S. at___, 82 USPQ2d at 1396 (See MPEP § 214 3 for a discussion of the rationale(s) listed above. See also MPEP § 2144 - §2144.09 for additional guidance regarding support for obviousness determinations).
Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Masini et al. (US 2001/0043918) (“Masini” hereinafter) in view of Diresta et al. (US 2005/0101008) (“Diresta” hereinafter) further in view of Parton (US 5,690,825).
Masini as modified by Diresta discloses the cell collection device 10 of claim 1, that fails to explicitly teach a cell collection device wherein the graft is attached to the first panel, the second panel, or both the first and second panels by a clip or pin.
However, Parton teaches that it is known to provide a collection device wherein the graft 36 is attached to the first panel 28, the second panel 30, or both the first and second panels 28, 30) by a pin 32 (see at least abstract, figs. 1-2, col. 2, lines 38-47 & 62-65 and col. 4, lines 2-27).
Therefore, it would have been obvious to one of ordinary skill in the art at the time Applicant’s invention was filed to provide the cell collection device of Masini as modified by Diresta wherein the graft is attached to the first panel, the second panel, or both the first and second panels by a pin as taught by Howard since such a modification would amount to applying a known technique (i.e., as taught by Parton) to a known device (i.e., as taught by Masini) ready for improvement to achieve a predictable result such as facilitating adjustment of the degree of compression applied to the graft or foam to provide an effective pore size sufficiently small to trap the desired particles (see at least col., 2, lines 62--65 of Parton)--See KSR, 550 U.S. at___, 82 USPQ2d at 1396 (See MPEP § 214 3 for a discussion of the rationale(s) listed above. See also MPEP § 2144 - §2144.09 for additional guidance regarding support for obviousness determinations).
Claim(s) 8-9, 12-16 & 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Masini et al. (US 2001/0043918) (“Masini” hereinafter) in view of Diresta et al. (US 2005/0101008) (“Diresta” hereinafter) further in view of Howard et al. (US 2008/0243029) (“Howard” hereinafter).
In regards to claim 8, Masini as modified by Diresta discloses the cell collection device 10 of claim 1, that fails to explicitly teach a cell collection device further comprising a second device for liberating cells from a tissue connected to the inlet port, wherein the second device is an endoscopic shaver, an endoscopic bone cutter, an endoscopic burr, or an endoscopic drill. However, Howard teaches that it is known to provide a cell collection device 40 further comprising a second device 10 for liberating cells from a tissue connected to the inlet port 44b, wherein the second device 10 is an endoscopic shaver or an endoscopic bone cutter (see at least fig. 1 and par 0082-0084). Therefore, it would have been obvious to one of ordinary skill in the art at the time Applicant’s invention was filed to provide the cell collection device of Masini as modified by Diresta further comprising a second device for liberating cells from a tissue connected to the inlet port, wherein the second device is an endoscopic shaver or an endoscopic bone cutter as taught by Howard since such a modification would amount to applying a known technique (i.e., as taught by Howard) to a known device (i.e., as taught by Masini) ready for improvement to achieve a predictable result such as minimizing intervention from the surgeon; and harvesting tissue, loading tissue onto a scaffold in an expedient manner, and implanting the scaffold for tissue repair in a sterile manner in a single surgical procedure (see at least par 0026 of Howard)--See KSR, 550 U.S. at___, 82 USPQ2d at 1396 (See MPEP § 214 3 for a discussion of the rationale(s) listed above. See also MPEP § 2144 - §2144.09 for additional guidance regarding support for obviousness determinations).
In regards to claim 9, Masini as modified by Diresta discloses the cell collection device 10 of claim 1, that fails to explicitly teach a cell collection device further comprising a device for aspiration or suction at the outlet port. However, Howard teaches that it is known to provide a cell collection device further comprising a device 70 for aspiration or suction at the outlet port (i.e., through outlet cap 48) (see fig. 1 and par 0088). Therefore, it would have been obvious to one of ordinary skill in the art at the time Applicant’s invention was filed to provide the cell collection device of Masini as modified by Diresta further comprising a device for aspiration or suction at the outlet port as taught by Howard since such a modification would amount to applying a known technique (i.e., as taught by Howard) to a known device (i.e., as taught by Masini) ready for improvement to achieve a predictable result such as minimizing intervention from the surgeon; and harvesting tissue, loading tissue onto a scaffold in an expedient manner, and implanting the scaffold for tissue repair in a sterile manner in a single surgical procedure (see at least par 0026 of Howard)--See KSR, 550 U.S. at___, 82 USPQ2d at 1396 (See MPEP § 214 3 for a discussion of the rationale(s) listed above. See also MPEP § 2144 - §2144.09 for additional guidance regarding support for obviousness determinations).
In regards to claim 12, Masini discloses a method of collecting stem cells comprising:
a) connecting the inlet port 12 of the cell collection device 10 of claim 1 to cells from a tissue in a fluid (see at least par 0025);
b) connecting the outlet port 16 of the cell collection device 10 (i.e., by actuating outlet control 18); and
c) collecting stem cells on the graft material 20 (see at least abstract and par 0028 & 0031).
Masini as modified by Diresta discloses a method, as described above, that fails to explicitly teach a method comprising connecting the inlet port of the cell collection device to a second device for liberating cells from a tissue in a fluid; and connecting the outlet port of the cell collection device to a suction or aspiration apparatus.
However, Howard teaches that it is known to provide a method (see par 0022-0023) comprising connecting the inlet port 44b of the cell collection device 40 to a second device 10 for liberating cells from a tissue in a fluid (see at least fig. 1 and par 0082-0084); and connecting the outlet port of the cell collection device 10 to a suction or aspiration apparatus 70 (see at least fig. 1 and par 0088).
Therefore, it would have been obvious to one of ordinary skill in the art at the time Applicant’s invention was filed to provide the method of Masini as modified Diresta comprising connecting the inlet port of the cell collection device to a second device for liberating cells from a tissue in a fluid; and connecting the outlet port of the cell collection device to a suction or aspiration apparatus as taught by Howard since such a modification would amount to applying a known technique (i.e., as taught by Howard) to a known device (i.e., as taught by Masini) ready for improvement to achieve a predictable result such as minimizing intervention from the surgeon; and harvesting tissue, loading tissue onto a scaffold in an expedient manner, and implanting the scaffold for tissue repair in a sterile manner in a single surgical procedure (see at least par 0026 of Howard)--See KSR, 550 U.S. at___, 82 USPQ2d at 1396 (See MPEP § 214 3 for a discussion of the rationale(s) listed above. See also MPEP § 2144 - §2144.09 for additional guidance regarding support for obviousness determinations).
In regards to claim 13, Masini discloses the method of claim 12, wherein the graft is bone, soft tissue, or an artificial scaffold (such as porous glass, sol, gel, aerogel, porous ceramic, nylon or other biocompatible polymers) (see at least par 0027-0028).
In regards to claim 14, Masini as modified by Diresta discloses the method of claim 12, that fails to explicitly teach a method wherein the second device for liberating cells is an arthroscopic shaver, an arthroscopic bone cutter, an arthroscopic burr, or an arthroscopic drill. However, Howard teaches that it is known to provide a method wherein the second device 10 for liberating cells is an endoscopic shaver or an endoscopic bone cutter (see at least fig. 1 and par 0022-0023 & 0082-0084). Therefore, it would have been obvious to one of ordinary skill in the art at the time Applicant’s invention was filed to provide the method of Masini as modified by Diresta wherein the second device for liberating cells is an endoscopic shaver or an endoscopic bone cutter as taught by Howard since such a modification would amount to applying a known technique (i.e., as taught by Howard) to a known device (i.e., as taught by Masini) ready for improvement to achieve a predictable result such as minimizing intervention from the surgeon; and harvesting tissue, loading tissue onto a scaffold in an expedient manner, and implanting the scaffold for tissue repair in a sterile manner in a single surgical procedure (see at least par 0026 of Howard)--See KSR, 550 U.S. at___, 82 USPQ2d at 1396 (See MPEP § 214 3 for a discussion of the rationale(s) listed above. See also MPEP § 2144 - §2144.09 for additional guidance regarding support for obviousness determinations).
In regards to claim 15, Masini as modified by Diresta discloses the method of claim 12, that fails to explicitly teach a method further comprising connecting a filter device to the cell collection device to remove tissue fragments from the fluid. However, Howard teaches that it is known to provide a method further comprising connecting a filter device 30 to the cell collection device 40 to remove tissue fragments from the fluid (see at least fig. 1 and par 0022-0023 & 0084). Therefore, it would have been obvious to one of ordinary skill in the art at the time Applicant’s invention was filed to provide the method of Masini as modified by Diresta further comprising connecting a filter device to the cell collection device to remove tissue fragments from the fluid as taught by Howard since such a modification would amount to applying a known technique (i.e., as taught by Howard) to a known device (i.e., as taught by Masini) ready for improvement to achieve a predictable result such as minimizing intervention from the surgeon; and harvesting tissue, loading tissue onto a scaffold in an expedient manner, and implanting the scaffold for tissue repair in a sterile manner in a single surgical procedure (see at least par 0026 of Howard)--See KSR, 550 U.S. at___, 82 USPQ2d at 1396 (See MPEP § 214 3 for a discussion of the rationale(s) listed above. See also MPEP § 2144 - §2144.09 for additional guidance regarding support for obviousness determinations).
In regards to claim 16, Masini as modified by Diresta discloses the method of claim 15, that fails to explicitly teach a method wherein the filter device is connected in series between the second device for liberating cells from a tissue and the cell collection device. However, Howard teaches that it is known to provide a method wherein the filter device 30 is connected in series between the second device 10 for liberating cells from a tissue and the cell collection device 40 (see at least fig. 1 and par 0022-0023 & 0082-0084). Therefore, it would have been obvious to one of ordinary skill in the art at the time Applicant’s invention was filed to provide the method of Masini as modified by Diresta wherein the filter device is connected in series between the second device for liberating cells from a tissue and the cell collection device as taught by Howard since such a modification would amount to applying a known technique (i.e., as taught by Howard) to a known device (i.e., as taught by Masini) ready for improvement to achieve a predictable result such as minimizing intervention from the surgeon; and harvesting tissue, loading tissue onto a scaffold in an expedient manner, and implanting the scaffold for tissue repair in a sterile manner in a single surgical procedure (see at least par 0026 of Howard)--See KSR, 550 U.S. at___, 82 USPQ2d at 1396 (See MPEP § 214 3 for a discussion of the rationale(s) listed above. See also MPEP § 2144 - §2144.09 for additional guidance regarding support for obviousness determinations).
In regards to claim 18, Masini discloses the method of claim 13, wherein the soft tissue is tendon, ligament, or cartilage (see at least par 0027-0028).
Response to Arguments
Applicant's arguments filed July 29, 2026 have been fully considered but they are not persuasive. Applicant contends that element 12 of Dai is a filter box cartridge and not a housing. The Office respectfully traverses. First, the Office notes that the claim language clearly requires a “housing portion,” as opposed to a housing. Second, the Office submits that a filter box cartridge, as disclosed in Dai, is clearly a housing that houses a graft 5.
Moreover, Applicant contends that the first screen 121 of Dai is not at the distal end of the first housing portion 111, but at the middle of the first housing portion 111. The first screen is not at the proximal end of the second housing portion 112. In fact, the second screen is closer to the second housing portion 112 than the first screen. The Office respectfully traverses. For example, under a broad reasonable interpretation, the housing portions can be divided around its midpoint into two ends, a proximal end and a distal end as illustrated below:
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Under such an interpretation, the first screen 121 is clearly at the distal end of the first housing portion 111 as claimed. In a similar vein, the second screen 122 is clearly at the proximal end of the third housing portion 12.
Furthermore, Applicant contends that Diresta teaches an adaptor to keep a cell culture membrane from moving or bulging. One of ordinary skill in the art would not be motivated to substitute the cell collection device of Masini for the adaptor of Diresta because such a substitution would render the device of Masini inoperable because the device of Masini allegedly requires that the scaffold be subjected to mechanical forces. The Office respectfully traverses.
First, the Office notes that Diresta describes a technique for improving cell culture under an elevated pressure environment needed to culture tumor cells (see at least par 0007) whereas Masini does not. It is such elevated pressures that Diresta decries as being capable of causing bulging of the scaffold rather than the normal tissue pressure used in Masini. The design of Diresta is thus an improvement over that of Masini in that it introduces a design for a high-pressure cell culture cassette that incorporates the functionality of the high-pressure adapter with a low-pressure cassette (see at least par 0148).
Second, although one embodiment of the invention of Masini uses mechanical forces on the scaffold, other embodiments of Masini do not. For example, Masini clearly teaches the following at par 0080 thereof that “[i]n addition to, or instead of, mechanical forces, cultured tissue can be exposed to other processes to improve properties. In the case of bone growth, the cultured bone may be exposed to electromagnetic radiation, electric fields, magnetic fields, electrolytic effects, chemical exposure, biomolecule exposure (e.g. exposure to enzymes, hormones, and the like), thermal processes such as thermal cycling, chemical effects including photochemical effects, ion implantation, other radiation exposure including ultrasound exposure, and other effects so as to improve bone quality. These processes can be performed on tissue cultures within the culture vessel, or where appropriate, outside of the vessel, such as prior to implantation in a patient” [emphasis added]. Diresta clearly teaches such an embodiment at least at par 0051 thereof.
MPEP § 2123 (II) reads as follows
Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). "A known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use." In re Gurley, 27 F.3d 551, 554, 31 USPQ2d 1130, 1132 (Fed. Cir. 1994) (The invention was directed to an epoxy impregnated fiber-reinforced printed circuit material. The applied prior art reference taught a printed circuit material similar to that of the claims but impregnated with polyester-imide resin instead of epoxy. The reference, however, disclosed that epoxy was known for this use, but that epoxy impregnated circuit boards have "relatively acceptable dimensional stability" and "some degree of flexibility," but are inferior to circuit boards impregnated with polyester-imide resins. The court upheld the rejection concluding that applicant’s argument that the reference teaches away from using epoxy was insufficient to overcome the rejection since "Gurley asserted no discovery beyond what was known in the art." Id. at 554, 31 USPQ2d at 1132.). Furthermore, "[t]he prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed…." In re Fulton, 391 F.3d 1195, 1201, 73 USPQ2d 1141, 1146 (Fed. Cir. 2004).
Indeed, the prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed and would therefore not render Masini inoperable as claimed since such a cassette/adapter may be used with an electrical field instead of a mechanical force as alleged by Applicant.
In view of the foregoing, the rejections over at least Dai, Masini and Diresta are maintained.
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 RENE T TOWA whose telephone number is (313)446-6655. The examiner can normally be reached Mon-Fri, 9:00 AM-5:00 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jason M. Sims can be reached at 571-272-7540. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RENE T TOWA/Primary Examiner, Art Unit 3791
Prosecution Insights