DETAILED ACTION
Claims 20 and 23-37 are pending in the present reissue application.
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Amendments
The present action is based on the amendment filed on March 7, 2026
Claim Rejections - 35 U.S.C. 251 --Recapture
Claims 20, 23-28, and 30-36 are rejected under 35 U.S.C. 251 as being an improper recapture of broadened claimed subject matter surrendered in the application for the patent upon which the present reissue is based. See In re McDonald, 43 F.4th 1340, 1345, 2022 USPQ2d 745 (Fed. Cir. 2022); Greenliant Systems, Inc. et al v. Xicor LLC, 692 F.3d 1261, 103 USPQ2d 1951 (Fed. Cir. 2012); In re Shahram Mostafazadeh and Joseph O. Smith, 643 F.3d 1353, 98 USPQ2d 1639 (Fed. Cir. 2011); North American Container, Inc. v. Plastipak Packaging, Inc., 415 F.3d 1335, 75 USPQ2d 1545 (Fed. Cir. 2005); Pannu v. Storz Instruments Inc., 258 F.3d 1366, 59 USPQ2d 1597 (Fed. Cir. 2001); Hester Industries, Inc. v. Stein, Inc., 142 F.3d 1472, 46 USPQ2d 1641 (Fed. Cir. 1998); In re Clement, 131 F.3d 1464, 45 USPQ2d 1161 (Fed. Cir. 1997); Ball Corp. v. United States, 729 F.2d 1429, 1436, 221 USPQ 289, 295 (Fed. Cir. 1984). A broadening aspect is present in the reissue which was not present in the application for patent. The record of the application for the patent shows that the broadening aspect (in the reissue) relates to claimed subject matter that applicant previously surrendered during the prosecution of the application. Accordingly, the narrow scope of the claims in the patent was not an error within the meaning of 35 U.S.C. 251, and the broader scope of claim subject matter surrendered in the application for the patent cannot be recaptured by the filing of the present reissue application.
Review of the prosecution history of the patent family leading to the present reissue application reveals that:
In the application 12/973,542 (now US 8,911,856) - on 06/30/2014 claims 1 and 15 were amended to include the limitation “wherein the fabric further comprises a water permeability rating of less than about 400 cc/min/cm2 at 120 mm Hg pressure.”
Along with the amendment, a Declaration of Stephanie Booz Norris under 37 CFR 1.132 was filed, in which the inventor concluded that a permeability of less than about 400 cc/min/cm2 was not achieved when one or more of the other recited parameters were not met. (Refer to p. 2 of the Declaration, Table 1, C-Comparative test sample) It is noted herein that the parameters measured in the test were denier, density, thickness and permeability.
On page 5 of the Remarks filed 06/30/2014 (Application No. 12/973,542), Patent Owner stated:
“During the interview, the amendments to the claims above were discussed. In addition, experimental data showing that comparative fabrics C-E having one or more of denier, density and thickness outside the ranges claimed in the independent claims (claims 1 and 15) are unable to achieve the permeability recited. Comparative F shows a permeability within the recited ranges, but fails to meet the recited ranges for all of the other recited parameters. This data demonstrates the criticality relating to the interrelationship of the parameter ranges and the difficulty in achieving thin fabric constructions (less than about 3.2 mil) which meet the permeability requirements. The Shiojima reference fails to suggest such a construction. (Emphasis added)
Therefore, Applicant’s statement that fabrics having one or more of denier, density and thickness outside the ranges claimed in the independent claims (claims 1 and 15) are unable to achieve the permeability recited, along with the amendment including the limitation "wherein the fabric further comprises a water permeability rating of less than about 400 cc/min/cm’ at 120 mm Hg pressure” constitutes the “surrender-generating limitation” in the present recapture analysis. See, e.g., MPEP 1412.02(1)(C)(1).
We apply the recapture rule as a three-step process:
first, we determine whether, and in what respect, the reissue claims are broader in scope than the original patent claims;
next, we determine whether the broader aspects of the reissue claims relate to subject matter surrendered in the original prosecution; and
finally, we determine whether the reissue claims were materially narrowed in other respects, so that the claims may not have been enlarged, and hence avoid the recapture rule. [Refer to MPEP 1412.02]
In the present reissue, (1) the reissue claims are broader in scope than the original patent claims, and (2) the broader aspect of the reissue claims relate to subject matter surrendered in the original prosecution of application 12/973,542, i.e., a fabric comprising a water permeability rating of less than about 400 cc/min/cm2 at 120 mm Hg pressure has been modified in claims 20, 23-28, and 30-36 to read “wherein the fabric structure is water permeable.” While the claims have also been amended that “optionally, wherein the fabric structure has a water permeability rating of less than about 400 cc/min/cm2 at 120 mm Hg,” this limitation is optional and does not need to be met in order to practice the claimed invention.
With respect to whether applicant surrendered any subject matter, it is to be noted that a patent owner (reissue applicant) is bound by the argument that applicant relied upon to overcome an art rejection in the original application for the patent to be reissued, regardless of whether the Office adopted the argument in allowing the claims. Greenliant Systems, Inc. v. Xicor LLC, 692 F.3d 1261, 1271, 103 USPQ2d 1951, 1958 (Fed. Cir. 2012). As pointed out by the court, “[I]t does not matter whether the examiner or the Board adopted a certain argument for allowance; the sole question is whether the argument was made.” Jd. Reissue recapture applies to related family member applications. See MBO Laboratories, Inc. vy. Becton, Dickinson & Co., 474 F.3d 1323, 94 USPQ2d 1598 at 1606 (Fed. Cir. Apr. 12, 2010) (emphasis added)
With respect to the “third step” in the recapture analysis, it is noted that if the reissue claim(s) are broadened with respect to the previously surrendered subject matter, then recapture will be present regardless of other unrelated narrowing limitations. In the decision of In re Mostafazadeh, 643 F.3d 1353, 98 USPQ2d 1639 (Fed. Cir. 2011), the Federal Circuit stated: [T]he recapture rule is violated when a limitation added during prosecution is eliminated entirely, even if other narrowing limitations are added to the claim. If the added limitation is modified but not eliminated, the claims must be materially narrowed relative to the surrendered subject matter such that the surrendered subject matter is not entirely or substantially recaptured. Id. at 1361. (emphasis added)
In claims 20, 23-28, and 30-36 the water permeability requirement has been modified to read “wherein the fabric structure is water permeable.” However, being water permeable does not contain an upper limit to water permeability compared to the surrender generating limitation of a water permeability rating of less than about 400 cc/min/cm2 at 120 mm Hg pressure. Additionally, during the prosecution of the underlying patent, the prior art was found to contain water permeable fabrics:
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See page 4 of the Non-Final Rejection of December 31, 2013. Therefore, the claims are not materially narrowed relative to the surrendered subject matter as the surrendered subject matter is substantially recaptured.
Furthermore, with respect to the third step, we determine whether the reissue claims were materially narrowed in other respects, so that the claims may not have been enlarged, and hence avoid the recapture rule. In the present reissue, even though claims 20, 23-28 and 30-36 are amended to add limitations, the omission of the water permeability rating violates the recapture rule as noted in (2) above since the added limitations, e.g., an “implantable medical fabric”, “a tensile strength of greater than about 25 lbs. per inch”, a “probe burst strength of greater than about 20 lbs.”, a “fabric weight from 40g/m2 to about 58 g/m2”, are unrelated to the surrendered subject matter. Therefore, the 3-step test for recapture analysis indicates that there is recapture of canceled subject matter in the present reissue.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 20, 23, 29-31 and 37 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 and 14-19 of U.S. RE 46,779 E. Although the claims at issue are not identical, they are not patentably distinct from each other because the fabric in claims 1-8 of RE 46,779 E includes all the limitations of present claims 30 and 37 and thus, anticipates the claims. Likewise, the fabric in claims 14-19 of RE 46,779 E includes all the limitations of present claims 20 and 29 and thus, anticipates the claims.
Regarding the fabric having a woven construction in current claim 23 and 31, it is noted that woven fabrics are known to be made out of yarns. Since the claims of RE 46779 E provide for a fabric comprising yarns, it would have been obvious to form the yarns into a woven construction so as to prepare the fabric.
Response to Arguments
Applicant’s arguments filed on March 7, 2026 have been considered fully, but they are not persuasive.
On pages 9-10 of the remarks, the Applicant argues:
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However, the claims currently do not require that the implantable medical fabric would have a water permeability of 400cc/min/cm2 by use of the term “optionally”, and the claims would cover fabrics having water permeability of much greater than 400cc/min/cm2. Additionally, the present claims only require a fabric thickness of less than 3.2 mil (claims 20 and 23-28) or no greater than about 4.0 mil (claims 30-36). With no lower limit, the fabric thickness does not limit the claims with respect to the surrendered subject matter as water permeability would be expected to increase as fabric thickness decreases. This is shown in the declaration by Stephanie Booz Norris made in the underlying patent on June 30, 2014:
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As seen above, a decrease of 0.93 mil in the thickness of the fabric raised the permeability by 158 cc/min/cm2. Further decreases in the thickness would be expected to raise the permeability outside of the original limit of 400 cc/min/cm2.
With respect to the fabric weight, the Applicant argues on pages 10-11 of the remarks:
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While the fabric weight is from about 40 to about 58 g/m2 in the amended claims, the Applicant has not shown how fabric weight is related to water permeability. Water would be expected to pass through a fabric based on the size of the gaps between yarns in the fabric. However, the Applicant does not point to an evidentiary source to show the fabric weights of Comparative Samples C and F in the declaration by Stephanie Booz Norris made in the underlying patent on June 30, 2014, nor is fabric weight data presented for any other Sample in the declaration. Therefore, Applicant’s assertions as to the fabric weight of Comparative Samples C and F can only be considered as attorney argument and not evidence.
As shown in the rejection above, the Applicant specifically argued the permeability requirements in order to secure the patented claims. Additionally, the modifications to the surrendered subject matter only now exclude fully impermeable fabrics instead of all fabrics that have a water permeability rating of about 400 cc/min/cm2 or greater. Therefore, there is substantial recapture of subject matter that was surrendered during the prosecution of the underlying patent.
On pages 11-12 of the remarks, the Applicant argues:
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With respect to the terms “tensile strength” and “probe burst strength,” these terms are related to the strength of the fabric and not the water permeability of the fabric. While integrity failure of the fabric would allow water to pass, the water that passes would be due to the failure and not to the water permeability rating of the fabric. Therefore, “tensile strength” and “probe burst strength” are not related to the surrendered subject matter.
With regards to the non-statutory double patenting rejection over USPN RE 46,779 E, Applicant states on page 12 of the remarks:
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A terminal disclaimer has not yet been received, and thus, the non-statutory double patenting rejection is maintained.
Duty to Disclose
Applicant is reminded of the continuing obligation under 37 CFR 1.178(b), to timely apprise the Office of any prior or concurrent proceeding in which Patent No. 8,911,856 is or was involved. These proceedings would include any trial before the Patent Trial and Appeal Board, interferences, reissues, reexaminations, supplemental examinations, and litigation.
Applicant is further reminded of the continuing obligation under 37 CFR 1.56, to timely apprise the Office of any information which is material to patentability of the claims under consideration in this reissue application.
These obligations rest with each individual associated with the filing and prosecution of this application for reissue. See also MPEP §§ 1404, 1442.01 and 1442.04.
Conclusion
Claims 20 and 23-37 are rejected.
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 Joseph Kosack whose telephone number is (571)272-5575. The examiner can normally be reached M-F 8:00-4:30.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Patricia Engle can be reached at 571-272-6660. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOSEPH R KOSACK/Patent Reexamination Specialist
Central Reexamination Unit 3991
Conferees:
/Alan Diamond/
Patent Reexamination Specialist
Central Reexamination Unit 3991
/Patricia L Engle/SPRS, Art Unit 3991