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 .
Response to Arguments
Applicant's arguments filed 5/3/26 have been fully considered but they are not persuasive. Functional language, such as “configured to,” “adapted to,” :
According to MPEP 2114.04, “[a]pparatus claims cover what a device is, not what a device does.” This means that the capability of a prior art device to perform the claimed function is often sufficient to anticipate the claim, regardless of whether it’s explicitly stated to be “configured to” perform that function. “Configured to” is increasingly treated as synonymous with “capable of” or “operable to” in the absence of explicit contextual clues. See office action below for further explanation.
Claim Rejections - 35 USC § 103
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.
Claim(s) 29-34, 36-41, 45-48 are rejected under 35 U.S.C. 103 as being unpatentable over Lapeyre et al. 2002/0183840.
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Regarding claims 29 and 48, Lapeyre et al. discloses a prosthetic heart valve, comprising a valve housing (105) configured to be positioned adjacent to a heart valve annulus (functional language); one or more flaps (the flaps are interpreted to be element 110; 210) moveably coupled to said valve housing: a passage (see blood flow path "F' in figure 1) defined by an inner surface of at least one of said valve housing and said one or more flaps, wherein said passage is configured to facilitate blood flow therethrough along a longitudinal axis thereof, from an inflow side to an outflow side of said valve; one or more openings (see windows 125) through said inner surface.
However Lapeyre et al. does not explicitly disclose the functional language of (e.g. claim 29) “such that at an open position of the heart valve, a portion of the blood flow flowing along the longitudinal axis of said passage is redirected from said passage through said one or more openings, wherein each of the openings is configured to direct blood flowing therethrough in a circumferential direction about the valve housing that defines the passage and/or about the one or more flaps that defines the passage, thereby mitigating stagnation of the blood flow and thus mitigating a risk of blood clots formation.
MPEP 2114 states:
II. MANNER OF OPERATING THE DEVICE DOES NOT DIFFERENTIATE
APPARATUS CLAIM FROM THE PRIOR ART
"[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) (The
preamble of claim 1 recited that the apparatus was "for mixing flowing developer material" and
the body of the claim recited "means for mixing said mixing means being stationary and
completely submerged in the developer material." The claim was rejected over a reference
which taught all the structural limitations of the claim for the intended use of mixing flowing
developer. However, the mixer was only partially submerged in the developer material. The
Board held that the amount of submersion is immaterial to the structure of the mixer and thus
the claim was properly rejected.
Lapeyre et al. discloses the structure as claimed, thus it is capable of performing
the functions as claimed. Nevertheless, Lapeyre et al. states in (see abstract; 0059; 0064-0065]) that the windows allow for blood to flow 125 which allows for complete washing of the pivot/hinge mechanism (130, 200, and 300) as well as the leaflets. It would have been obvious to one having ordinary skill in the art to modify Lapeyre et al. to allow the openings/windows to direct blood flow in a circumferential direction about the valve housing that defines the passage and/or about the one or more flaps that defines the passage because the pivots/hinges of Lapeyre et al. are located within the circumferential area of the valve and the main objective of Lapeyre et al. is to reduce stagnation as noted in ([0064; 0065 etc.]).
Regarding claims 30, 34, 36-41, 45-47 see functional language and MPEP 2114
discussion supra. Regarding claim 31, see figure 1 supra. Regarding claim 32 see
flange (105). Regarding claim 33, it is inherent that the openings are along the periphery
in order to support the flaps.
Allowable Subject Matter
Claims 35, 42-44 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
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 Suzette Gherbi whose telephone number is (571)272-
4751. The examiner can normally be reached on Monday-Friday 7:00am-3:00pm. 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:/Avww.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Melanie Tyson can be reached on 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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/SUZETTE J GHERBI/Primary Examiner, Art Unit 3774 July 8, 2026
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