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 .
Status of Claims
Currently, claims 33-42 are now pending and further examined below.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: "at least one energy storing component configured to store energy supplied by the boost converter and to power the source of negative pressure with the stored energy" in claim 43.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
A review of the specification shows that the following appears to be the corresponding structure described in the specification for the 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph limitation: the at least one energy storing component configured to store energy supplied by the boost converter and to power the source of negative pressure with the stored energy is disclosed as capacitor on instant [0119].
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.
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.
Claims 33-35 and 37-41 are rejected under 35 U.S.C. 103 as being unpatentable over Askem (US 20150174304) in view of Peters (US 5024668).
Regarding claim 33, Askem discloses a negative pressure wound therapy system comprising: a wound dressing configured to be placed over a wound of a patient (Figs. 1A, 2A: dressing 54, 74); a source of negative pressure configured to provide negative pressure to the wound (Figs. 1A, 2A: pump assembly 52, 72); and an electronic circuit (circuitry of printed circuit board, paras. [0272]-[0273]) comprising: a controller configured to operate the source of negative pressure (Fig. 39: controller 715; paras. [0348]-[0349]; para. [0272], abstract); a power source configured to supply power to the controller (Figs. 1A, 2A: batteries 56, 76; para. [0265]); and an isolation circuit in electrical communication with the power source and the controller (Figs. 61A and 61B; para. [0390]), the isolation circuit configured to operate in a first state in which the isolation circuit prevents application of power to the source of negative pressure (Fig. 61A: para. [0390], sentence 2) and in a second state in which the isolation circuit permits application of power to the source of negative pressure (Fig. 61B: para. [0390], sentence 4), the isolation circuit comprising an activation switch (para. [0390], the physical switch, 1177 in this embodiment) configured to, when activated, cause the isolation circuit to operate in the second state (Fig. 61B: para. [0390], sentence 4). However, Askem fails to explicitly disclose the inclusion of a latching circuit in the isolation circuit.
Peters teaches an analogous medical delivery system with circuitry and an activation switch, the isolation circuit (Fig. 16: analogous switch circuits 477 and 543) further comprising a latching circuit configured to cause the isolation circuit to remain in the second state in response to activation of the activation switch and subsequent deactivation of the activation switch (Fig. 16: 544 and 545; col. 23, lines 44-52). It would have been obvious for a person of ordinary skill in the art before the effective filing date of the claimed invention to have modified the isolation circuit switch of Askem by incorporating the addition of the latching circuit, as taught by Peters, in order to allow the state of the activation to be held, without the need to continuously hold down the switch mechanism, and to also protect against accidental shifting of the switch.
Regarding claim 34, Askem in view of Peters teaches the system of claim 33, as described above, wherein the activation switch, when not activated, is configured to cause the latching circuit to not conduct an electrical current (Askem: Fig. 61A: para. [0390], sentence 2; the latching circuit of Peters merely maintains this state), and wherein the activation switch, when activated, is configured to cause the latching circuit to conduct the electrical current (Askem: Fig. 61B: para. [0390], sentence 4; the latching circuit of Peters merely maintains this state).
Regarding claim 35, Askem in view of Peters teaches the system of claim 34, as described above, wherein the activation switch is configured to provide a conductive path for the electrical current to ground (Askem: paras. [0316] and [0318], the negative terminal of the battery being ground).
Regarding claim 37, Askem in view of Peters teaches the system of claim 33, as described above, wherein the electronic circuit further comprises an operation switch configured to activate and pause provision of negative pressure by the source of negative pressure (Askem: paras. [0391]-[0392]).
Regarding claim 38, Askem in view of Peters teaches the system of claim 37, as described above, wherein the electronic circuit is configured to not activate provision of negative pressure by the source of negative pressure when the isolation circuit is in the first state and the operation switch is activated (Askem: para. [0390], the preventions of negative pressure when pump is not powered).
Regarding claim 39, Askem in view of Peters teaches the system of claim 33, as described above, wherein the power source is nonremovable (Askem: para. [0244], printed batteries being nonremovable).
Regarding claim 40, Askem in view of Peters teaches the system of claim 33, as described above, further comprising an indicator configured to provide at least one of an indication that the activation switch has not been activated or an indication that the activation switch has been activated (Askem: Figs. 55 and 59, giving examples of possible indicators for the state of the activation switch; paras. [0378] and [0383]).
Regarding claim 41, Askem in view of Peters teaches the system of claim 33, as described above, wherein the controller is configured to be powered by the power source when the isolation circuit is in the first or second state (Askem: para. [0242]).
Claims 36 and 42 are rejected under 35 U.S.C. 103 as being unpatentable over Askem (US 20150174304) in view of Peters (US 5024668) in further view of Allen (US 20150100045).
Regarding claim 36, Askem in view of Peters teaches the system of claim 33, as described above, but fails to disclose a boost converter.
Allen teaches an analogous negative wound therapy system, wherein the electronic circuit further comprises a boost converter configured to increase power supplied by the power source and to provide increased power to the source of negative pressure (para. [0343], buck-boost converter). It would have been obvious for a person of ordinary skill in the art before the effective filing date of the claimed invention to have modified the circuit of the Askem-Peters device by incorporating the addition of the buck-boost converter as taught by Allen, in order to supply a “smoother” power supply regardless of glitches or fluctuations in the power from the batteries, so that the negative pressure supplied at the wound site can be constant for an effective treatment.
Regarding claim 42, Askem in view of Peters in further view of Allen teaches the system of claim 36, as described above, further comprising at least one energy storing component configured to store energy supplied by the boost converter (of Allen) and to power the source of negative pressure with the stored energy (Askem: paras. [0244] and [0252], capacitors being the energy storing components).
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.
Claim 33 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 11 of U.S. Patent No. 11,707,564 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because both the instant claim and the patented claim requires a negative pressure wound therapy system comprising a wound dressing, a source of negative pressure, and an electronic circuit as required by the instant claim. It is clear that all of the limitations of the instant claim are found in the patented claim. The differences between the instant claim and the patented claim lies in the fact that the patented claim include more elements and are thus more specific. Thus, the invention of the patented claim is in effect a "species" of the "generic" invention of the instant claim. It has been held that the generic invention is anticipated by the species. See In re Goodman, 29 USPQ 2d 2010 (Fed. Cir. 1993). Since the instant claim is anticipated by the patented claim, it is not patentably distinct from the patented claim.
Response to Arguments
Applicant’s arguments, filed 07/28/2025, with respect to the 102 rejections of independent claim 33 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Askem and in further view of Peters. Peters is now relied upon to teach the latching circuit.
For these reasons, claims 33-42 stand rejected under Askem and in further view of Peters and Allen, as recited above.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: Allen (US 20150100045).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KATERINA ANNA WITTLIFF whose telephone number is (703)756-4772. The examiner can normally be reached M-Th: 9-7ET.
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/K.A.W./Examiner, Art Unit 3783
/NATHAN R PRICE/Primary Examiner, Art Unit 3783
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