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 .
Election/Restrictions
Claims 6-11 and 17-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 8/18/2025.
Claims 1-5, 13-16, and 21 are examined while Claims 6-11 and 7-20 are withdrawn. Please see arguments below.
Applicant argues “First, Applicant submits that examination of all of the claims as filed does not present an undue burden of searching on the Examiner since the claimed features are closely related”; however, examiner respectfully disagrees. Each embodiment presented in the instant application has an ion-emitting body that is a different shape. When analyzing the claim language, there are multiple embodiments that would require more search. Regardless if other claimed features are close, the shapes of the ion-emitting body are different.
Applicant argues “Second, in view of the amendment to independent Claim 1 which now includes the limitations of original dependent Claim 12 directed to the through hole having at least two different diameters. Applicant respectfully submits that this feature is generic to all of the figures. Accordingly, Applicant submits that the restriction requirement is overcome. Applicant further notes that the cited reference to Neuwirth et al. (US 20090155367 A1) has been cited as well in prosecutions in other jurisdictions including before the EPO where it was granted nonetheless based on the amendment to independent Claim 1 set forth herein”; however, examiner respectfully disagrees. Examiner agrees that the limitation of the through hole having at least two different diameters is generic to all other embodiments; but, the shape of the ion-emitting body is different (as seen in the instant application’s figures). Therefore, by adding the limitations of claim 12 into claim 1, the restriction requirement of electing a species was not overcome.
Examiner agrees that claims 2-5, 13-16, and 21 do not need to be withdrawn since they read on elected Species I.
Claim Rejections - 35 USC § 112
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 2-5, 13, and 16 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. Claims 3-5 and 16 are rejected due to its dependency on claim 2.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 2 recites the broad recitation “wherein the outer surface of the ion-emitting body is at least in sections describable as a surface section of an ellipsoid with a, b, and c lengths of the semi-axis of such an ellipsoid”, and the claim also recites “in particular in Cartesian coordinates via the (x2/a2) + (y2/a2) + (z2/a2) = 1, wherein a, b and c are greater than zero” which is the narrower statement of the range/limitation. Additionally, claim 13 recites the broad recitation “wherein the ion-emitting body contains or is formed from a metal”, and the claim also recites “in particular copper, a copper alloy, gold, a gold alloy or a copper-gold alloy” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claims 1-5, 13-16, and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Neuwirth et al. (US 20090155367 A1) in view of Yamada (JP 3074621 U).
Regarding claim 1, Neuwirth et al. discloses a device (figure 7, an array of silver nitrate coated beads arranged on a nylon monofilament: paragraph 0046) for contraception (the device [figure 7] is used to occlude the fallopian tubes and thereby induce sterility: paragraph 0001), comprising: at least one thread (320 – figure 7, a string or thread: paragraph 0046) and at least one ion-emitting body (300 – figure 7, a plurality of silver nitrate bearing beads: paragraph 0046) having at least one through hole (A – see annotated figure 1, a through hole) with at least two through hole openings through which the at least one thread extends (see annotated figure 1, the one through hole [A] creates two hole openings which allows the one thread [320] to extend through the ion-emitting body [300]: paragraph 0046), wherein an outer surface of the ion-emitting body (B – see annotated figure 1, outer surface of the ion-emitting body) extending from one of the through hole openings to the other one of the through hole openings has no outwardly facing edge (see annotated figure 1, the outer surface of the ion-emitting body [B] does not have any edges since it is a sphere: paragraph 0006/0019).
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Annotated figure 1: ion-emitting body of Neuwirth et al.
However, Neuwirth et al. fails to disclose the through hole having at least two different diameters.
Yamada teaches an analogous through hole (4/5/6 - figure 2, there is a tapered hole [4/5] and hole [6] that goes through the bead: Summary/paragraph 0007), the analogous through hole (4/5/6) having at least two different diameters (figure 2, the tapered holes [4/5] have a different diameter compared to the hole [6]: paragraph 0007/0020-0021).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the through hole of Neuwirth et al. with two different diameters as taught by Yamada in order to provide a device for contraception that has an improved through hole to promote stability by allowing the knot to sit in the bead, which restricts movement of the bead along the string (paragraph 0007/0015, Yamada).
Regarding claim 2, Neuwirth et al. in view of Yamada discloses the invention as discussed in claim 1. Neuwirth et al. further discloses wherein the outer surface of the ion-emitting body (B) is at least in sections describable as a surface section of an ellipsoid with a, b and c as lengths of the semi-axes of such an ellipsoid (a/b/c - see annotated figure 2, the semi-axes labelled accordingly on a surface section of the outer surface of the ion-emitting body [B]), in particular in Cartesian coordinates via the equation (x2/a2) + (y2/a2) + (z2/a2) = 1, wherein a, b and c are greater than zero (see annotated figure 1, the outer surface of the ion-emitting body [B] is describable as a surface section of an ellipsoid since the ion-emitting body [300] is a sphere; additionally, it was disclosed in the written specification of the instant application that “The ion-emitting body 3 according to Figure 2 is a sphere as a specific variant of an ellipsoid. In addition, the through hole also has no influence on the recognizable basic shaped formed by the outer surfaces of the ion-emitting body 3 as an ellipsoid, here specifically as a sphere: page 11, lines 28-33/page 12, lines 1-5).
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Annotated figure 2: semi-axis of ion-emitting bodies of Neuwirth et al.
Regarding claim 3, Neuwirth et al. in view of Yamada discloses the invention as discussed in claim 2. Neuwirth et al. further discloses wherein a longitudinal axis of the ion-emitting body (C – see annotated figure 1, a longitudinal axis of the ion-emitting body) extends substantially parallel to an extension direction of the through hole of the ion-emitting body (A) (see annotated figure 1, the longitudinal axis of the ion-emitting body [C] extends parallel to the extension direction of the through hole of the ion-emitting body [A]), and wherein the lengths of the semi-axes a, b extend perpendicular to the longitudinal axis (C) and the length of the semi-axis c extends in the direction of the longitudinal axis (C) (see annotated figure 1/see annotated figure 2, the semi-axes a and b extend perpendicular to the longitudinal axis [C] while the semi-axis c extends in the direction of the longitudinal axis [C]).
Regarding claim 4, Neuwirth et al. in view of Yamada discloses the invention as discussed in claim 2. Neuwirth et al. further discloses wherein the lengths of the semi-axes a, b and c are equal (see annotated figure 2, since the ion-emitting body [3] is a sphere, the lengths of the semi-axes a, b, and c are equal; it was described in the written specification in the instant application that “According to the sphere shown in Figure 2 as a basic shape of the ion-emitting body 3, the lengths of the semi-axes a, b and c are equal here”: page 12, lines 17-18).
Regarding claim 5, Neuwirth et al. in view of Yamada discloses the invention as discussed in claim 4.
However, Neuwirth et al. in view of Yamada fails to explicitly disclose wherein the lengths of the semi-axes a, b and c are between 1mm and 5.5mm.
Neuwirth et al. in view of Yamada discloses wherein the lengths of the semi-axes a, b and c are between 0.5mm and 2mm (Neuwirth et al.: the average diameter of the ion-emitting bodies [300] is in the range of 0.5mm-2mm, which falls within the claimed range: paragraph 0008/0034).
It would have been prima facie obvious to one of ordinary skills in the art before the filing date to have modified the semi axes of a, b, and c from between 0.5mm and 2mm to 1mm and 5.5mm to allow the beads to pass through the interior passage of the catheter for placement in the fallopian tube (paragraph 0031, Neuwirth et al.). Additionally, the claimed value lies within the range disclosed by the prior art (please see MPEP 2144.05 I., “In the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists. In reWertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976)”). Further, applicant places no criticality on the range claimed, indicating simply that the lengths of the semi-axes are within the claimed ranges (written specification: page 5, lines 10-11).
Regarding claim 13, Neuwirth et al. in view of Yamada discloses the invention as discussed in claim 1. Neuwirth et al. further discloses wherein the ion-emitting body (300) contains or is formed from a metal, in particular copper, a copper alloy, gold, a gold alloy or a copper-gold alloy (the ion-emitting body [300] contains silver nitrate on its surface: paragraph 0034).
Regarding claim 14, Neuwirth et al. in view of Yamada discloses the invention as discussed in claim 1. Neuwirth et al. further discloses wherein the device (figure 7) comprises 2 to 5 ion-emitting bodies (300) through the respective through holes (A) of which the at least one thread (320) extends (figure 7, there are 5 ion-emitting bodes [300]).
Regarding claim 15, Neuwirth et al. in view of Yamada discloses the invention as discussed in claim 1. Neuwirth et al. further discloses an ion-emitting body (300) for a device (figure 7) for contraception according to claim 1 (the device [figure 7] comprising the ion-emitting body [300] is for inducing fallopian tube blockage as a means for female contraception: paragraph 0006).
Regarding claim 16, Neuwirth et al. in view of Yamada discloses the invention as discussed in claim 5.
However, Neuwirth et al. in view of Yamada fails to explicitly disclose wherein the lengths of the semi-axes a, b and c are between 1.5mm and 5mm.
Neuwirth et al. in view of Yamada discloses wherein the lengths of the semi-axes a, b and c are between 0.5mm and 2mm (Neuwirth et al.: the average diameter of the ion-emitting bodies [300] is in the range of 0.5mm-2mm, which falls within the claimed range: paragraph 0008/0034).
It would have been prima facie obvious to one of ordinary skills in the art before the filing date to have modified the semi axes of a, b, and c from between 0.5mm and 2mm to 1.5mm and 5mm to allow the beads to pass through the interior passage of the catheter for placement in the fallopian tube (paragraph 0031, Neuwirth et al.). Additionally, the claimed value lies within the range disclosed by the prior art (please see MPEP 2144.05 I., “In the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists. In reWertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976)”). Further, applicant places no criticality on the range claimed, indicating simply that the lengths of the semi-axes are within the claimed ranges (written specification: page 5, lines 10-11).
Regarding claim 21, Neuwirth et al. in view of Yamada discloses the invention as discussed in claim 1. Neuwirth et al. further discloses wherein the device (figure 7) comprises 3 or 4 ion-emitting bodies (300) through the respective through holes (A) of which the at least one thread (320) extends (figure 7, the device [figure 7] comprises 3 or 4 ion-emitting bodes [300]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREW JUN-WAI MOK whose telephone number is (703)756-4605. The examiner can normally be reached 8am-4pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Alireza Nia can be reached at (571) 270-3076. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANDREW JUN-WAI MOK/Examiner, Art Unit 3786
/ALIREZA NIA/Supervisory Patent Examiner, Art Unit 3786