DETAILED ACTION
This Office Action is a Response to Applicant’s Arguments and Amendment submitted 11/26/2025.
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 .
Claim Objections
The objection to claim(s) 16 and 37 in the previous Office Action for informalities is hereby withdrawn in view of Applicant’s Amendment.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 16-18, 26, 37, 39, 42-44, and 45-46 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2009/0001122 A1 to Prommersberger et al. (hereinafter “Prommersberger”) (previously made of record by the Examiner).
Regarding claim 16, Prommersberger discloses (see abstract; Figs. 1-5C; and [0019]-[0051]) an adjunct (350) for use with a surgical stapler, wherein said adjunct comprises: a first layer (370, "porous layer") comprising a first material (see [0031]-[0033]) defining a continuous textured device-contacting surface configured to establish a frictional interface (see [0031]-[0033], the nature of the construction of the porous layer results in a non-smooth surface having texture which would frictionally interface with another surface) with a corresponding portion of the surgical stapler (see [0021]/[0029]/[0050]), wherein the first material of the first layer comprises a fibrous mesh material defining the continuous textured device-contacting surface (see [0031]-[0033]); and a second film layer (360, "non-porous layer") attached to the first layer (see Figs. 3A-D and [0021]/[0043]), wherein the second film layer comprises a second material that differs from the first material (see [0043]).
Prommersberger further discloses (claim 17) wherein the continuous textured device- contacting surface is planar (see Figs. 3A-D); (claim 18) wherein the continuous textured device contacting surface is configured to establish a frictional interface with a staple-forming undersurface of an anvil of the surgical stapler (see [0021]/[0029]/[0050]); (claim 26) wherein the continuous textured device- contacting surface is configured to establish a frictional interface with a deck surface of a surgical staple cartridge of the surgical stapler (see [0021]/[0029]/[0050]); (claim 37) wherein the first material of the first layer comprises a lattice material defining the continuous textured device-contacting surface (see [0031]-[0033]); (claim 39) further comprising a third layer, and wherein the third layer comprises polymeric material (see [0044]-[0049]); (claim 42) wherein the second material of the second film layer comprises a synthetic polymer (see [0043]); (claim 43) wherein the second material of the second film layer comprises polydioxanone (see claim 3 of Prommersberger); and (claim 44) further comprising a third film layer comprising a third material (see [0044]-[0049] and/or [0051]), wherein the second material of the second film layer comprises polydioxanone (see claim 3 of Prommersberger) and the third material of the third film layer comprises polydioxanone (see [0035]/[0049]).
Regarding claim 45, Prommersberger discloses (see abstract; Figs. 1-5C; and [0019]-[0051]) a surgical staple cartridge (104, Fig. 4), comprising: a deck surface defining a plurality of cavities (see Fig. 4); a plurality of staples positioned in the staple cavities (see [0019]-[0021]); and the adjunct of Claim 16 (see rejection of claim 16 above), wherein the continuous textured device-contacting surface of the adjunct is positioned facing the deck surface (see [0021]/[0029]/[0050]).
Prommersberger further discloses (claim 46) further comprising an adhesive attaching the continuous textured device-contacting surface to the deck surface (see [0029]).
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.
Claim(s) 38 and 40-41 is/are rejected under 35 U.S.C. 103 as being unpatentable over Prommersberger.
Prommersberger discloses the invention substantially as claimed as discussed above, however, with respect to claims 38 and 40-41, Prommersberger fails to specifically disclose wherein the first material of the first layer comprises polyglactin and wherein the polymeric material comprises an open cell foam or polyamine. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have made the adjunct out of the claimed materials, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
Response to Arguments
Applicant’s arguments with respect to claim(s) 16-18, 26, 37-44, and 45-46 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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 SHAUN L DAVID whose telephone number is (571)270-5263. The examiner can normally be reached M-F 10AM-6:30PM.
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, Darwin Erezo can be reached at 571-272-4695. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/SHAUN L DAVID/Primary Examiner, Art Unit 3771
Prosecution Insights