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 .
Applicant’s election without traverse of the invention of Group I, claims 3-12 in the reply filed on 8/7/25 is acknowledged.
Claims 2 and 13-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 8/7/25. An action on the merits of the elected claims follows.
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the first portion of the tray removably coupled to the second portion of the tray as recited in claim 5, must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 5 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Subject matter in the claims that was not described in the specification in such a way as to convey possession of the claimed invention by the applicant is the subject matter of claim 5. The specification does not appear to describe the feature at all, much less describe the feature with specific references to the application drawings and in the detail required to show possession of the claimed invention by applicant.
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 4, 5, 11 and 12 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 4 and 11 are indefinite because they further limit the tray content, the implantable device (which is recited in the claims only functionally), and further limit the claimed tray by reference to the tray content, respectively. This raises the question whether these claims are directed to the sub-combination of the tray or to the combination of the tray and tray content. In the comparison of the claims with the prior art below, the claims are presumed to be directed to the sub-combination of the tray only, consistent with the claim preambles and in order to give the claims their broadest reasonable interpretation. Amendments to the claims are required in order to clarify their scope. In making such amendments, and in view of the above commentary, the claims should be amended so that they are clearly directed only to the sub-combination of the tray in order to avoid potential delays in prosecution.
Claim 5 is indefinite because the metes and bounds of the claim cannot be adequately determined. This in turn is due to the lack of adequate description of the claim features pointed to above.
Claim 12 is indefinite first because it is directed to a packaging system when claim 10 from which claim 12 depends is directed to a tray. For purposes of the comparison of the claims with the prior art as indicated below, claim 12 is interpreted as if it is directed to a tray based on its dependency on claim 10 and ultimately on claim 1 that applicant drafted to clearly be directed to a tray. An amendment to claim 12 is required to clarify its scope. Furthermore, in view of the interpretation given to claim 12 as indicated above, such an amendment should be consistent with the examiner’s interpretation of claim 12 in order to avoid potential delays in prosecution of the application.
Claim 12 is also indefinite because the “removably coupled” phrase in line 2 thereof appears to recite a structural limitation on the tray by reference to the tray content, the inserter device. This, in turn, suggests that applicant’s intention might be to claim the inserter device in combination with the tray in claim 12 rather than the sub-combination of the tray. Additionally, the examiner notes the claim requirement in line 4 for a slider button of the handle. Accordingly, another amendment to claim 12 to clarify its scope is required in view of the “removably coupled” limitation therein and the structural requirements in line 4. Once more, such amendment should be consistent with the above noted interpretation of claim 12 in the comparison of the claim with the prior art. The examiner is examining claims to a tray that structurally require tray features, not features of the tray content.
Finally, claim 12 is also indefinite because it appears to be further structurally limited by reference to the protective cover. The examiner notes that pursuant to the restriction, applicant withdrew independent claim 2 that recited the protective cover from consideration. Why then amend claim 12 to appear to be further structurally limited by reference to the protective cover? Another amendment to claim 12 is required in view of this issue and consistent with the examiners commentary above.
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) 1 and 3-12 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Diaz et al. (5,370,129) cited by the applicant. See, for example, Figs 1 and 4.
Thus, the claimed tray reads on tray 60 which has all of the structural elements recited in the claims for the claimed tray, including that the tray defines a receptacle. Additionally, tray 60 meets all of the claimed functions, such as those recited in the preamble of claim 1 (“for securing an implantable device relative to a carrier member”).
The claimed receptacle can be arm retainer compartment 82 alone, arm retainer compartment 82 together with expanded arm compartments 80 or compartments 82, 80 together with pocket like receptacle 90. In each case the receptacle has a first width at a proximal end thereof (right end in Fig 4) and a second width at a distal end of the receptacle (left end in Fig 4) as structurally required in claim 1. Moreover, these widths can receive first and second arms of some implantable device in an initial state and can receive the first and second arms of the implantable device in a collapsed state respectively as functionally required in claim 1. Finally, the second width is less than the first width as also structurally required in claim 1.
The slot of claim 3 can be tube compartment 78 that can be seen to be in a second portion of the tray different from a first portion of the tray containing the receptacle. The slot of Diaz can contain some carrier member.
The one or more flanges of claim 6 can be the surfaces of the tray on either side of the slot.
The first and second walls of claim 7 can be the left and right walls of compartment 82 in the Fig 1 view.
The markings of claim 9 are at 76 in Diaz.
The second receptacle of claim 10 can be flange compartment 70 or tube compartment 78 (see Fig 4) either of which can receive some handle of some inserter device as functionally claimed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JACOB K ACKUN whose telephone number is (571)272-4418. The examiner can normally be reached Monday-Thursday 11am-7pm.
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, Orlando E. Aviles can be reached at (571) 270-5531. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JACOB K ACKUN/ Primary Examiner, Art Unit 3736