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 Amendment
The Amendment filed 01/18/24 has been entered. Claims 2-20 have been cancelled. Claim 1 is addressed in the following office action.
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.
Claim 1 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.
Claim 1 recites the limitation "at least on material adapted to close said outpouching in the body further including a reinforcing extension element" in lines 3-4. It is unclear how a material can include a reinforcing extension element.
Claim 1 recites the limitation "wherein said hydrogel affixed to the surface of said at least two telescoping elements inhibits retraction" in lines 8-9. There is insufficient antecedent basis for this limitation in the claim and said hydrogel is not positively recited as part of the claimed invention. For examination purposes, the limitation will be interpreted as a functional recitation.
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 1 is rejected under 35 U.S.C. 103 as being unpatentable over Becking et al. (US 2011/0144669) in view of Franano et al. (US 2017/0245864).
Regarding claim 1, an invention relating vascular occlusion devices, Becking discloses (Figs. 1-3) an endovascular treatment mesh device (104; Par. 0028) for closing outpouchings by affixing at least one amorphous hydrogel layer expandable in vivo to any or all surfaces of an expandable body (Par. 0041), comprising at least one material [i.e. cap braid made from NiTi (Par. 0048-0049)] adapted to close said outpouching in the body further including a reinforcing extension element (106; Par. 0030 & 0035), wherein said reinforcing extension element minimizes risk of collapse [examiner notes that elements 104/106/108 are in a constrained configuration while in the delivery catheter, and expands by advancement out of the catheter or with the catheter being withdrawn. As such the addition of 106 into the catheter with the other expandable components causes an increase in pressure and potential energy, filling the outpouching minimizing the risk of collapse (Figs. 1-3, Paragraphs 0032-0035)]. However, Becking fails to disclose wherein said reinforcing extension element is a telescoping center-support bar having at least two telescoping elements disposed within said treatment mesh, and wherein said hydrogel affixed to the surface of said at least two telescoping elements inhibits retraction.
In the same field of endeavor, which is occlusion devices, Franano teaches (Figs. 3A-I) an endovascular treatment mesh device (150; Par. 0211-0212) wherein said reinforcing extension element is a telescoping center-support bar (630/640) having at least two telescoping elements disposed within said treatment mesh (Par. 0241-0243), and wherein said hydrogel affixed to the surface of said at least two telescoping elements inhibits retraction [Note, the hydrogel is not positively recited and therefore is not considered part of the claimed invention. As a result, the limitation is interpreted functionally to be possible by Franano device given a hydrogel is present and affixed to the surface of said at least two telescoping elements].
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Becking to have wherein said reinforcing extension element is a telescoping center-support bar having at least two telescoping elements disposed within said treatment mesh, and wherein said hydrogel affixed to the surface of said at least two telescoping elements inhibits retraction. Doing so would allow for the device to freely shorten in the axial direction, which in turn allows the aneurysm to be more accurately filled by the device (Par. 0241), as taught by Franano.
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 1 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 13, and 17 of U.S. Patent No. 11,090,078. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the instant application are fully contained within the claim of the patent application.
Claims
18/416,199
1
1
1
Claims
US Patent No.
11,090,078
1
13
17
Claim 1 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4, and 20 of U.S. Patent No. 11,660,111. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the instant application are fully contained within the claim of the patent application.
Claims
18/416,199
1
1
1
Claims
US Patent No.
11,090,078
1
4
20
Claim 1 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 10,448,970. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the instant application are fully contained within the claim of the patent application.
Claims
18/416,199
1
Claims
US Patent No.
11,090,078
1
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Examiner Chima Igboko whose telephone number is (571)272-8422. The examiner can normally be reached on Monday-Friday 9:00am-6:00pm.
If attempts to reach the examiner by telephone are unsuccessful, please contact the examiner’s supervisor, Jackie Ho, at (571) 272-4696. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/C.U.I/ Examiner, Art Unit 3771
/ASHLEY L FISHBACK/Primary Examiner, Art Unit 3771 December 24, 2025