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 .
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required: The specification should be amended to explicitly teach that the outside surface includes a physical representation of an aorta. Because the specification does suggest this feature at col. 9, lines 1-22, this newly added limitation is not considered to constitute new matter.
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.
Claims 21-26 and 28-32 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 8,727,786. Although the claims at issue are not identical, they are not patentably distinct from each other because the claimed subject matter is taught or suggested by the claims of the ‘786 patent as follows:
Claim 21
Claims of ‘786 patent
An inflatable exhibit of human organs, the inflatable exhibit comprising:
Claim 1: An inflatable exhibit of a human heart comprising:
an inflatable infrastructure of a human heart inflatable to a three-dimensional representation of the human heart at a scale greater than 15:1, the infrastructure including a cross- sectional plane thereacross;
Claim 1: an inflatable infrastructure inflatable to a three-dimensional partial representation of the human heart at a scale greater than at least, 15:1, the infrastructure including a cross-sectional plane thereacross;
an inflatable infrastructure inflatable to a physical representation of human lungs, the inflatable infrastructure of the lungs being incorporated with the inflatable infrastructure of the heart; and a walk-through passageway extending through the inflatable physical representation of human lungs; and,
Claim 14: The inflatable exhibit of claim 1, further comprising an inflatable physical representation of the human lungs and an inflatable physical representation of arteries between the lungs and the inflatable infrastructure, the walk-through passageway extending from the inflatable infrastructure to the physical representation of the lungs via the inflatable representation of the arteries.
wherein the inflated infrastructure of the heart has an interior including physical representations of interior features of the human heart including walls, and a walk-through pattern or passageway through the interior, including an entrance,
Claim 1: the inflated infrastructure provides a physical representation of a human heart including inflatable internal walls extending upwardly from the cross-sectional plane and providing chambers of the human heart and the walk-through passageway
and an outside surface including physical representations of arteries including an aorta.
Claim 11: The inflatable exhibit of claim 2, wherein the exhibit further includes an outside surface of the inflatable infrastructure modeling the outside of the human heart, the outside surface including three-dimensional forms representing physical features of the heart.
While the claims of the ‘786 patent do not explicitly recite that the physical representations include an aorta, applicant is advised that it is proper under MPEP 804(II)(B)(2)(a) to use the specification as a guide to learn the meaning of a term in the claim. Further, the scope of the claims is to be determined not solely on the basis of the claim language, but upon giving claims their broadest reasonable construction in light of the specification as it would be interpreted by one of ordinary skill in the art. The portions of the specification which provide support for the reference claims may also be examined and considered when addressing the issue of whether a claim in the application defines an obvious variation of an invention claimed in the reference patent or application. In this case, it is proper to consider the specification when considering the meaning and scope of “physical representations” as recited in the claims. The provision of arteries including an aorta is suggested at col. 9, lines 1-22 of the specification of the ‘786 patent.
The limitations of claim 22 are recited in claim 14 of the ‘786 patent.
The limitations of claims 23-25 are suggested at col. 9, lines 1-22 of the suggested at col. 9, lines 1-22 of the specification.
The limitations of claim 26 are recited in claim 15 of the ‘786 patent.
The limitations of claim 28-30 are recited in claim 1 of the ‘786 patent.
The limitations of claim 31 are recited in claim 5 of the ‘786 patent, and also in claim 8.
The limitations of claim 32 are recited in claim 9 of the ‘786 patent.
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 33, 35 and 37-40 are rejected under 35 U.S.C. 103 as being unpatentable over Felipe Dulzaides, “What is Essential is Invisible to the Eyes” (hereinafter referred to as “Dulzaides”) in view of Lynch. Dulzaides discloses a method comprising inflating an exhibit of human organs comprising an infrastructure simulating a physical representation of a human organ comprising the heart, and an interior walk-through passageway extending through the representation through which a user is directed. The device of Dulzaides is provided at a scale greater than 15:1. While Dulzaides discloses a representation of a human heart rather than lungs, the provision of a walkthrough representation of a portion of human anatomy comprising a human heart and human lungs is known, as disclosed for example by Lynch, and would have been obvious to one of ordinary skill in the art as an obvious substitution of one known element for another and for the purpose of allowing a user to view features of additional portions of the anatomy including human lungs for educational purposes.
With respect to claims 35 and 37, one of ordinary skill in the art would understand the inflatable structure of Dulzaides to be deflatable and portable to a different location for reinflating as recited. With respect to claims 38 and 39, Lynch discloses at col. 2, lines 24-36 that its device comprises representations of arteries, including pulmonary arteries which are configured as passageways between its representation of the heart and its representation of the lungs, though which users are directed. With respect to claim 40, the device of Lynch comprises physical representations of the heart and lungs which are incorporated with each other.
Claim 34 is rejected under 35 U.S.C. 103 as being unpatentable over Dulzaides in view of Lynch, and further in view of Chu. Dulzaides as viewed in combination with Lynch discloses or suggests the claim limitations with the exception of the provision of informational displays to a user while inside the exhibit. This feature is known in the art, as taught for example by Chu at col. 5, lines 41-46, and would have been obvious to one of ordinary skill in the art for the purpose of providing more educational material to a user during a visit, particularly given that Lynch discloses the provision of informational material at a different location at col. 3, line 59 to col. 4, line 10.
Response to Arguments
Applicant’s arguments with respect to claims 21-26 and 28-32 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.
Applicant's arguments with respect to claims 33-40 have been fully considered but they are not persuasive. The amendments to the claims are not sufficient to overcome the previous rejection, as discussed more fully above.
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 KURT FERNSTROM whose telephone number is (571)272-4422. The examiner can normally be reached M-F 10-6.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Peter Vasat can be reached at 571-270-7625. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KURT FERNSTROM/Primary Examiner, Art Unit 3715
August 26, 2025