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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 01/02/2026 has been entered.
Claims 1 , 4, 8, 13 and 14 have been amended. Claims 2 and 3 have been cancelled. Claims 1, 4-5, 8-14, and 19-22 are currently pending in the application.
Response to Arguments
Applicant’s arguments, see pg. 8, filed 01/02/2026, with respect to the rejections of claims 2-3 under 35 U.S.C. 112(b) and the rejections of claim 3 under 35 U.S.C. 112(d) have been fully considered and are persuasive. Therefore, the rejections have been withdrawn. However, Applicant’s amendments did not the address the rejections of claims 4 and 5 under 35 U.S.C. 112(b). Therefore, the rejections are maintained.
The amendments to the claims 1, 13 and 14 overcome the rejections of the claims under 35 U.S.C. 103 as being unpatentable over Ray (US 6,283,984) in view of Britland (US 2020/0078035). Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Goerlitz-Jessen (US 2021/0393283). In light of the new rejection, Applicant’s arguments, see pg. 8-14, filed 01/02/2026, are considered moot.
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 4-5 and 21-22 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 5 each recite “the actuation input” multiple times throughout each claim, which renders their scope indefinite. It is unclear if each recitation of “the actuation input” refers to the actuation input of the first actuation interface or the actuation input of the second actuation interface. Although claim 1 introduces a separate “actuation input” for each of the first and second actuation interfaces, for examination purposes, “the actuation input” of each interface has been interpreted as the same actuation input based on the specification and figures.
If Applicant agrees with the Examiner’s interpretation, it is recommended that Applicant amends claim 1 so that it is clear that the first and second actuation interfaces receive the same actuation input.
Claim 22 recites the limitation “wherein the extraction member defines a length, measured in a direction parallel to the first and second longitudinal sides of the implant, that is shorter than a length of the first arm and the second arm” which renders the scope of the claim indefinite. The implant is not a claimed part of the device therefore, it is unclear how one could ascertain a direction that is parallel to the implant by which to measure the length of the extraction member relative to the first and second arms. For examination purposes, this limitation has been interpreted as requiring the extraction member to be shorter than the first and second arms along the longitudinal axis of the device based on the specification and figures.
Claim 22 is similarly rejected by virtue of its dependency from claim 21.
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.
Claims 1, 4-5, 8-14 and 19-22 are rejected under 35 U.S.C. 103 as being unpatentable over Goerlitz-Jessen (US 2021/0393283), in view of Ray (US 6,283,984) and further in view of Britland (US 2020/0078035).
Regarding claims 1, 13, 14 and 19, Goerlitz-Jessen discloses an implant removal device (100, see Fig. 1) comprising: a body comprising a biasing member (the proximal end of the device can be considered a body); a first arm (110) supported at the body, the first arm configured to move relative to the body between a first arm retracted position and a first arm skin gripping position (the prong 110 is configured to move from a retracted position to a gripping position when it is moved closer to prong 120, see [0048]); a second arm (120) supported at the body, the second arm configured to move relative to the body between a second arm retracted position and a second arm skin gripping position (see [0048]); a first actuation interface supported at the body and configured to receive an actuation input to cause the first arm to move between the first arm retracted position and the first arm skin gripping position; a second actuation interface supported at the body and configured to receive an actuation input to cause the second arm to move between the second arm retracted position and the second arm skin gripping position (each of the prongs 110, 120 have an engagement portion 123, 113 configured to receive actuation input from a user to move the prongs between a retracted position and an approximated gripping position, see [0052]); and an extraction member (130) comprising a proximal extraction member end (131) supported at the body and a distal extraction member end (132) located between the first arm and the second arm, wherein the first arm and the second arm each define an arm length that extends beyond the distal extraction member end (the insertion lengths of prongs 110, 120 can be longer than the insertion length of prong 130, see [0053]), wherein the body of the device comprises a biasing member, the biasing member is configured to impart a biasing force at each of the first arm and the second arm to bias the first arm to the first arm retracted position and the second arm to the second arm retracted position (the body of the device comprises a biasing member since it biases the prongs 110 and 120 to the retracted position shown in Fig. 3 unless operated on by some external force, see also Fig. 10A-11D), and wherein the implant removal device is a single, integral piece (the device operates as a singular unit and is therefore considered integral). Further regarding claim 13, Goerlitz-Jessen discloses that the extraction member is located between the first arm and the second arm (see Fig. 1) and wherein the extraction member is positioned below the first arm and the second arm and the extraction member defines a bottom-most surface of the implant removal device (see Fig. 4).
Goerlitz-Jessen fails to teach the first and second actuation interfaces each comprise a flange that extends out from the arms in a direction away from the extraction member. Goerlitz-Jessen further fails to teach the biasing member comprising a C-shaped element having a curved body.
Ray, in the same field of art, teaches a similar device (10, see Fig. 1) comprising first and second actuation interfaces (32,34) each comprising a flange that extends out from first and second arms (22, 24) in a direction away from the body of an extraction member (12). The flanges facilitate manipulation of the device by a user (see col. 4, lines 40-50).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the device of Goerlitz-Jessen so that the first and second actuation interfaces comprise flanges as taught by Ray since doing so would facilitate manipulation of the device by a user.
The combination of Goerlitz-Jessen and Ray fails to teach the biasing member comprising a C-shaped element having a curved body.
Britland, in the same field of art, teaches a biasing member comprising a C-shaped element (hinge 55, see Fig. 28) having a curved body for biasing two arms of a device into a retracted position (see [0081]).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to substitute the biasing member in the device of Goerlitz-Jessen with a biasing member in the form of a C-shaped element, as taught by Britland, since C-shaped elements were known in the art and the modification would have yielded nothing more than predictable results, namely, the C-shaped element of Britland in the device of Ray would have provided a biasing force to the arms. KSR International Co. v. Teleflex Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007).
The combination of Goerlitz-Jessen, Ray and Britland teaches “a first element end at one end of the curved body, and a second element end at another opposite end of the curved body, and wherein the first flange extends out from the first arm at the first element end and the second flange extends out from the second arm at the second element end” since the ends of the C-shaped member can be considered first and second elements and would be connected to the arms of the device of Goerlitz-Jessen and the flanges of Ray would supported by and extend out of the arms.
Regarding claims 4 and 20, Goerlitz-Jessen further discloses wherein the first arm is configured to be maintained at the first arm skin gripping position while the actuation input is maintained at the first actuation interface and the first arm is configured to move, as a result of the bias, from the first arm skin gripping position to the first arm retracted position when the actuation input is removed from the first actuation interface, and wherein the second arm is configured to be maintained at the second arm skin gripping position while the actuation input is maintained at the second actuation interface and the second arm is configured to move, as a result of the bias, from the second arm skin gripping position to the second arm retracted position when the actuation input is removed from the second actuation interface (prongs 110,120 remain in the retracted, separated position unless operated on by an external force applied to the engagement portions 123, 113 of the device, see [0052] and Fig. 10A-11D).
Regarding claim 5, Ray further discloses wherein the first flange is configured to receive the actuation input via at least a first finger of a first hand at the first flange, and wherein the flange is configured to receive the actuation input via at least a second finger of the first hand at the second flange (see col. 4, lines 51-67).
Regarding claim 8, Goerlitz-Jessen further discloses the device further comprising: a first skin interfacing extension at a side of the first arm opposite the first actuation interface , the first skin interfacing extension extending out from the first arm toward the second arm; and a second skin interfacing extension at a side of the second arm opposite the second actuation interface, the second skin interfacing extension extending out from the second arm toward the first arm (each of the prongs 110, 120 of Goerlitz-Jessen include respective projections 124,114 at their distal ends opposite the engagement portions 123, 113 which are more proximal, see Fig. 1 of Goerlitz-Jessen).
Regarding claim 9, Goerlitz-Jessen further discloses wherein the first skin interfacing extension is configured to serve as a contact point, at the first arm, with a skin surface at which the implant removal device is positioned so as to contact and raise up the skin surface adjacent the first arm, and wherein the second skin interfacing extension is configured to serve as a contact point, at the second arm, with the skin surface at which the implant removal device is positioned so as to contact and raise up the skin surface adjacent the second arm (the projections 124, 114 on the prongs 110, 120 are configured to grasp and raise up tissue, see Fig. 11A-11D and [0063]).
Regarding claims 10-12, the language “wherein when the implant removal device is positioned at a skin surface, the extraction member is configured to contact the skin surface between the first arm and the second arm and adjacent a first end of an implant that extends between a first longitudinal side of the implant and a second longitudinal side of the implant and wherein, when the implant removal device is positioned at the skin surface and the first arm is at the first arm skin gripping position, the first arm is configured to contact the skin surface adjacent the first longitudinal side of the implant, and wherein, when the implant removal device is positioned at the skin surface and the second arm is at the second arm skin gripping position, the second arm is configured to contact the skin surface adjacent the second longitudinal side of the implant, wherein the first arm is configured, when moved from the first arm retracted position to the first arm skin gripping position, to contact and raise upward the skin surface adjacent the first longitudinal side of the implant, and wherein the second arm is configured, when moved from the second arm retracted position to the second arm skin gripping position, to contact and raise upward the skin surface adjacent the second longitudinal side of the implant and, wherein, as the extraction member is moved toward an incision at the skin surface and with the first arm in the first arm skin gripping position and the second arm in the second arm skin gripping position, the extraction member is configured to urge the implant toward the incision” constitutes functional claim language, indicating that the claimed device need only be capable of being used in such a manner. Furthermore, the claim is an apparatus claim, and is to be limited by structural limitations.
The Office submits that the device of Goerlitz-Jessen, Ray, and Britland meets the structural limitations of the claim, and the device of Goerlitz-Jessen, Ray, and Britland is capable of performing the claimed functions depending on the size, location and type of implant. The extension members and central member of the device of Ray are all capable of contacting skin, simultaneously or individually, when the device is positioned at a skin surface, depending on the orientation of the device, the location of the skin and patient body size. The prongs of Goerlitz-Jessen are capable of gripping and raising up skin tissue (see Fig. 11A-11D and [0063]) on either side of an implant and the central prong can be used to urge an implant toward an incision, depending on the size, location and type of implant.
Regarding claim 21, Goerlitz-Jessen further discloses wherein the extraction member is positioned below the first arm and the second arm and the extraction member defines a bottom-most surface of the implant removal device (see Fig. 4), wherein the extraction member defines a length, measured in a direction parallel to the first and second longitudinal sides of the implant, that is shorter than a length of the first arm and the second arm (as discussed above with respect to the rejection of the claim under 35 U.S.C. 112, this limitation has been interpreted as requiring the extraction member to define a length shorter than the length of the first and second arm along the longitudinal direction of the device and Goerlitz-Jessen discloses that the middle prong 130 can be shorter than the prongs 110, 120, see [0053]).
Regarding claim 22, Goerlitz-Jessen further discloses wherein a top-most surface of the implant removal device (the top surface being the top-most surface of the prongs 110, 120 shown in Fig. 4), which is opposite the bottom-most surface, defines between the first arm and the second arm an opening over the extraction member (the top-most surface of the prongs define and opening between them which extends over the middle prong 130 since prong 130 sits below prongs 110 and 120, see Fig. 3-4).
Conclusion
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/SERENITY A MILLER/Examiner, Art Unit 3771
/ELIZABETH HOUSTON/Supervisory Patent Examiner, Art Unit 3771