The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 102
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.
Claims 1 and 23-25 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Matsuura et al. (US 2008/0071301).
Regarding claim 1, Matsuura et al. disclose an expandable mesh (Abstract), comprising: a first coupling element (14); a second coupling element (12) (¶[0013]); and an intermediate portion (10) disposed between the first coupling element and the second coupling element, wherein proximal retraction of the first coupling element relative to the second coupling element causes the intermediate portion to flare out to an enlarged width (paragraph 0049; Figure 5); a first tether (30) is secured to the first coupling element and extends through the second coupling element (¶[0046]; Figure 5), wherein proximal retraction of the first tether causes proximal retraction of the first coupling element relative to the second coupling element (paragraph 0049).
Regarding claim 23, the first and second coupling elements are formed by melting the mesh material (paragraph 0068 of Matsuura et al.).
Regarding claim 24, the intermediate portion comprises a tubular length of the mesh defining a mesh interior (evident from Figure 9), wherein first coupling element (12) is positioned within the mesh interior and the second coupling element is positioned external of the mesh interior (¶[0055]; Figure 9).
Regarding claim 25, wherein the intermediate portion comprises untreated mesh material and the first and second coupling elements comprise mesh material that has been treated to form the first and second coupling elements (paragraph 0068 of Matsuura et al.).
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claims 2-9 are rejected under 35 U.S.C. 103 as being unpatentable over Matsuura et al. (US 2008/0071301) in view of Sander et al. (US 20090281557).
Regarding claim 2, Matsuura et al. disclose that the proximal and distal ends may be formed into rings (paragraph 0013) but does not explicitly state that they may be tubes (i.e. if rings are not inherently regarded as tubes).
Sander et al. disclose providing tubes (14/20) on the proximal and distal ends of a similar occluding device in order to prevent the ends from expanding (paragraph 0041).
It would have been obvious to one of ordinary skill in the art at the time of Applicant’s invention to have provided the tubes of Sander et al. (or to have provided the rings of Matsuura et al. as small tubes in view of Sander et al.) on the proximal and distal ends of the mesh of Matsuura et al. in order to keep the ends from expanding as intended by Matsuura et a.
Regarding claim 3, the first tube, the second tube, and the intermediate portion each originate from the same mesh material (paragraph 0068 of Matsuura et al.).
Regarding claim 4, the intermediate portion comprises untreated mesh material, and wherein the first and second tubes are formed from treating the mesh material in a manner that maintains a tubular shape of the first and second tubes (paragraph 0068 of Matsuura et al.).
Regarding claim 5, at least one of the first tube or the second tube is formed by melting or heat-shrinking the mesh material (paragraph 0068 of Matsuura et al.).
Regarding claim 6, the expandable mesh comprises a delivery state in which the first and second tubes lack an axial overlap, and further comprises an expanded state in which the first and second tubes at least partially axially overlap (paragraph 0052 of Matsuura et al.).
Regarding claim 7, the expandable mesh comprises first and second ends, and further has a first state in which the first end is positioned proximal to the second end, and an everted second state in which the second end is positioned proximal to the first end (paragraph 0052 of Matsuura et al.).
Regarding claim 8, a distal end of the first tube transitions into a first end of the intermediate portion, and a second end of the intermediate portion transitions into a distal end of second tube (paragraph 0052 of Matsuura et al.).
Regarding claim 9, the first and second tubes are dimensioned to be secured together using a friction fit when the first tube is proximally retracted relative to the second tube (paragraph 0052 of Matsuura et al.).
Claims 10 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Matsuura et al. (US 2008/0071301) in view of Sander et al. (US 20090281557), as applied to claim 2 above, and further in view of Kuslich (US 5,0591,93).
Regarding claims 10 and 11, Matsuura et al. disclose that the tubes may be snap-fit together (paragraph 0052) but does not disclose a tapered shape as claimed.
Kuslich, in the same field as Matsuura et al. (col. 1, lines 15-20), discloses a means for snap-fitting an expandable member into an expanded shape utilizing a member having tapered shapes (barbs 44) which lock into a ring (18) having both tapered shapes and a constant diameter (Figures 1 and 7).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have adapted the snap-fit means of Kuslich to the rings/tubes of Matsuura (as modified in view of Sander et al.) as a suitable and effective solution for locking the proximal and distal ends together to create the expanded mesh as intended by Matsuura et al.
Response to Arguments
Applicant's arguments filed October 22nd 2025 have been fully considered but they are not persuasive. Applicant has argued that the tethers of Matsuura et al. are located outside of the mesh as shown in Figure 8. Matsuura et al. also discloses that the tethers can be located within the mesh and pass through the second coupling element (12; ¶[0046]; Figures 3 and 5).
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.
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/THOMAS MCEVOY/Primary Examiner, Art Unit 3771