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 . 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.
Election/Restrictions
Applicant’s election without traverse of Species B in the reply filed on 08/05/2026 is acknowledged. All non-elected claims have been canceled. New claims 25-33, which include the elected species, have been added and examined on the merits.
Priority
The instant application is a continuation-in-part (CIP) of earlier filed U.S. Patent Application 17/086,403. In determining the effective filing date of the claimed invention in a CIP application, any claims not fully supported by the specification and claims of the parent application have an effective filing date equal to the actual filing date of the new application (See MPEP 2152.01). In this case, all claims of the instant application include coils which form a continuous and hollow helix. In the parent application, the coils are solid such that any helix formed is not hollow. Since a hollow helix is absent in the parent application, all of the instant claims are not fully supported by the parent application and are given an effective filing date of 12/05/2023.
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.
Claims 13-17 and 25-33 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claim 13 recites the limitation “to form a thin, narrow, elongate web.” The terms “thin” and “narrow” are relative terms which renders the claim indefinite. The terms are not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. For examination purposes, any web which otherwise meets the claim will be considered to also be “thin” and “narrow” as claimed.
Claim 15 recites the limitations “the normal condition” in line 2 and “the maximum outer diameter” in line 3. There is insufficient antecedent basis for these limitations in the claim. For examination purposes, the claim has been construed as reciting “a a
Claim 26 recites the limitations “the length to which the hose can be stretched” in line 2 and “the length of the hose in the normal condition” in lines 2-3. There is insufficient antecedent basis for these limitations in the claim. For examination purposes, the claim has been construed as reciting “a a
Claims 27 and 28 recite “spring tension that tends to cause the hose to retract.” The phrase “tends to” suggests that the spring tension has an inclination or propensity to cause the hose to retract but leaves open the possibility that the spring tension does not always cause such retraction. Therefore it is unclear whether the spring tension is always present, whether such tension always causes retraction, and how a fixed spring tension based upon the materials selected and their shape could change such that the retraction often occurs while leaving open the possibility that such retraction is absent. For examination purposes, the claims have been construed as reciting “spring tension that s the hose to retract.”
Claims 27 and 28 also recite the limitation “the support spiral” in line 5 of each claim. There is insufficient antecedent basis for this limitation in the claims. For examination purposes, the support spiral has been interpreted as referring to the previously recited helix which is formed from the coils.
Claim 32 recites a spring constant which is provided by “the thermoplastic materials selected for form the hose.” This recitation includes materials of both the coils and the web. The claim goes on to recite that the particular spring constant values are “determined by the thickness of the web and the nature of the material selected to form the web.” This limitation requires that the spring constant is provided only by the web (i.e. not by the coils). These limitations are mutually exclusive and render the claim scope indefinite. For examination purposes, the claims has been construed as reciting particular spring tension values which are determined by the materials and dimensions of both the coils and the web.
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 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 13-17 and 25-33 are rejected under 35 U.S.C. 103 as being unpatentable over Forrester (US 9,308,698) in view of Carlson (US 6,367,510).
Forrester teaches a method of forming a hose (100), the method comprising: helically winding newly extruded thermoplastic coils (110) to form a continuous helix (120); helically winding a newly extruded thermoplastic thin web (130) such that the web extends between adjacent coils of the helix and has edge regions welded to adjacent ones of the coils to form a continuous wall of the hose, wherein the web has a radially outwardly extending, centrally located fold (150) situated between adjacent ones of the coils; and annealing the hose while the coils of the helix are axially compressed to cause the molecules of the thermoplastic materials forming the hose to be relaxed such that stress is substantially absent from the hose when the coils of the helix are closer together (See Figures; col. 2, line 44 to col. 4, line 67).
Forrester does not expressly disclose hollow coils which form a hollow helix as claimed.
Carlson teaches a method of making a tubing product (12), the method comprising helically winding an extruded thermoplastic ribbon (22) and an extruded thermoplastic support bead (34) such that the web extends between adjacent windings of the support bead to form the tubing product (See Figures; col. 5, line 35 to col. 6, line 6). The tubing product (12), ribbon (22), and support bead (34) of Carlson correspond to the hose, web, and coils of Forrester. Carlson teaches that the support bead is hollow and includes a lumen (36) (See Figures; col. 5, lines 64-66; col. 7, line 61 to col. 8, line 25).
It would have been obvious to one of ordinary skill in the art at the time of filing to form the coils of Forrester with a lumen in the manner disclosed by Carlson. The rationale to do so would have been the motivation provided by the teaching of Carlson that to do so would predictably allow pressurized fluid to pass through the lumen in addition to whatever fluid may flow in a central passage (29a) of the tubing product itself (See col. 7, lines 61-66).
Regarding claims 14 and 25, Forrester teaches such features (See claim 2).
Regarding claim 15, Forrester teaches folds extending beyond an outer diameter of the helix in the normal condition (See Figs. 2 and 4 and their descriptions).
Regarding claims 16-17, Carlson teaches that the lumen is provided to allow passage of fluid in addition to whatever fluid may be present in the central passage, as detailed above. The central passage and lumen read on the instantly claimed primary passage and secondary passage, respectively. While Carlson does not expressly disclose the nature of the fluid in the secondary passage, one of ordinary skill in the art would readily understand that gases in breathing tubing would be temperature regulation fluids, therapeutic agents, or exhaled fluids from a patient. Examiner is taking official notice that these fluids are well known and ubiquitous in the art such that one of ordinary skill in the art would understand the pressurized fluid broadly disclosed by Carlson to include one or more of these fluids. One of ordinary skill in the art would also be readily able to determine whether the fluids should flow in the same direction or opposing directions based upon the nature of the fluids. For example, the fluids would flow in the same direction if both fluids are therapeutic agents which are being delivered to a patient, while the fluids would flow in opposing directions if one passage carries a therapeutic agent to be delivered to a patient while the other passage carries exhaled gases from a patient.
Regarding claim 26, Forrester teaches the instant claimed stretch ratio (See claim 11).
Regarding claims 27 and 28, Forrester teaches spring tensions having the instantly claimed features (See claims 22 and 27; col. 5, lines 57-65).
Regarding claim 29, Forrester teaches that the coils and web may be formed from the same thermoplastic material (See col. 3, lines 58-62, claim 7).
Regarding claim 30, Forrester teaches the claimed thermoplastic materials for forming the coils and/or the web (See col. 2, line 61 to col. 3, line 8; claim 8).
Regarding claim 31, Forrester teaches that the thermoplastic material forming the coils may have a higher modulus of elasticity than the thermoplastic material forming the web (See col. 3, line 63 to col. 4, line 8).
Regarding claim 32, Forrester teaches the instantly claimed spring constant values (See claims 12 and 25).
Regarding claim 33, a cutting step is implicit in the combination of Forrester and Carlson. Both of these references form a hose in a continuous manner by helically winding extruded materials. In such a production method, the resulting hose is produced continuously in an indefinite length. For such a hose to then be used in medical applications, the hose must be cut to discrete lengths suitable for a particular application. Therefore the instantly claimed cutting step would have been obvious to one of ordinary skill in the art at the time of filing based upon the teachings of Forrester and Carlson.
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 13-17 and 25-33 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-27 of U.S. Patent No. 9,308,698 (Forrester) in view of Carlson (US 6,367,510). The limitations of the instant claims are present in the claims of Forrester, with the exception of the hollow coils. Carlson teaches such hollow coils, and their inclusion in the method of Forrester would have been obvious for the same reasons detailed above. Any limitations present in the instant claims which are absent in the claims of Forrester would have been obvious to one of ordinary skill in the art at the time of filing based upon the teachings of Carlson, as detailed above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CARSON GROSS whose telephone number is (571)270-7657. The examiner can normally be reached Monday-Friday 9am-5pm Eastern.
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/CARSON GROSS/Primary Examiner, Art Unit 1746
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