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 .
Drawings
Figure 1 should be designated by a legend such as --Prior Art-- because only that which is old is illustrated. See MPEP § 608.02(g). Corrected drawings in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. The replacement sheet(s) should be labeled “Replacement Sheet” in the page header (as per 37 CFR 1.84(c)) so as not to obstruct any portion of the drawing figures. If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Section 33(a) of the America Invents Act reads as follows:
Notwithstanding any other provision of law, no patent may issue on a claim directed to or encompassing a human organism.
Claims 1, 4, and their dependent claims are rejected under 35 U.S.C. 101 and section 33(a) of the America Invents Act as being directed to or encompassing a human organism. See also Animals - Patentability, 1077 Off. Gaz. Pat. Office 24 (April 21, 1987) (indicating that human organisms are excluded from the scope of patentable subject matter under 35 U.S.C. 101). Claims 1 and 4 recite that the jaw penetrates into the subcutaneous tissue to be fixed. As presently worded, the claims positively recite a part of the human body. It is recommended that the Applicant use functional language such as “configured to” or “configured for” to correct the issue.
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 9 is 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 9 states that the radius of the cover cylinder and the elastic thread cover tube is equal to or smaller than a radius of the lifting thread. While this feature is described in the specification, it is unclear how the radius of the cover cylinder is equal to or smaller than the radius of the lifting thread, when the cover cylinder surrounds the perimeter of the lifting thread and the variable portion. Appropriate correction and/or clarification is required.
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 1-6 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-6 of copending Application No. 17/762,050 Although the claims at issue are not identical, they are not patentably distinct from each other because all of the structural elements and characteristics are disclosed by both sets of claims. Regarding claims 1 and 2, the first and second region of the present application correspond to the first and second region of the ‘050 application; the fixing grooves and jaw of the present application correspond to the first fixing groove and jaw of the ‘050 application; the variable portion of the present application corresponds to the variable parts of the ‘050 application; and the elastic grooves of the present application correspond to the flexible grooves of the ‘050 application. Claim 3 of the present application corresponds to claim 3 of the ‘050 application. Claim 4 of the present application corresponds to claim 4 of the ‘050 application. Claim 5 of the present application corresponds to claim 5 of the ‘050 application. Claim 6 of the present application corresponds to claim 6 of the ‘050 application. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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.
Claim(s) 1-6 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Jang (Pub. No.: US 2018/0317911 A1).
Jang discloses the following regarding claim 1: a variable lifting thread for pain reduction, which is a medical thread for a lifting procedure, wherein a medical thread (e.g., Figs. 3-13) is formed to be partitioned in a length direction into a first region (please see, for example, annotated Figure A, below) and a second region (Figure A), wherein the first region includes a fixed portion (barbs in the first region) with fixing grooves (Figure A) having an acute angled sloping jaw (Figure A) formed on the outer surface of the medical thread (Figure A; Figs. 3-13) to penetrate into the subcutaneous tissue to be fixed (paras. 0004-0006, 0053-0055), wherein the second region includes a variable portion with elastic grooves (Figure A) formed alternately (zig-zag) on both sides of the outer circumference of the medical thread to have structural elasticity (Figure A; Figs. 3-13; paras. 0003, 0060), and wherein when an external force acts, a connection portion (central portion between elastic grooves) between the elastic grooves of the variable portion stretches to provide elasticity to the medical thread (paras. 0003, 0060).
Please note that a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
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Figure A.
Jang discloses the following regarding claim 2: the variable lifting thread according to claim 1, wherein between the variable portions of the second region, fixing grooves (interpreted to be the same elements as that recited in claim 1) with the acute angled sloping jaws are formed to penetrate into the subcutaneous tissue to be fixed (Figure A; Figs. 3-13; paras. 0004-0006, 0053-0055).
Jang discloses the following regarding claim 3: the variable lifting thread according to claim 2, wherein the fixing groove includes an inclined surface (Figure A) and the acute angled sloping jaw in an asymmetric structure (Figure A).
Jang discloses the following regarding claim 4: the variable lifting thread according to claim 3, wherein concavely curved grooves are formed behind acute angled sloping jaw of the fixing groove to be spaced apart at a predetermined interval (Figure A), and wherein when the acute angled sloping jaw penetrates into the subcutaneous tissue, the curved grooves are curved and rotated, so that the acute angled sloping jaw further protrudes in an outer circumferential direction of the medical thread to penetrate deeper into the subcutaneous tissue and become more firmly fixed (paras. 0004-0006, 0053-0055, where due to the shape and position of the jaw and the curved grooves, they are fully capable of being rotated with the thread to increase the penetration of the elements).
Jang discloses the following regarding claim 5: the variable lifting thread according to claim 1, wherein the variable portion is formed in a spring shape by being formed spirally in the length direction of the medical thread (Figs. 3-13).
Jang discloses the following regarding claim 6: the variable lifting thread according to claim 1, wherein a depth (h) of the elastic groove is greater than a straight distance (H) from the center of the medical thread to the outer circumferential surface (Figure A). Please also note that the optimization of parameters is a routine practice that would be obvious for a person of ordinary skill in the art to employ. It would have been customary for one of ordinary skill to determine the optimal dimensions of the thread needed to achieve the desired results and properly fit the implantation site. Thus, absent some demonstration of unexpected results from the claimed parameters, the optimization of the dimensions of the thread, would have been obvious at the time of applicant's invention in view of Jang. It is well-established that merely selecting proportions and ranges is not patentable absent a showing of criticality. In re Becket, 33 USPQ 33; In re Russell, 169 USPQ 426.
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(s) 7-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Jang in view of Park (KR 101822640 B1).
Jang discloses the limitations of the claimed invention, as described above. However, it does not explicitly recite a cover cylinder is formed on the outer circumference of the variable portion; and the cover cylinder is formed into a tension spring-type elastic thread cover tube by being wound with an elastic thread. Park teaches that it is well known in the art that a medical thread (400) further comprises a cover cylinder (300) is formed on the outer circumference of the variable portion; and the cover cylinder is formed into a tension spring-type elastic thread cover tube by being wound with an elastic thread (Figs. 6-8; pgs. 5-6 of the provided translation), for the purpose of providing additional structural support to the device. It would have been obvious to one having ordinary skill in the art to modify the device of Jang to comprise a cover cylinder, as taught by Park, in order to provide additional structural support to the device. Such a modification would be made with a reasonable expectation of success.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Ann Hu whose telephone number is (571) 272-6652. The examiner can normally be reached on Monday-Friday (9:00 am-5:30 pm EST).
If attempts to reach the examiner by telephone are unsuccessful, please contact the examiner’s supervisor, Jerrah Edwards, at (408) 918-7557. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300.
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/ANN HU/Primary Examiner, Art Unit 3774