DETAILED ACTION
Election/Restrictions
Applicant’s election without traverse of Group 3, claims 14-21 in the reply filed on 12/10/2025 is acknowledged.
Claims 1-13 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 12/10/2025.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
Specification
The abstract of the disclosure is objected to because it contains legal phraseology such as “comprise” in lines 2,4,9. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of pre-AIA 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 –
(e) the invention was described in (1) an application for patent, published under section 122(b), by another filed in the United States before the invention by the applicant for patent or (2) a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent, except that an international application filed under the treaty defined in section 351(a) shall have the effects for purposes of this subsection of an application filed in the United States only if the international application designated the United States and was published under Article 21(2) of such treaty in the English language.
Claim(s) 14-21 is/are rejected under pre-AIA 35 U.S.C. 102(e) as being anticipated by Benichou et al U.S 2011/0218619.
Claim 14: Benichou et al disclose a method comprising: expanding a prosthetic heart valve 2400 at an implantation site, wherein: the prosthetic heart valve comprises a frame at 2402 that includes a first portion coupled to a second portion; transitioning the frame from a non-everted configuration (fig 25 shows the leaflet 2404 and rods 2406 can be flipped i.e., inverted configuration, see paragraph 125) to an everted configuration (fig. 24 shows hinges can allow for inversion or eversion configuration of rods 2406 and leaflets 2404 without deformation of any metallic components, see paragraph 125) by everting the second portion relative to the first portion; and securing the prosthetic heart valve at the implantation site.
Claims 15-17: Benichou et al disclose wherein everting the second portion relative to the first portion comprises moving an everter (item 1106, fig. 12 is similar structure as applicant’s item 485, in applicant’s fig. 5b) from a first position to a second position relative to the prosthetic heart valve 2400., wherein: the first position is distally adjacent a distal end of the prosthetic heart valve, and the second position is proximally disposed relative to a proximal end of the prosthetic heart valve., wherein: the prosthetic heart valve defines a valve orifice (at the area 1116, fig. 12), and the everter 1106 is moved through the valve orifice from the first position to the second position.
Claims 18-19: Benichou et al disclose the first portion and the second portion are indirectly coupled by a film (it is noted that a flexible sleeve or membrane 1110, fig. 13) extending between the first portion and the second portion, and the film defines a fold region (see applicant’s claim 27) disposed between the first portion and the second portion., wherein everting the second portion relative to the first portion comprises rotating the second portion about the fold region (see applicant’s claim 27) relative to the first portion.
Claims 20-21: Benichou et al disclose wherein everting the second portion (see fig. 24) relative to the first portion comprises moving the second portion in a proximal direction relative to the first portion., wherein the first portion extends coaxially, adjacent to, and spaced apart from the second potion when the frame is in the non-everted (see fig. 25) configuration.
Conclusion
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/VI X NGUYEN/Primary Examiner, Art Unit 3771