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 .
DETAILED ACTION
Acknowledgement is made to Applicant’s response filed 03/31/2026.
Claims 1-14 are pending.
Claims 15-21 are cancelled.
Claims 4, 7, 9-12, and 14 are withdrawn as being drawn to non-elected species.
Claims 1-3, 5, 6, 8, and 13 are currently under consideration to the extent that they read upon Applicant’s elected species.
It is noted that in the course of searching Applicant’s elected species, the Examiner found art that reads upon the impregnating liquid being ethyl oleate and the device or implement being a stent. For the sake of compact prosecution, the Examiner has extended the species election to include said species and art is being applied herein.
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 specifications hall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-3, 5, 6, 8, and 13 (all claims currently under
consideration) 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
pre-AIA the applicant regards as the invention.
Regarding claims 1, 2, 5, 6, and 8 directly recite phrases or ranges within
parentheses render the claims indefinite because it is unclear whether the limitation(s)
following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claims 3 and 13 are rejected for depending from indefinite claims without resolving the indefiniteness.
Claim Rejections - 35 USC § 102
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 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.
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, 6, 8, and 13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Desai (US 2007/0282247) (IDS Reference).
Desai teaches a medical device which can be a nanotube comprising structures on the surface that control nucleation (see entire document, for instance Abstract, [0007], and [0351]). Said nanotubes have emulsions that can be impregnated onto said nanotubes (see entire document, for instance, [0221] and [0227]). Said impregnated composition can include antibacterial agents and pharmaceutically acceptable carriers (see entire document, for instance, [0254]). Said structures are taught as including gold, wherein said gold can additionally comprise metals such as titanium (see entire document, for instance, [0352]-[0354]). The presence of components such as nanoparticles of antibacterial agents in any desired density (such as Ag and/or Zn – see entire document, for instance, [0254]) would reduce the evaporation of the impregnated liquid. The medical device is taught as being a stent (see entire document, for instance, [0124]).
It is noted that MPEP 2131.02 states: “when the species is clearly named, the species claim is anticipated no matter how many other species are additionally named. Ex parte A, 17 USPQ2d 1716 (Bd. Pat. App. & Inter. 1990) (The claimed compound was named in a reference which also disclosed 45 other compounds. The Board held that the comprehensiveness of the listing did not negate the fact that the compound claimed was specifically taught)”.
Claim Rejections - 35 USC § 103
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 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.
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 of this title, 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-3, 5, 6, 8, and 13 (all claims currently under consideration) are rejected under 35 U.S.C. 103 as being unpatentable over Desai (US 2007/0282247) in view of Coupland et al (WO 2001/38288) (both IDS References).
Desai teaches a medical device which can be a nanotube comprising structures on the surface that control nucleation (see entire document, for instance Abstract, [0007], and [0351]). Said nanotubes have emulsions that can be impregnated onto said nanotubes (see entire document, for instance, [0221] and [0227]). Said impregnated composition can include antibacterial agents and pharmaceutically acceptable carriers (see entire document, for instance, [0254]). Said structures are taught as including gold, wherein said gold can additionally comprise metals such as titanium (see entire document, for instance, [0352]-[0354]). The presence of components such as nanoparticles of antibacterial agents in any desired density (such as Ag and/or Zn – see entire document, for instance, [0254]) would reduce the evaporation of the impregnated liquid. The structures are taught as having an average length of 10nm to 500 microns, and are present from about 1 per micron to about 2000 per micron (see entire document, for instance, [0030]).
Desai, while teaching the presence of pharmaceutically acceptable carriers does not directly name the species ethyl oleate or vegetable oil. Further, while teaching ranges that overlap the instantly claimed ranges, Desai does not directly teach the exact instantly claimed ranges.
Coupland teaches that ethyl oleate is a known and useful pharmaceutically acceptable carrier (see entire document, for instance, claim 14).
It would have been obvious to one of ordinary skill in the art at the time the invention was made to utilize ethyl oleate as the carrier of Desai. One would have been motivated to do so since Desai teaches that any pharmaceutically acceptable carrier can be utilized and Coupland teaches that ethyl oleate is a useful pharmaceutically acceptable carrier.
Conclusion
No claims allowed. All claims rejected. No claims objected.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TREVOR M LOVE whose telephone number is (571)270-5259. The examiner can normally be reached M-F typically 6:30-3.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Bethany Barham can be reached at 5712726175. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/TREVOR LOVE/Primary Examiner, Art Unit 1611
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