DETAILED ACTION
Response to Arguments
Applicant's arguments filed 01/06/2026 have been fully considered but they are not persuasive.
The applicant argues that the prior art does not teach an expander shell. This argument is moot because the expander shell is referenced as line 113 which is part of nonelected species 4. Thus, claim 1 cannot be examined and is withdrawn together with its dependent claims.
Election/Restrictions
Applicant’s election without traverse of Species 7, Figures 7A-12, and Claims 1-19 in the reply filed on 01/06/2026 is acknowledged.
Claim 1-13 and 18-19 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 01/06/2026. Specifically, claim 1 includes an expander shell in the claim language. This limitation is only present in nonelected species 4 and thus cannot be examined with elected species 7. Claims 18-19 include a suspension structure which appears to be structure 117 in the disclosure and is only shown in nonelected species 4, and thus cannot be examined with elected species 7.
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.
Claim 14 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 6 of U.S. Patent No. 10709851; claims 6 and 17 of Patent No. 11253657; claim 1 of U.S. Patent No. 12011578. Although the claims at issue are not identical, they are not patentably distinct from each other because the claimed limitations in claim 14 of the application are included in the patented claims.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 14-17 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
In re claim 14, it is not clear where in the disclosure of the elected species a second target magnet is described. Only one target magnet, 530, appears to be present. The claim will be examined as best understood.
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.
Claims 14-17 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
In re claim 14, it appears based on the disclosure, that there is only one target magnet in the elected species. For this reason, a second target magnet is considered vague and indefinite. It is not clear what structure is being claimed with this claim language. The claim will be examined as best understood.
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) 14-17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Legassey et al. (US 2015/0238118) in view of Ginsberg (US 7608038) and Tallarida et al. (US 9764124).
In re claim 14, Legassey, in figures 1-10b, discloses a locator assembly comprising: a locator base (101); a first locator magnet (102) configured to be attracted to a first target magnet (103) of an implant; a second locator magnet (102) configured to be attracted to a second target magnet (103) of the implant, wherein the first and the second magnets are aligned. Legassey does not show the apertures/ports. Ginsberg however, in figures 1-12, shows that it is known in the art to have apertures/ports in a similar device (26, 41) configured to be aligned. Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have used ports as taught by Ginsberg in the device of Legassey in order to allow for a needle insertion functionality. Tallarida, in figures 1-20 teaches that it is known in the art to have multiple infusion ports (106) in a similar device. Therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have arranged two or more ports as taught by Tallarida in the device of Legassey/Ginsberg to allow for improved functionality in multiple use scenarios (as discussed by Tallarida).
In re claim 15, Legassey, in figures 1-10b, discloses that the locator assembly includes a locator housing around the first locator magnet and the second locator magnet (this is disclosed in several figures, including figures 4 and 3B).
In re claim 16, Legassey, in figures 1-10b, discloses that the first locator magnet and the second locator magnet are positioned in the locator assembly with reversed magnetic poles (as seen in figures 2 and 4).
In re claim 17, Legassey/Ginsberg/Tallarida, discloses the claimed device except for positioning of the apertures with respect to the magnets in the claimed positions. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have positioned the magnets and apertures in the claimed positions (or any other working positions), since it has been held that rearranging parts of an invention involves only routine skill in the art. In re Japikse, 86 USPQ 70.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Alexander Talpalatski whose telephone number is (571)270-3908. The examiner can normally be reached 10 AM - 6 PM PT.
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, Shawki Ismail can be reached at 5712723985. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Alexander Talpalatski/Primary Examiner, Art Unit 2837
Prosecution Insights