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 .
Information Disclosure Statement
The information disclosure statement(s) (IDS) submitted on 11/14/2024, 5/1/2026 and 5/14/2026 have been received and made of record. Note the acknowledged form PTO-1449 enclosed herewith.
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.
Currently no claims are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Objections
Claim 3-15 are objected to because of the following informalities:
In claim 3, there are two instances of rough grammar at “an unidirectional composite tape” in lines 1-2 and “an unidirectional tape” in line 3 (wherein minor amendments such as “a unidirectional composite tape” and “a unidirectional tape” will moot these objections). Appropriate correction is required.
Claims 4-15 are objected to under 37 CFR 1.75(c) as being in improper form because a multiple dependent claim cannot depend from any other multiple dependent claims. See MPEP § 608.01(n). Accordingly, these claims have not been further treated on the merits. Appropriate correction is required.
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.
Claims 1-15 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.
Regarding claim 1 (and thereby dependent claims 2-5), the phrases "preferably" (see lines 3-4), “more preferably” (see line 4), and “even more preferably” (see lines 4-5) render the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. Appropriate correction is required.
Regarding claim 2 (and thereby dependent claims 3-5), the phrases "preferably" (see lines 2 and 4) and “more preferably” (see lines 2-3) render the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. Appropriate correction is required.
Regarding claim 3 (and thereby dependent claims 4-5), the phrase "an unidirectional tape" in line 3 renders the claim(s) indefinite because “an unidirectional composite tape“ was already introduced in lines 1-2 of claim 3, thereby rendering the scope of the claim(s) unascertainable. It is unclear whether applicant intended to refer back to the unidirectional composite tape of lines 1-2 or introduce a new, additional unidirectional tape. To move prosecution forward, the examiner assumed applicant intended to refer back to the unidirectional composite tape of lines 1-2. Appropriate correction is required.
Claim 4 (and thereby dependent claim 5) recites the limitation "the matrix polymer" in line 2 (i.e., “a polymer matrix” was introduced in claim 1, so this appears to be a minor typographical error). There is insufficient antecedent basis for this limitation in the claim. Appropriate correction is required.
Claim 6 (and thereby dependent claims 7-15) recites the limitation "the matrix polymer" in lines 3, 6 and 7 (i.e., “a polymer matrix” was introduced in claim 1, so this appears to be a minor typographical error). There is an apparent inconsistency in the antecedent basis for these claim limitations (i.e., it is recommended to maintain the same limitation nomenclature throughout the claims to eliminate any ambiguity or confusion). Appropriate correction is required.
Regarding claim 7 (and thereby dependent claims 8-15), the phrase "preferably" (see line 1) renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. Appropriate correction is required.
Claim 9 (and thereby dependent claims 10-15) recites the limitation "the matrix polymer" in line 1 (i.e., “a polymer matrix” was introduced in claim 1 (via the dependency of claim 6), so this appears to be a minor typographical error). There is an apparent inconsistency in the antecedent basis for these claim limitations (i.e., it is recommended to maintain the same limitation nomenclature throughout the claims to eliminate any ambiguity or confusion). Appropriate correction is required.
Claim 10 (and thereby dependent claims 11-15) recites the limitation "matrix polymer" in lines 4-5 and 7 (i.e., “a polymer matrix” was introduced in claim 1 (via the dependency of claim 6), so this appears to be a minor typographical error). There is an apparent inconsistency in the antecedent basis for these claim limitations (i.e., it is recommended to maintain the same limitation nomenclature throughout the claims to eliminate any ambiguity or confusion). Appropriate correction is required.
Regarding claim 10 (and thereby dependent claims 11-15), the phrase "optionally" (see line 6) renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. Appropriate correction is required.
Claim 13 (and thereby dependent claims 14-15) recites the limitation "the matrix polymer" in lines 2 and 3 (i.e., “a polymer matrix” was introduced in claim 1 (via the dependency of claim 6), so this appears to be a minor typographical error). There is insufficient antecedent basis for this limitation in the claim. Appropriate correction is required.
Regarding claim 13 (and thereby dependent claims 14-15), the phrases "preferably" (see line 3) and “more preferably” (see lines 3-4) render the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. Appropriate correction is required.
Claim 14 (and thereby dependent claim 15) recites the limitation "matrix polymer" in line 2 (i.e., “a polymer matrix” was introduced in claim 1 (via the dependency of claim 6), so this appears to be a minor typographical error). There is insufficient antecedent basis for this limitation in the claim. Appropriate correction is required.
Regarding claim 14 (and thereby dependent claim 15), the phrase “more preferably” (see lines 2-3) renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. Appropriate correction is required.
Regarding claim 15, the phrase "preferably" (see line 2) renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. Appropriate correction is required.
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 (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.
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) 1-3 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Preiss-Bloom et al. (US 2019/0282736).
Preiss-Bloom discloses a biocompatible composite comprising the following claim limitations:
(claim 1) Composite, comprising a plurality of glass fibers ([0008]; [0136]-[0138]; [0144]-[0154]; [0181]-[0199]) in a polymer matrix ([0008]; [0011]; [0053]-[0054]; [0109]; [0137]-[0141]; [0148]; [0178]-[0179]; [0199]; [0269]), compatible with the plurality of glass fibers, wherein the glass fibers and the polymer matrix are biocompatible, resorbable and preferably bioactive ([0060]; [0269]; [0137]; [0144]-[0147]; biocompatible and bioresorbable glass fibers and polymer matrix expressly disclosed), wherein the composite has a monomer content lower than 1 wt.%, preferably lower than 0.5 wt.%, more preferably lower than 0.2 wt.%, even more preferably lower than 0.1 wt.%, calculated on the polymer matrix (see claim 105; [0242]-[0243]);
(claim 2) wherein the composite has a Yellowness Index (YI) measured according to ASTM E313 lower than 30, preferably lower than 20, more preferably lower than 15, most preferably lower than 10, and/or wherein the composite is translucent and preferably transparent, and preferably radiopaque ([0133]; [0141]; [0177]-[0178]; composites comprising generally transparent components having very low Yellowness Indexes such as bioglass and poly-DL-lactide (PDLLA) are expressly disclosed); and
(claim 3) which is in the form of an unidirectional composite tape, or in the form of a strand, rod, pellet or granule, in particular in the form of an unidirectional tape ([0054]; [0140]; [0161]; [0356]; unidirectional composite tape expressly disclosed).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure, see:
Moimas et al. (US 2008/0066495);
Lehtonen et al. (US 2012/0040015); and
Lehtonen et al. (US 2014/0220338).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Robert Lynch whose telephone number is (571)270-3952. The examiner can normally be reached on Monday-Friday (9:00AM-6:00PM, with alternate Fridays off).
If attempts to reach the examiner by telephone are unsuccessful, please contact the examiner’s supervisor, Elizabeth Houston, at (571) 272-7134. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ROBERT A LYNCH/Primary Examiner, Art Unit 3771
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