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 .
Election/Restrictions
Claims 20-35 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected group II, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 06/29/2026.
Applicant's election with traverse of group I, claims 1-19 in the reply filed on 06/29/2026 is acknowledged. The traversal is on the ground(s) that the amendments made to claim 1 are not disclosed by Wang (US 2016/0331504). Specifically, “Wang cannot disclose "a second portion of the periphery of the body across from the at least one tether, the at least one eyelet configured to receive the at least one tether therethrough... [and] wherein a length of the at least one tether is greater than a width of the body along the same direction as the length of the at least one tether”. This is not found persuasive because The amended claim is disclosed by Rosenblatt (US 2019/0151065 A1), see rejection below, and thus the shared technical features are not special as they still do not make a contribution of the prior art.
The requirement is still deemed proper and is therefore made FINAL.
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.
Claims 1, 3-8, 10, 11, 14, 15, 18, and 19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Rosenblatt (US 20190151065 A1).
Regarding claim 1 Rosenblatt discloses (fig. 1) an implantable prosthesis comprising: a body 4 of biologically compatible repair fabric (see [0101] and fig. 1), the body 4 having a periphery (see fig. 1); at least one tether 1 extending from a first portion of the periphery of the body 4 (see fig. 1 and [0101]); and at least one eyelet 3 associated with a second portion of the periphery of the body across from the at least one tether 1 (see fig. 1 and [0101]), the at least one eyelet 3 configured to receive the at least one tether 1 therethrough (see [0101]); wherein the at least one tether 1 is configured to span across a portion of the body to pass through the at least one eyelet 3 (see [0101]); wherein a length of the at least one tether 1 is greater than a width of the body 4 along the same direction as the length of the at least one tether 1 (see fig. 1).
Regarding claim 3 Rosenblatt further discloses (fig. 1) the at least one eyelet 3 is located on the body 4 (see fig. 1 and [0101]).
Regarding claim 4 Rosenblatt further discloses (fig. 1) the at least one eyelet 3 is located proximal to the second portion of the periphery of the body (see annotated fig. 1 below).
Regarding claim 5 Rosenblatt further discloses (fig. 1) the at least one eyelet 3 is located distal to the second portion of the periphery of the body (see annotated fig. 1 below).
Regarding claim 6 Rosenblatt further discloses (fig. 1) the at least one eyelet is located within the periphery of the body (see annotated fig. 1 below).
PNG
media_image1.png
304
615
media_image1.png
Greyscale
Regarding claim 7 Rosenblatt further discloses (fig. 1) the first portion of the periphery of the body is spaced apart from the second portion of the periphery of the body (see annotated fig. 1 below).
PNG
media_image2.png
332
729
media_image2.png
Greyscale
Regarding claim 8 Rosenblatt further discloses (fig. 1) the first portion of the periphery of the body is located opposite from the second portion of the periphery of the body (see annotated fig. 1 above).
Regarding claim 10 Rosenblatt further discloses (fig. 1) the body is formed of a mesh material (see [0023]-[0024]).
Regarding claim 11 Rosenblatt further discloses (fig. 1) the mesh material is configured to allow tissue ingrowth. The language “the mesh material is configured to allow tissue ingrowth” constitutes functional claim language, indicating that the claimed device need only be capable of being used in such a manner. Furthermore, the claim is an apparatus claim, and is to be limited by structural limitations. The Office submits that the device of Rosenblatt meets the structural limitations of the claim, and the mesh material is capable of allowing tissue ingrowth. Mesh material is formed with a plurality of openings therein which would allow tissue ingrowth.
Regarding claim 14 Rosenblatt further discloses (fig. 1) the body is configured to cover an anatomical defect. The language, "the body is configured to cover an anatomical defect" merely recites intended uses of the apparatus. The claim, however, is an apparatus claim, and is to be limited by structural limitations. The Office submits that the device of Rosenblatt meets the structural limitations of the claim, and the body is capable of covering an anatomical defect. The body is formed of a biocompatible mesh and is sized such that it is capable of covering an anatomical defect.
Regarding claim 15 Rosenblatt further discloses (fig. 1) the body is configured to be used in a ventral hernia repair procedure. The language, "the body is configured to be used in a ventral hernia repair procedure" merely recites intended uses of the apparatus. The claim, however, is an apparatus claim, and is to be limited by structural limitations. The Office submits that the device of Rosenblatt meets the structural limitations of the claim, and the body is capable of being used in a ventral hernia repair procedure. The body is formed of a biocompatible mesh and is sized such that it is capable of being used in a ventral hernia repair procedure.
Regarding claim 18 Rosenblatt further discloses (fig. 1) a needle 2 located at a distal end of the at least one tether 1 (see fig. 1 and [0101]).
Regarding claim 19 Rosenblatt further discloses (fig. 1) at least one tether 1 is configured to exhibit a first visual appearance in an untensioned configuration (unstretched), and wherein the at least one tether is configured to exhibit a second visual appearance in a tensioned configuration (stretched; the tether is an elastic mesh, thus will be unstretched in its untensioned configuration and stretched, e.g. larger openings, deformed openings, in its tensioned configuration; see [0030]).
Claims 1 and 2 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by a variant interpretation of Rosenblatt.
Regarding claim 1 Rosenblatt discloses (fig. 1) an implantable prosthesis comprising: a body 4 of biologically compatible repair fabric (see [0101] and fig. 1), the body 4 having a periphery (see fig. 1); at least one tether 1 extending from a first portion of the periphery of the body 4 (see fig. 1 and [0101]); and at least one eyelet 3 associated with a second portion of the periphery of the body across from the at least one tether 1 (see fig. 1 and [0101]), the at least one eyelet 3 configured to receive the at least one tether 1 therethrough (see [0101]); wherein the at least one tether 1 is configured to span across a portion of the body to pass through the at least one eyelet 3 (see [0101]); wherein a length of the at least one tether 1 is greater than a width of the body 4 along the same direction as the length of the at least one tether 1 (see fig. 1).
Regarding claim 2 Rosenblatt discloses (fig. 1) at least one tab extending from the second portion of the periphery of the body, wherein the at least one eyelet 3 is located at least partially in the at least one tab (see annotated fig. 1 below).
PNG
media_image3.png
416
666
media_image3.png
Greyscale
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.
Claims 9, 16 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Rosenblatt.
Regarding claim 9, Rosenblatt (fig. 1) discloses the claimed invention substantially as claimed, as set forth above for claim 1. Rosenblatt (fig. 1) is silent regarding the at least one tether comprises a plurality of tethers, wherein the at least one eyelet comprises a plurality of eyelets, and wherein each of the plurality of tethers corresponds to at least one of the plurality of eyelets.
However Rosenblatt (fig. 9) teaches a body comprising at least one tether 1 and at least one eyelet 3 (see fig. 9 and [0109]), wherein the at least one tether 1 comprises a plurality of tethers (see fig. 9 and [0109]), wherein the at least one eyelet 3 comprises a plurality of eyelets (see fig. 9 and [0109]), and wherein each of the plurality of tethers 1 corresponds to at least one of the plurality of eyelets 3 (see fig. 9 and [0109]).
Therefore it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify Rosenblatt (fig. 1) to have the at least one tether comprises a plurality of tethers, wherein the at least one eyelet comprises a plurality of eyelets, and wherein each of the plurality of tethers corresponds to at least one of the plurality of eyelets as taught by Rosenblatt (fig. 9), for the purpose of being able to connect the device to the treatment location on two side of the treatment location (see Rosenblatt [0105]-[0106]).
Regarding claim 16, Rosenblatt discloses the claimed invention substantially as claimed, as set forth above for claim 1. Rosenblatt is silent regarding a width of the at least one tether is at least 5% of a length of the body.
However, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the device of Rosenblatt to have the width of the at least one tether be at least 5% of a length of the body since it has been held that “where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device” Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 SPQ 232 (1984). In the instant case, the device of Rosenblatt would not operate differently with the claimed width tether would still function to engage the eyelet. Further, applicant places no criticality on the range claimed, indicating simply that the width “may” be within the claimed ranges (specification [0056]).
Regarding claim 17, Rosenblatt discloses the claimed invention substantially as claimed, as set forth above for claim 1. Rosenblatt is silent regarding length of the at least one tether is at least 120% of a width of the body.
However, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the device of Rosenblatt to have length of the at least one tether be at least 120% of a width of the body since it has been held that “where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device” Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 SPQ 232 (1984). In the instant case, the device of Rosenblatt would not operate differently with the claimed length tether would still function to engage the eyelet. Further, applicant places no criticality on the range claimed, indicating simply that the length “may” be within the claimed ranges (specification [0052]).
Claims 12 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Rosenblatt in view of Mlodinow et al. (US 20190183623 A1).
Regarding claim 12, Rosenblatt discloses the claimed invention substantially as claimed, as set forth above for claim 1. Rosenblatt is silent regarding the body is formed of a resorbable material.
However Mlodinow, in the same filed of endeavor, teaches a mesh implant, wherein the mesh is formed of a resorbable material (see [0038]).
Therefore it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify Rosenblatt to have the mesh formed of a resorbable material as taught by Mlodinow, for the purpose of the device being able to dissolve into the body after time to prevent needing a removal procedure (see Mlodinow [0038]).
Regarding claim 13, Rosenblatt discloses the claimed invention substantially as claimed, as set forth above for claim 1. Rosenblatt is silent regarding the body is formed of a non- resorbable material..
However Mlodinow, in the same filed of endeavor, teaches a mesh implant, wherein the mesh is formed of a non-resorbable material (see [0038]).
Therefore it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify Rosenblatt to have the mesh formed of a non-resorbable material as taught by Mlodinow, for the purpose of the device being able to remain permanently in the body as needed to continued treatment (see Mlodinow [0038]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KATHERINE H Mendez whose telephone number is (571)272-9503. The examiner can normally be reached Monday - Friday 8 am-4:00 pm.
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, Darwin Erezo can be reached at (571) 272-4695. 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.
/KATHERINE H SCHWIKER/Primary Examiner, Art Unit 3771
Prosecution Insights