DETAILED ACTION
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.
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.
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) 1,2,5-8,10-12 is/are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Divino et al U.S 2014/0135812.
Claim 1: Divino et al disclose an embolization device for a bump in a lumen as best seen in figure 45, comprising a basket 1100a for housing an embolic object (see paragraph 368), wherein the basket has a plurality of wires 1110, the basket has a distal end side bundling portion at clamp 1108 at which the plurality of wires are bundled and fixed on a distal side of the basket, a proximal end side bundling portion at open end 1106 which the plurality of wires are bundled and fixed on a proximal side of the basket, and a housing portion at 1102a which is a portion between the distal end side bundling portion and the proximal end side bundling portion at the plurality of wires, a proximal end of the distal end side bundling portion is located on the proximal side with respect to a distal end of the housing portion,
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Note that the closed end 1104 of the framing structure is sealed via a clamp 1108, an adhesive, or may be heat welded via known techniques. The closed end 1104 may be inverted relative to the remaining framing structure 1102a and depend inwardly within the interior thereof. The open end 1106 of the framing structure 1102a may be in diametrical opposed relation to the closed end 1104. The individual filaments ends 1110 of the framing structure at the open end 1106 also may be inverted and disposed within the interior of the framing structure 1102a (see paragraphs 367,369). Alternativley, it would have been obvious that the above description of Divino et al and the annotated fig. 45 above shows that a distance between a distal end of the distal end side bundling portion and the distal end of the housing portion in a longitudinal direction of the basket is 1/10 or more of a length from the distal end to a proximal end of the housing portion. Thus, claim 1 is unpatentable over Divino et al.
Claims 2, 5: Divino et al disclose the basket 1100a is configured so that when the basket is brought from an initial state to a housed state, a length from a distal end of the basket to a proximal end of the basket in the longitudinal direction of the basket is increased when the basket is brought from the initial state to the housed state, and a point of a distal end of the wire located on a most distal side in the initial state is moved to a radially outer side of the basket when the basket is brought from the initial state to the housed state, wherein the initial state is a state where the embolic object is not housed inside the basket, and a housed state is a state where the embolic object is housed inside the basket (strip 1520 is inside of catheter 1506); wherein the distal end side bundling portion is located inside the basket as best seen in fig.62, it is noted that strip 1502 is outside the catheter 1506.
Claims 6-8: Divino et al disclose wherein the basket has a mesh like mesh wall surface in which the plurality of wires intersect each other (see claim, 10 of Divino). , further comprising an outer tube 1506 having a distal end and a proximal end, wherein the outer tube is configured so that the basket can be is placed in an inner cavity of the outer tube, and the distal end of the distal end side bundling portion is located on the distal side with respect to the distal end of the housing portion in a state where the basket is housed inside the outer tube (see fig. 63). , further comprising an outer tube having a distal end and a proximal end, wherein the outer tube 1506 is configured so that the basket can be is placed in an inner cavity of the outer tube, and a proximal end of the proximal end side bundling portion is located on the proximal side with respect to the proximal end of the housing portion in a state where the basket is housed inside the outer tube (see fig. 63).
Claims 10-12: Divino et al disclose wherein an X-ray impermeable portion containing an X-ray impermeable material is provided at least one of the distal end side bundling portion and the proximal end side bundling portion (see paragraphs 60,194). , further comprising: a basket pusher 1508 placed on the proximal side with respect to a proximal end of the proximal end side bundling portion; and a connection member 1540 placed on the proximal side with respect to the proximal end of the proximal end side bundling portion and on the distal side with respect to a distal end of the basket pusher and-connecting so that the basket is connected to the basket pusher via the connection member. , wherein the connection member is severable (see the cutting device 1540, paragraph 397).
Claims 4, 9: Divino et al disclose the invention substantially as claimed but is silent regarding the basket is configured so that the distance between the distal end of the distal end side bundling portion and the distal end of the housing portion is 1/16 or more of a length from a distal end of the basket to a proximal end of the basket in a housed state where the embolic object is housed inside the basket. It would have been obvious to one having ordinary skill in the art before the claimed invention to modify the device of Divino with the distal end of the housing portion is 1/16 or more of a length from a distal end of the basket to a proximal end of the basket in a housed state where the embolic object is housed inside the basket, since it has been held where the only difference between the prior arts and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimension 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). In the instant case it appears there has been no critically placed on the specific dimension distance of a length from a distal end of a basket to a proximal end of the basket, as evidence in applicant’s specification at paragraph 124, wherein the ranges and values are given with no preference to one over another nor any evidence of unexpected results.
Claim 9: Divino et al disclose the invention substantially as claimed but is silent regarding wherein at least one of the wires of the basket contains a nickel-titanium alloy, and the basket is extendable in the longitudinal direction and a radial direction of the basket. It would have been obvious to one having ordinary skill in the art at the time the invention was made to construct the device that included one of the wires of the basket contains a nickel-titanium alloy, and the basket is extendable in the longitudinal direction and a radial direction of the basket, since it has been held to be within the general skill of a worker in the art to select a known material on the basic of its suitability for the intended use or as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
Allowable Subject Matter
Claims 3, 13 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VI X NGUYEN whose telephone number is (571)272-4699. The examiner can normally be reached Monday-Friday (6:30-4:30).
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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.
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/VI X NGUYEN/Primary Examiner, Art Unit 3771
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