Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
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” (means for”) or another linking word or phrase, such as “configured to” or “so that”; the following is a list of non-structural generic placeholders that may invoke 35 U.S.C. 112(f): "mechanism for," "module for," "device for," "unit for," "component for," "element for," "member for," "apparatus for," "machine for," or "system for.";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 1 recites “alignment members are disposed in spaced relation to the actuation member to guide a medical device to interact with the actuation member to thereby pivot the cover member to uncover the connector prior to the medical device engaging with the connector”. The three prong tests are:
(A) the claim limitation uses the term “means” or a generic placeholder (member),
(B) the term “means” is modified by functional language (to guide a medical device),
(C) the term “means” is not modified by sufficient structure, material, or acts for performing the claimed function (act for performing guiding function: to thereby pivot the cover member to uncover the connector prior to the medical device engaging with the connector).
Third Prong is not met and therefore this claim limitation is not going to be interpreted to invoke 35 USC 112f.
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 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. US 10563681 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because:Claim 1 of the instant application recites all limitations of U.S. Patent No. US 10563681 B2 except limitation “rail projections” which is replaced by “alignment members”. Based on specification these two appear to be components 2056 and 2062 shown in Fig. 11A.
Reason for Allowance
The following is an examiner’s statement of reasons for allowance:
Claim 1 is allowable.
Claim 1 is allowable for disclosing “the alignment members are disposed in spaced relation to the actuation member to guide a medical device to interact with the actuation member to thereby pivot the cover member to uncover the connector prior to the medical device engaging with the connector”. These limitations with other claimed limitations of each of the claim in a whole, make the instant invention neither anticipated nor rendered obvious by the best prior arts in record.
The closest prior art to the claimed invention of claim 1 is Bar (US 20060289083 A1).
Bar teaches (reproduced and annotated Figs. 5, 6 below) a protective mechanism (paragraph 004) comprising: a guide member (36); a connector (52); an actuation member configured to have a first end portion and a second end portion, the first end portion of the actuation member pivotally coupled to the guide member (by pivot pin 18); a cover member pivotally coupled to the guide member (cover member is connected to the actuation member and pivots around the guide member 36 by pin 18 shown in Figs. 2, 5, 6) and configured to interact with the actuation member (they are directly connected together) so as to pivot to uncover the connector when the actuation member pivots in a first direction (counter-clockwise shown in Fig. 6) and to pivot to cover the connector when the actuation member pivots in a second direction (clockwise shown in Fig. 5); and a first compliant gasket (15) coupled to a backstop member (11), wherein the cover member includes a perimeter rib adapted to seal against the first compliant gasket when the actuation member is in a first position (closed position shown in Fig. 5) and the connector is covered by the cover member (Fig. 5); first and second alignment members (43, 43), the first alignment member disposed in spaced relation to the second alignment member; However Bar does not teach the alignment members are disposed in spaced relation to the actuation member to guide a medical device to interact with the actuation member to pivot a cover member to uncover the connector prior to the medical device engaging with the connector.
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Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MAHDI H NEJAD whose telephone number is (571)270-0464. The examiner can normally be reached Monday-Friday 7:30am-4pm EST.
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MAHDI H. NEJAD
Examiner
Art Unit 3723
/MAHDI H NEJAD/Primary Examiner, Art Unit 3723
Prosecution Insights