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 .
Claim Objections
Claim 24 is objected to because of the following informalities: the term “cylindrical stent body” is missing the word “the” in front of it. Appropriate correction is required.
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.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: stent stabilizing mechanism in claim 23, which corresponds to struts as per [0091] of the spec. as filed.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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 23-31 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.
Claim 23 recites the limitation "the distal hub of the embolic capture device" in line 11. There is insufficient antecedent basis for this limitation in the claim, as there is no such “embolic capture device” introduced in the claim. For examination purposes, it will presume to read as “the distal hub of the cylindrical stent body”.
Claims 24-31 are indefinite by virtue of their dependency on indefinite base claim 23.
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) 23-31 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2013/0030460 A1 to Marks et al. (hereinafter “Marks”).
Regarding claim 23, Marks discloses (see abstract; Figs. 1-13; and [0077]-[0121]) an embolic capturing system comprising: a cylindrical stent body (410) with an axial lumen, a plurality of distal struts joining a distal end of the cylindrical stent body (see [0100] and Figs. 1/8) and forming a distal hub (450, Fig. 8), and a stent stabilizing mechanism (supportive element 420, see Figs. 1/8 and [0101], corresponding to a strut as made of same material as stent body 410 as per [0101] under 112f to the disclosed structure in the spec. for performing the claimed function); a pusher shaft (20 + 462, see Fig. 8) having a longitudinal lumen (see inset in Fig. 8), wherein the pusher shaft is configured to extend distally through a proximal end (461) of the cylindrical stent body with a distal end of the pusher shaft residing inside the axial lumen of the cylindrical stent body (see inset in Fig. 8, distal end of 462 resides within axial lumen of 410); a pull wire (10) configured to extend through the longitudinal lumen of the pusher shaft (see Fig. 8), the axial lumen of the cylindrical stent body (see Fig. 8), and the distal hub of the embolic capture device (see Fig. 8 and [0115]); and wherein the pusher shaft and the pull wire are configured to extend distally or retract proximally independent of each other (see Fig. 8 and [0115]).
Marks further discloses (claim 24) wherein cylindrical stent body further comprises a plurality of proximal struts joining a proximal end of the cylindrical stent body and forming a proximal hub (460/461) (see Figs. 1-8); (claim 25) wherein the pusher shaft is configured to extend distally through the proximal hub of the cylindrical stent body with the distal end of the pusher shaft residing inside the axial lumen of the cylindrical stent body (see inset in Fig. 8, distal end of 462 resides within axial lumen of 410); (claim 26) wherein the stabilizing mechanism of the cylindrical stent body comprises a first pair of stabilizing struts extending from a circumferential wall of the cylindrical stent body distally and radially inward at an angle toward the axial lumen of the cylindrical stent body, and wherein both distal ends of the first pair of stabilizing struts join together at a location (451) approximate to an elongated axis of the cylindrical stent body (see Fig. 8 and [0115]); (claim 27) wherein both distal ends of the first pair of stabilizing struts join to the pull wire (see Fig. 8 and [0115]); (claim 28) wherein the stabilizing mechanism of the cylindrical stent body further comprises a second pair of stabilizing struts with both proximal ends of the second pair of the stabilizing struts extending from the circumferential wall distal to the distal ends of the first pair of stabilizing struts, and the second pair of the stabilizing struts extends distally and radially inward at an angle toward the axial lumen of the cylindrical stent body with both distal ends of the second pair of stabilizing struts join together at a location approximate to an elongated axis of the cylindrical stent body (see Figs. 7-8 and [0113]-[0115]); (claim 29) wherein the stabilizing mechanism of the cylindrical stent body comprises at least one directional strut, with a proximal end of the directional strut connecting to the distal end of the pusher shaft, a distal end of the directional strut connecting to a section of the pull wire, and a middle section of the directional strut attaches to an inner circumferential wall of the cylindrical stent body (see Fig. 8 and [0115]); (claim 30) wherein the cylindrical stent body has a first radially reduced configuration with a first distance between the proximal end and the distal end of the at least one directional strut, and a second radially expanded configuration with a second distance between the proximal end and the distal end of the at least one directional strut, and wherein the first distance is greater than the second distance (see Fig. 8 and [0115]); and (claim 31) wherein the embolic capturing system has a first radially reduced configuration with a first distance between the distal end of the pusher shaft and a distal end of the pull wire, and a second radially expanded configuration with a second distance between the distal end of the pusher shaft and the distal end of the pull wire, and wherein the first distance is greater than the second distance (see Fig. 8 and [0115]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHAUN L DAVID whose telephone number is (571)270-5263. The examiner can normally be reached M-F 10AM-6:30PM.
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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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/SHAUN L DAVID/Primary Examiner, Art Unit 3771