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 .
Response to Amendment
This Office action is in response to the applicant’s communication filed 04/30/2026.
Status of the claims:
Claims 1 – 20 are pending in the application.
Claims 2, 3, 5, 6, 9, 19, and 20 are amended.
Claim Objections
The objections to claims 2, 3, 5, 6, 9, 19, and 20 in the previous action dated 01/30/2026 have been withdrawn in light of the Applicant’s amendments filed 04/30/2026. Specifically, the objection to claim 2 regarding the phrase “the treatment site”, the objection to claims 2 and 3 regarding the phrases “the mesh structure” and “the expandable mesh structure”, the objection to claims 5 and 20 regarding the phrase “the amount of lateral edges overlap”, the objection to claim 6 regarding the phrase “its length”, the objection to claim 9 regarding the phrase “an electrical signal”, the objection to claim 19 regarding the phrases “comprising plurality of interconnected struts” and “a plurality of mesh cells having a proximal end and a distal end”, has been withdrawn as the appropriate corrections have been made. However, new objections have been set forth below.
Claim 1 is objected to because of the following informalities:
Claim 1 recites “the connection portion” in line 10, although the line does not rise to the level of being indefinite as the line is understood by the Examiner to mean “the coupling region” as defined previously and recited in Applicant’s disclosure as “the coupling region”, the Examiner suggests the line be amended to read “the coupling region” for the purpose of maintaining consistent language throughout the claims;
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.
The rejection of claim 19 under U.S.C 35 112(b) regarding indefiniteness, recited in the previous action dated 01/30/2026 have been withdrawn in light of the Applicant’s amendments filed 04/30/2026. Specifically, the rejection of claim 19, regarding the lack of clarity in the phrase "wherein the tapering portion is core assembly shaft is connected to the self-expandable tubular mesh", has been withdrawn. However, a new rejection of claim 19 under 112(b) has been set forth below in light of Applicant’s amendments; and the rejection of claim 20 has been maintained as claim 20 still depends from an indefinite claim.
Claims 19 and 20 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 19 recites the limitation "the core assembly shaft" in 8. There is insufficient antecedent basis for this limitation in the claim. Furthermore, the phrase renders the claim indefinite because it is unclear if Applicant is intending the phrase to read “the core assembly” as previously defined or if Applicant is intending to further define the core assembly to include a shaft. For the purpose of examination, the Examiner will read the claim to mean the former, such that the phrase is read as “the core assembly”.
Claim 20 is rejected for being dependent on an indefinite claim.
Claim Rejections - 35 USC § 103
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 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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1 – 5 and 7 – 20 are rejected under 35 U.S.C. 103 as being unpatentable over Taff et al (US 2018/0116717 A1) (previously cited) and in view of Davidson (US 2015/0133990 A1) (previously cited) and Divino et al (US 2016/0331377 A1) (previously cited).
Regarding claim 1, Taff discloses a method (abstract, paragraphs [0022 – 0031], [0041], [0046], [0051 – 0061], and Fig. 1) comprising:
disposing a medical device (apparatus 21) comprising a device (electrode 3) coupled to a distal end portion of a conductive shaft (conductive wire 5) within a bodily lumen (vascular system) (paragraphs [0046], [0053 – 0057], and Fig. 1), wherein the device (electrode 3) comprises:
a coupling region (connection point 4);
wherein the conductive shaft (conductive wire 5) is connected to the device (electrode 3) via the coupling region (connection point 4) (paragraph [0055] and Fig. 1);
electrically coupling the conductive (conductive wire 5) shaft to an signal generator (voltage source) (paragraphs [0058 – 0062]); and
supplying an electrical signal (unipolar voltage) to the expandable mesh via the signal generator (voltage source) (paragraphs [0046] and [0058 – 0062]).
However, Taff is silent regarding (i) wherein the device is an expandable mesh comprising a tubular structure of interconnected struts comprising a plurality of mesh cells having a proximal end and a distal end, the proximal end and the distal end being open, a tapering portion connected to the proximal end of the tubular structure and, a coupling region connected to a proximal end of the tapering portion, wherein the tapering portion is configured to converge at the connection portion, the conductive shaft is connected to the expandable mesh via the coupling region, and (ii) wherein the signal generator is extracorporeal.
As to (i), Davidson teaches, in the same field of endeavor, a method of removing a thrombus from within a bodily lumen (abstract, paragraphs [0061 – 0073], and Figs. 1/2) comprising disposing a medical device comprising an expandable mesh (self-expandable member 102; which equates to the electrode 3 of Taff) coupled to a distal end of a shaft (manipulation member 104; which equates to the wire 5 of Taff), wherein the expandable mesh comprises a tubular structure of interconnected struts comprising a plurality of mesh cells having a proximal end and a distal end, the proximal end and the distal end being open, a tapering portion (taper of proximal portion 122 – paragraph [0071]) connected to the proximal end of the tubular structure, a coupling region (region where proximal end 110 attaches to distal end of the manipulation member 104 – paragraph [0064]) connected to a proximal end of the tapering portion, wherein the tapering portion is configured to converge at the connection portion and the shaft connected to the expandable mesh via the coupling region (paragraphs [0061 – 0073], and Figs. 1,2), wherein the expandable mesh is electrically enhanced to draw in the thrombus / clot (paragraph [0108]). Additionally, Davidson teaches, in paragraph [0076], wherein during the clot retrieval process the shape and cell structure of the expandable mesh advantageously provides grip and retaining ability of the thrombus to the system via the individual struts..
It would have been obvious to one of ordinary skill in the art, prior to the effective filing date of the claimed invention, to modify the device (electrode 3) of Taff to be an expandable mesh with a tubular shape, plurality of cells, and tapering portion, based on the teachings on Davidson, for the purpose of having added grip and retaining ability on the system to better grasp the thrombus via the individual struts of the expandable mesh (paragraph [0076] – Davidson).
As to (ii), Divino teaches a medica device comprising an expandable mesh (implant) electrically coupled to a shaft (delivery wire 44; which equates to the wire 5 of Taff) to an extracorporeal signal generator (power supply 46; which equates to the voltage supply source of Taff) (abstract, paragraphs [0033 – 0035] and Figs. 1A/B).
It would have been obvious to one of ordinary skill in the art, prior to the effective filing date of the claimed invention, to modify the system of Taff in view of Davidson to have the voltage source of Taff be extracorporeal, based on the teachings of Divino, for the purpose of allowing the user to control the supply of electrical charge to the expandable mesh.
Regarding claim 2, as discussed above, it would have been obvious to modify the system of Taff and Divino to incorporate the self-expandable mesh of Davidson. Additionally, the combination makes obvious wherein disposing the medical device comprises: advancing the medical device (self-expandable member 102 – Davidson) to the treatment site within the bodily lumen (paragraph [0046] – Taff) while the expandable mesh is in a volume-reduced form and expanding the mesh structure (Examiner’s note: as stated in paragraphs [0074] and [0128] of Davidson, the self-expandable member 102 (i.e., the medical device) is introduced through the bodily lumen to the treatment site in the reduced-volume form. It would have been obvious to one of ordinary skill in the art, prior to the effective filing date of the claimed invention, to modify the method of Taff to incorporate the step of advancing the medical device to the treatment site in the volume-reduced form, based on the teachings of Davidson, for the purpose of covering the self-expandable device while the self-expandable device is traversing the vasculature thereby preventing unnecessary damage to the vasculature). Therefore the prior art makes obvious the limitations above.
Regarding claim 3, as discussed above, it would have been obvious to modify the system of Taff and Divino to incorporate the self-expandable mesh of Davidson. Additionally, the combination teaches wherein the bodily lumen comprises a blood vessel, wherein the treatment site comprises a location within the blood vessel proximate to a thrombus (paragraph [0046] – Taff), and wherein expanding the expandable mesh structure (self-expandable member 102 – Davidson) comprises expanding the tubular structure into engagement with the thrombus (paragraph [0129] – Davidson).
Regarding claims 4 and 5, as discussed above, it would have been obvious to modify the system of Taff and Divino to incorporate the self-expandable mesh of Davidson. Additionally, Davidson teaches wherein the tubular structure (self-expandable member 102 – Davidson) forms lateral edges (edges 124/126) (paragraphs [0072], [0074], and Figs. 3,4A-D), and wherein in the volume-reduced form the tubular structure is curled up such that the lateral edges overlap (paragraph [0074]), and wherein after expanding the tubular structure, the amount of lateral edges overlap decreases compared to the volume-reduced form (Examiner’s note: as stated in paragraph [0075] there is a greater overlap occurs in more narrow vessels, and in narrower vessels the expandable member 102 does not expand as much as the expandable member 102 expands in a less narrow vessel, therefore, when going from a more compressed configuration to a more expanded configuration the amount of overlap of the edges decreases. Thus, when the expandable member 102 leaves the catheter of Taff and expands, the amount of overlap of the lateral edges will decrease). Therefore, the combination makes obvious the method above.
Regarding claims 7 and 8, as discussed above, it would have been obvious to modify the system of Taff and Divino to incorporate the self-expandable mesh of Davidson. Additionally, Davidson teaches wherein the expandable mesh comprises a stent or the expandable mesh comprises a stent retriever (Examiner’s note: a stent is defined as a tubular structure comprised of struts and a “stent retriever” is a device that can retrieve a stent. With that said, the expandable member 102 (i.e., the expandable mesh) is made up of struts and is capable of retrieving a stent. Thus, Davidson teaches the limitations above). Therefore, the combination makes obvious the method above.
Regarding claims 9, 10, and 11, as discussed above, it would have been obvious to modify the system of Taff and Divino to incorporate the self-expandable mesh of Davidson. Additionally, Taff discloses wherein supplying an electrical signal to the expandable mesh via the signal generator comprises supplying a periodic waveform to the expandable mesh for a predetermined time period of no more than 5 minutes / no more than 2 minutes (10s to less than 2 minutes) (paragraphs [0060 – 0061]).
Regarding claim 12, as discussed above, it would have been obvious to modify the system of Taff and Divino to incorporate the self-expandable mesh of Davidson. Additionally, Taff teaches the wherein a total energy (E) delivered via the electrical signal over the predetermined time period is between 0.75-24,000 mJ (Examiner’s note: Taff discloses in paragraphs [0060 – 0061] a range for the voltage, current, and time (and thus the total energy value), wherein a voltage of 0.1V to 100V is used and a current (peak) of 0.01mA – 4mA is used for a time period between 5seconds and less than 120seconds, when the voltage (V)=1volts , current (I)=0.0012A , and time (t)=100s the total energy (E) = (V)(I)(t)=120mJ, which is within the claimed range. However, Taff does not explicitly disclose the total energy (E) being within the claimed range. 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 total energy of Taff to be between 0.75-24,000mJ as Applicant appears to have placed no criticality on the claimed range (see pp. [0016] indicating the angle “can” be within the claimed range) and since it has been held that “[i]n the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists.” In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)).
Regarding claim 13, as discussed above, it would have been obvious to modify the system of Taff and Divino to incorporate the self-expandable mesh of Davidson. Additionally, Taff teaches wherein a total charge (Q) delivered via the electrical signal over the predetermined time period is between 30-1200 mC (Examiner’s note: Taff discloses in paragraphs [0060 – 0061] a range for the voltage, current, and time (and thus the total energy value), wherein a voltage of 0.1 V to 100V is used and a current (peak) of 0.01mA – 4mA is used for a time period between 5seconds to less than 120seconds, when the voltage (V)=1volts , current (I)=0.0012A , and time (t)=100s the total charge (Q) = (I)(t)=120mC which is within the claimed range. However, Taff does not explicitly disclose the total charge (Q) being within the claimed range. 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 total charge of Taff to be between 30-1200mC as Applicant appears to have placed no criticality on the claimed range (see pp. [0016] indicating the angle “can” be within the claimed range) and since it has been held that “[i]n the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists.” In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)).
Regarding claim 14, as discussed above, it would have been obvious to modify the system of Taff and Divino to incorporate the self-expandable mesh of Davidson. Additionally, Taff discloses wherein a frequency of the electrical signal is between 1 Hz to 1 MHz (paragraph [0060]).
Regarding claim 15, as discussed above, it would have been obvious to modify the system of Taff and Divino to incorporate the self-expandable mesh of Davidson. Additionally, Taff makes obvious wherein the duty cycle (D%=(PulseWidth)/(TimePeriod) = PW/T) of the electrical signal is between 5-20% (Examiner’s note Taff discloses Taff discloses in paragraphs [0060 – 0061] a pulse width of 5ms at a range of frequencies (T= 1/frequency), wherein a frequency between 0.1Hz and 100MHz is used for a with a pulse width of 5ms, when the frequency is 25Hz the Duty cycle (D)=12.5%, thus, Taff gives a range for the frequency and time (and thus the percent duty cycle) applied. However, Taff does not explicitly disclose the duty cycle being within the claimed range. 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 duty cycle of Taff to be between 5-20% as Applicant appears to have placed no criticality on the claimed range (see pp. [0016] indicating the angle “can” be within the claimed range) and since it has been held that “[i]n the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists.” In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990)).
Regarding claims 16, 17, and 19, Taff discloses a method (abstract, paragraphs [0022 – 0031], [0041], [0046], [0051 – 0061], and Fig. 1) comprising:
disposing a medical device (electrode 3) within a blood vessel paragraph [0046]), the medical device comprising a device (electrode 3) coupled to a distal end portion of a core assembly (conductive wire 5 and second electrode 26) comprising at least two separate conductive channels (conductive wire 5 and second electrode 26) that provide electrical communication along the core assembly with corresponding electrodes (terminals 3t and 26t) of the medical device (paragraphs [0053 – 0058] and Fig. 1);
a shaft (conductive wire 5) of the core assembly is connected to the device (electrode 3) via a coupling region (connector 4);
communicating electrical signals (unipolar voltage) between the electrodes (terminals 3t and 26t) of the medical device via one or more of the at least two separate conductive channels (conductive wire 5 and second electrode 26) (paragraphs [0058 – 0062]).
However, Taff is silent regarding (i) [claims 16 and 19] wherein the device is an self-expandable tubular mesh comprising a tubular structure of interconnected struts comprising a plurality of mesh cells having a proximal end and a distal end, the proximal end and the distal end being open, a tapering portion connected to the proximal end of the tubular structure and, a coupling region connected to a proximal end of the tapering portion, wherein the tapering portion is configured to converge at the connection portion, wherein the shaft of the core assembly is connected to the expandable mesh via the coupling region, expanding the self-expandable tubular mesh at a treatment site within the blood vessel, and (ii) [claims 16 and 17] a controller, that forms a part of an extracorporeal current generator, for controlling the electrical signals.
As to (i), Davidson teaches, in the same field of endeavor, a method of removing a thrombus from within a bodily lumen (abstract, paragraphs [0061 – 0073], and Figs. 1/2) comprising disposing a medical device comprising an expandable mesh (self-expandable member 102) coupled to a distal end of a shaft (manipulation member 104; which equates to the wire 5 of Taff), wherein the expandable mesh comprises a tubular structure of interconnected struts comprising a plurality of mesh cells having a proximal end and a distal end, the proximal end and the distal end being open, a tapering portion (taper of proximal portion 122 – paragraph [0071]) connected to the proximal end of the tubular structure, a coupling region (region where proximal end 110 attaches to distal end of the manipulation member 104 – paragraph [0064]) connected to a proximal end of the tapering portion, wherein the tapering portion is configured to converge at the connection portion and the shaft connected to the expandable mesh via the coupling region (paragraphs [0061 – 0073], and Figs. 1/2), wherein the expandable mesh is electrically enhanced to draw in the thrombus / clot (paragraph [0108]), and expanding the tubular mesh at a treatment site within the blood vessel (paragraph [0129]). Additionally, Davidson teaches, in paragraph [0076], wherein during the clot retrieval process the shape and cell structure of the expandable mesh advantageously provides grip and retaining ability of the thrombus via the individual struts..
It would have been obvious to one of ordinary skill in the art, prior to the effective filing date of the claimed invention, to modify the device (electrode 3) of Taff to be a self-expandable mesh with a tubular shape, plurality of cells, and tapering portion, based on the teachings on Davidson, for the purpose of having added grip and retaining ability on the system to better grasp the thrombus via the individual struts of the expandable mesh (paragraph [0076] – Davidson).
As to (ii), Divino teaches a medica device comprising an expandable mesh (implant) electrically coupled to a shaft (delivery wire 44; which equates to the wire 5 of Taff) and to an extracorporeal current generator (a part of the power supply 46; which equates to the voltage supply source of Taff), and a controller (controller of power supply 46), forming a part of the extracorporeal current generator (current generator), for communicating electrical signals between electrodes of the medical device (abstract, paragraphs [0033 – 0035] and Figs. 1A/B).
It would have been obvious to one of ordinary skill in the art, prior to the effective filing date of the claimed invention, to modify the system of Taff in view of Davidson to incorporate the controller and the extracorporeal current generator, based on the teachings of Divino, for the purpose of allowing the user to control the supply of electrical signals to the expandable mesh, and allow the user to regulate both the current and the voltage of the electrical signals thereby broadening the scope of the operation.
Regarding claim 18, as discussed above, it would have been obvious to modify the system of Taff and Divino to incorporate the self-expandable mesh of Davidson. Additionally, Taff teaches comprising retracting the medical device (self-expandable member 102 – Davidson) from the treatment site by pulling the core assembly (conductive wire 5 and second electrode 26) along the blood vessel (Examiner’s note: as stated in paragraph [0046] of Taff the thrombus is removed by withdrawing the first electrode 3 (i.e., the medical device – modified to be the self-expandable member 102 of Davidson), which is attached to the conductive wire 5 (i.e., a part of the core assembly), and in order to withdraw the first electrode 3, the conductive wire 5 must be pulled. Therefore, Taff teaches limitations above).
Regarding claim 20, as discussed above, it would have been obvious to modify the system of Taff and Divino to incorporate the self-expandable mesh of Davidson. Additionally, Davidson teaches or makes obvious wherein the self-expandable tubular mesh (self-expandable member 102 – Davidson) forms lateral edges (edges 124/126), wherein in a volume-reduced form the self-expandable tubular mesh is curled up such that the lateral edges overlap (paragraphs [0072], [0074], and Figs. 3,4A-D), wherein disposing the medical device comprises advancing the medical device to the treatment site within the blood vessel while the self-expandable tubular mesh is in the volume-reduced form (Examiner’s note: as stated in paragraphs [0074] and [0128] of Davidson, the self-expandable member 102 (i.e., the medical device) is introduced through the bodily lumen to the treatment site in the reduced-volume form. It would have been obvious to one of ordinary skill in the art, prior to the effective filing date of the claimed invention, to modify the method of Taff to incorporate the step of advancing the medical device to the treatment site in the volume-reduced form, based on the teachings of Davidson, for the purpose of covering the self-expandable device while the self-expandable device is traversing the vasculature thereby preventing unnecessary damage to the vasculature), and wherein after expanding the self-expandable tubular mesh the amount of lateral edges overlap decreases compared to the volume-reduced form (Examiner’s note: as stated in paragraph [0075] there is a greater overlap occurs in more narrow vessels, and in narrower vessels the expandable member 102 does not expand as much as the expandable member 102 expands in a less narrow vessel, therefore, when going from a more compressed configuration to a more expanded configuration the amount of overlap of the edges decreases. Thus, when the expandable member 102 leaves the catheter of Taff and expands, the amount of overlap of the lateral edges will decrease). Therefore, the combination makes obvious the method above.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Taff et al (US 2018/0116717 A1) (previously cited) in view of Davidson (US 2015/0133990 A1) (previously cited) and Divino et al (US 2016/0331377 A1) (previously cited), as applied to claim 1 above, and further in view of Sutermeister et al (US 2009/0157048 A1) (previously cited).
Regarding claim 6, as discussed above, the combination of Taff, Davidson, and Divino teaches the method of claim 1.
However, the combination above is silent regarding (i) wherein the conductive shaft comprises a conductive hypotube having a cut pattern along at least a portion of its length.
As to the above, Sutermeister teaches a medical device comprising a conductive shaft (first conductive element), wherein the conductive shaft comprises a conductive hypotube (conductive hypotube body 26; which equates to the conductive wire 5 of Taff) with a cut pattern along its length (abstract, paragraphs [0031], [0045] and Fig. 2). Additionally, Sutermeister states in paragraph [0045] wherein the first conductive element can be the conductive hypotube or a wire. Moreover, it should be understood that Taff and Sutermeister are known references in the art that teach medical system comprising conductive shafts (abstract, paragraphs [0022 – 0031], [0041], [0046], [0051 – 0061], and Fig. 1 – Taff ; abstract, paragraphs [0031], [0045] and Fig. 2 – Sutermeister); and the Examiner contends that it would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to have substituted one conductive element for another and that the prior art makes obvious wherein a conductive wire and a conductive hypotube are structural equivalents, and the results of the substitution would have been predictable and resulted in the modified conductive shaft of Taft being able to function as intended to properly conduct / transfer the electrical signal to the capture device. The Examiner notes the rejection above is based on KSR int’l Co. V. Teleflex inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007), rational B, outlined in MPEP 2143.
Response to Arguments
Applicant's arguments filed 04/30/2026 have been fully considered but they are not persuasive. More specially:
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
With respect to Applicant’s arguments that “the combination changes the principle operation of Davidson and Divino”, it should be understood that neither Davidson or Divino were modified in any way; the rejection above is under Taff in view of Davidson and Divino, wherein the device of Taff is modified in view of the teachings of Davidson and Divino. Moreover, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). And as stated in the rejection above, it would be obvious to one of ordinary skill in the art to modify the device of Taff with the features of both Davidson and Divino. Lastly, the Applicant has not provided any evidence to prove the modified device of Taff would not operate as intended. Merely, saying that the modification would result in the inoperability of the device is not sufficient to show inoperability of the device. Furthermore, the examiner notes that the arguments of the attorney can not take place of evidence. See In Re Schulze, 346, F.2d 600,602, 145 USPQ 716, 718 (CCPA 1965). Therefore, Applicant’s arguments are not persuasive.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/Andrew Restaino/Primary Examiner, Art Unit 3771
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