DETAILED ACTION
This Office action is based on the amendments filed May 13, 2026 for application 18/941,076. Claims 1, 3, 7, and 18 have been amended, claims 2, 4-6, 8-17, and 20 have been cancelled, and claims 32-44 are newly presented; claims 1, 3, 7, 18, 19, and 32-44 are currently pending.
Response to Amendment
The amendments filed May 13, 2026 overcome the rejections under 35 U.S.C. 102, 35 U.S.C. 103, and nonstatutory double patenting.
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 1, 3, 7, and 32-41 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 1 recites the limitation “the tail portion” in line 2; however, there is insufficient antecedent basis for this limitation in the claim. Claim 1 further recites the limitation “an elongated tail portion” in line 12. It is suggested that the limitation “the tail portion” recited in line 2 be amended to “an elongated tail portion” and the limitation “an elongated tail portion” recited in line 12 be amended to “the elongated tail portion”.
Claims 3, 7, and 32-41 are included in the rejection under 35 U.S.C. 112(b) based on their dependence from rejected claim 1.
Allowable Subject Matter
Claims 1, 3, 7, and 32-41 would be allowable if rewritten or amended to overcome the rejection under 35 U.S.C. 112(b) set forth in this Office action.
Claims 18, 19, and 42-44 are allowed.
The following is an examiner' s statement of reasons for allowance:
Claim 1 would be allowed because the prior art fails to disclose, either singly or in combination, the claimed intrauterine device for preventing egg fertilization comprising a membrane having a proximal portion closer to an elongated tail portion and a distal portion having a convex end, and a frame supporting the membrane and having first and second arms movable from a first position to a second more expanded position, wherein the first and second arms are non-planar such that each the first and second arms has a bend at an intermediate portion thereof so the intermediate portions lie in a different plane than a proximal portion of the first and second arms, respectively, and wherein the first and second arms each terminate in a bead at distalmost ends thereof and a distalmost end of the membrane terminates proximal of the distalmost ends of the first and second beads in combination with the other limitations.
Claims 3, 7, and 32-41 would be allowable upon the allowance of claim 1.
Claim 18 is allowed because the prior art fails to disclose, either singly or in combination, the claimed intrauterine device for preventing egg fertilization in combination with a delivery system comprising a membrane having a proximal portion and a distal portion having a convex end, an elongated tail portion positioned proximal of the membrane, a frame having first and second arms supporting the membrane and having first and second arms movable from a first position to a second more expanded position such that the membrane is supported between the first and second arms, a delivery tube having an elongated slot formed in a side wall thereof and configured to receive the tail portion, and an outer tube positioned over the delivery tube and overlying the slot in a delivery condition of the membrane to retain the tail portion within the delivery tube in combination with the other claimed limitations.
Claims 19 and 42-44 are allowed based on their dependence from allowed claim 18.
The closest prior art of record is Morris et al. (US 4,038,978) as discussed in the Office action mailed December 19, 2025. However, Morris fails to teach that a distalmost end of the membrane (30) terminates proximal of the distalmost ends of the first and second beads (18’, 20’) as required by independent claim 1 and an elongated slot formed in a side wall the delivery tube (45) and configured to receive the tail portion (12) as required by independent claim 18.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Conclusion
Applicant’s amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Keri J. Nelson whose telephone number is 571-270-3821. The examiner can normally be reached Monday - Friday, 9am - 4pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Rachael E. Bredefeld, can be reached at 571-270-5237. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KERI J NELSON/Primary Examiner, Art Unit 3786 7/2/2026
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