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 INTERPRETATION
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.
No claim limitation has been interpreted under 35 U.S.C. 112(f) because each term (e.g., ‘fastener,’ ‘connector,’ ‘receiver’) connotes sufficient structure to a POSITA. See MPEP § 2181. If applicant contends otherwise, please point to supporting disclosure.”
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(s) 1 is/are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 5 of U.S. Patent No. 12,150,639. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims do not require the strap to encircle the ring and a portion of the film.
Instant Application 18/958601
Corresponding Claims of US Patent 12,150,639
1. A tissue containment bag comprising: a ring having an inner periphery delimiting an open end, the ring being deformable from an uncompressed state in which the open end delimited by the ring is unobstructed to a compressed state in which the open end delimited by the ring is partially obstructed; a film connected to the ring to form an enclosure having an interior and a closed end, the interior of the enclosure being accessible through the open end delimited by the ring, the film and the interior of the enclosure being extendable to a deployed state in which a distalmost end of the film extends away from the ring from a confined state in which the film including the distalmost end is confined to a position adjacent to ring; and a strap comprising a fastener, the strap being connected to the ring, having a fastened state in which the strap in the fastened state secures the ring in the compressed state and, simultaneously, the film in the confined state, and having an unfastened state in which the strap, simultaneously, releases the ring from the compressed state and the film from the confined state, the fastener comprising a connector and a receiver and configured to releasably attach the strap from the fastened state to the unfastened state, releasing the ring from the compressed state and the film from the confined state.
1. A tissue containment bag comprising: a ring having an inner periphery delimiting an open end, the ring being deformable from an uncompressed state in which the open end delimited by the ring is unobstructed to a compressed state in which the open end delimited by the ring is partially obstructed; a film connected to the ring to form an enclosure having an interior and a closed end, the interior of the enclosure being accessible through the open end delimited by the ring, the film and the interior of the enclosure being extendable to a deployed state in which a distalmost end of the film extends away from the ring from a confined state in which the film including the distalmost end is confined to a position adjacent to ring; and a strap connected and encircling the ring and a portion of the film, with the strap being textured relative to a smooth outer surface of the film, the strap having a fastened state in which the strap in the fastened state secures the ring in the compressed state and, simultaneously, the film in the confined state and the strap has an unfastened state in which the strap, simultaneously, releases the ring from its compressed state and the film from its confined state.
3.The tissue containment bag of claim 1 wherein the strap comprises a fastener attachment to releasably attach the strap from the fastened state to the unfastened state.
4. The tissue containment bag of claim 3 wherein the inner periphery of the ring has a diameter and the strap has a length greater than the diameter of the inner periphery of the ring.
5. The tissue containment bag of claim 4 wherein the strap has an outer surface and an inner surface and the fastener attachment comprises a connector and a receiver disposed on the inner surface of the strap, the connector being disposed near a first end of the strap and the receiver being disposed near a second end of the strap.
Claim(s) 12 and 13 is/are rejected on the ground of nonstatutory double patenting as being unpatentable over claim(s) 14 of U.S. Patent No. 12,150,639. The applications are commonly owned. This is an actual NSDP rejection. A terminal disclaimer in compliance with 37 CFR 1.321(d) would be required to overcome the rejection. Claim 14 of US Patent No. 12,150,639 recites all the limitations of claim 12 except that it fails to disclose that “another end of the cord is attached to a tag”. However, Kessler et al. (US 2017/0224321A1, “Kessler”) teaches a containment bag (18; Fig. 1) including a cord (316; Fig. 59) that is attached to the ring (edge of the bag) at one end and attached to a tag (318) at the other end (Fig. 1). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have provided the cord of U.S. Patent No. 12,150,639 with a tag, as taught by Kessler, to provide means for manipulating and grasping the cord.
Instant Application 18/958601
Corresponding Claims of US Patent 12,150,639
12. A tissue containment bag comprising: a ring having an inner periphery delimiting an open end, the ring being deformable from an uncompressed state in which the open end delimited by the ring is unobstructed to a compressed state in which the open end delimited by the ring is partially obstructed; a film connected to the ring to form an enclosure having an interior and a closed end, the interior of the enclosure being accessible through the open end delimited by the ring, the film and the interior of the enclosure being extendable to a deployed state in which a distalmost end of the film extends away from the ring from a confined state in which the film including the distalmost end is confined to a position adjacent to ring; and a strap comprising a fastener, the strap being connected to the ring, having a fastened state in which the strap in the fastened state secures the ring in the compressed state and, simultaneously, the film in the confined state, and having an unfastened state in which the strap, simultaneously, releases the ring from the compressed state and the film from the confined state, the fastener comprising a connector and a receiver and configured to releasably attach the strap from the fastened state to the unfastened state, releasing the ring from the compressed state and the film from the confined state.
A tissue containment bag comprising: a ring having an inner periphery delimiting an open end, the ring being deformable from an uncompressed state in which the open end delimited by the ring is unobstructed to a compressed state in which the open end delimited by the ring is partially obstructed; a film connected to the ring to form an enclosure having an interior and a closed end, the interior of the enclosure being accessible through the open end delimited by the ring, the film and the interior of the enclosure being extendable to a deployed state in which a distalmost end of the film extends away from the ring from a confined state in which the film including the distalmost end is confined to a position adjacent to ring; and a strap connected and encircling the ring and a portion of the film, with the strap being textured relative to a smooth outer surface of the film, the strap having a fastened state in which the strap in the fastened state secures the ring in the compressed state and, simultaneously, the film in the confined state and the strap has an unfastened state in which the strap, simultaneously, releases the ring from its compressed state and the film from its confined state.
3.The tissue containment bag of claim 1 wherein the strap comprises a fastener attachment to releasably attach the strap from the fastened state to the unfastened state.
4. The tissue containment bag of claim 3 wherein the inner periphery of the ring has a diameter and the strap has a length greater than the diameter of the inner periphery of the ring.
5. The tissue containment bag of claim 4 wherein the strap has an outer surface and an inner surface and the fastener attachment comprises a connector and a receiver disposed on the inner surface of the strap, the connector being disposed near a first end of the strap and the receiver being disposed near a second end of the strap.
6. The tissue containment bag of claim 5 wherein the first end of the strap is connected to the ring and the second end of the strap is not connected to the ring.
8. The tissue containment bag of claim 6 further comprising a tab connected to the ring at a position opposite of the strap, the strap having a length longer than a length of the tab.
9. The tissue containment bag of claim 8 wherein the tab has a loop defining an opening through which the strap is threadable there through.
10. The tissue containment bag of claim 9 wherein, with the strap threaded through the loop, the ring is in a partially compressed state in which the open end delimited by the ring is obstructed, no longer unobstructed in its initial uncompressed state, and less obstructed than the ring in the compressed state.
14. The tissue containment bag of claim 10 further comprising a cord attached to the ring, the strap having a length shorter than a length of the cord.
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.
Claim(s) 1, 6, and 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Turner (US 2010/0219091A1) in view of Campbell (US 4,211,091)
Regarding claim 1, Turner discloses a tissue containment bag including a ring (130; Fig. 13) having an inner periphery delimiting an open end (102). The ring is deformable from an uncompressed state (Fig. 17) in which the open end delimited by the ring is unobstructed to a compressed state (Fig. 18; [0050]) in which the open end delimited by the ring is partially obstructed. A film [0009, 0044] is connected to the ring to form an enclosure having an interior and a closed end. The interior of the enclosure being accessible through the open end delimited by the ring. The film and the interior of the enclosure being extendable to a deployed state (Figs. 19-21) in which a distalmost end of the film extends away from the ring from a confined state (Fig. 18) in which the film including the distalmost end is confined to a position adjacent to ring. However, Turner does not disclose a strap including a fastener, the strap connected to the ring, having a fastened state in which the strap in the fastened state secures the ring in the compressed state and, simultaneously, the film in the confined state, and having an unfastened state in which the strap, simultaneously, releases the ring from the compressed state and the film from the confined state, the fastener includes a connector and a receiver and is capable of releasably attaching the strap from the fastened state to the unfastened state, releasing the ring from the compressed state and the film from the confined state.
In the same field of endeavor, foldable bags, Campbell teaches a foldable bag (10) including a ring around an opening and a film connected to the ring to form an enclosure (Fig. 5). A strap (44; C3:L33-35) is attached and affixed to the ring, the upper portion of the wall (28) of the bag. The strap includes a fastener including a connector (48; C3:L41-50) and a receiver (50; C3:L45-48). The strap has a fastened state in which the strap in the fastened state secures the ring in the compressed state and, simultaneously, the film in the confined state (C3;L35-55).The strap having an unfastened state in which the strap, simultaneously, releases the ring from the compressed state and the film from the confined state (Fig. 5; C3:L30-68). The fastener is capable of releasably attaching the strap from the fastened state to the unfastened state and releasing the ring from the compressed state and the film from the confined state. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of claimed invention to have provided the bag of Turner with a strap, as taught by Campbell, to provide means for releasably roll or fold the bag while carrying or transporting the bag.
The proposed modification is a predictable use of prior-art elements according to their established functions (KSR, 550 U.S. at 417). A POSITA designing a surgical containment bag that must be stored and deployed in a controlled manner would have found it obvious to add a releasable strap known to secure flexible bag material around an opening to stabilize the collapsed ring and folded film together, thereby controlling deployment and transport, with a reasonable expectation of success. See MPEP § 2143.”
Although Campbell relates to non-surgical foldable bags, it is reasonably pertinent to the problem of managing flexible bag material and securing an opening for transport and storage—problems shared with surgical containment bags. See MPEP § 2141.01(a).
Regarding claim 6, the combination of Turner and Campbell discloses that the fastener releasably connects the strap to itself (C3;L35-55; Campbell).
Regarding claim 9, the combination of Turner and Campbell discloses that the fastener is capable of being covered by the strap with the strap in the fastened state (Fig. 5, 7; Campbell).
Claim(s) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Turner in view of Campbell, as applied to claim 1 above, and further in view of Hubbard et al. (US 4,872,599, “Hubbard”).
Regarding claim 10, the combination of Turner and Campbell does not disclose that the strap is made of laminated fabric. In the same field of endeavor, bags, Hubbard teaches straps that are formed of flexible, laminated fabric (abs, C2;L55-57). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have substituted the material of the strap of the combination of Turner and Campbell with laminated fabric, as taught by Hubbard, as this modification involves the simple substitution of one material for another for the predictable result of providing a flexible strap to releasably secure folded or rolled bag material to stabilize components during transport or insertion into a procedure site.
Claim(s) 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Turner in view of Campbell, as applied to claim 1 above, and further in view of Fleming et al. (US 2012/0083795A1, “Fleming”).
Regarding claim 11, the combination of Turner and Campbell discloses that the film is monolithic [0052] but does not disclose that the film is impermeable. In the same field of endeavor, bags, Fleming teaches a retrieval bag formed of a film or sheet having an impermeable barrier [0040]. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have provided the material of the film of the combination of Turner and Campbell with an impermeable barrier, as taught by Fleming, to provide means for being impervious to penetration.
Claim(s) 1, 6 and 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kessler et al. (US 2017/0224321A1) in view of Campbell (US 4,211,091).
Regarding claim 1, Kessler discloses a tissue containment bag including a ring (314; Fig. 56; [0332, 0336]) having an inner periphery delimiting an open end. The ring is deformable from an uncompressed state [0332] in which the open end delimited by the ring is unobstructed to a compressed state [0332-0337] in which the open end delimited by the ring is partially obstructed. A film (310; [0337]) is connected to the ring to form an enclosure having an interior and a closed end. The interior of the enclosure being accessible through the open end delimited by the ring. The film and the interior of the enclosure being extendable to a deployed state (Figs. 59) in which a distalmost end of the film extends away from the ring from a confined state (Fig. 59) in which the film including the distalmost end is confined to a position adjacent to ring. However, Kessler does not disclose a strap including a fastener, the strap connected to the ring, having a fastened state in which the strap in the fastened state secures the ring in the compressed state and, simultaneously, the film in the confined state, and having an unfastened state in which the strap, simultaneously, releases the ring from the compressed state and the film from the confined state, the fastener includes a connector and a receiver and is capable of releasably attaching the strap from the fastened state to the unfastened state, releasing the ring from the compressed state and the film from the confined state.
In the same field of endeavor, foldable bags, Campbell teaches a foldable bag (10) including a ring around an opening and a film connected to the ring to form an enclosure (Fig. 5). A strap (44) is attached and affixed to the ring, the upper portion of the wall (28) of the bag. The strap includes a fastener including a connector (48) and a receiver (50). The strap has a fastened state in which the strap in the fastened state secures the ring in the compressed state and, simultaneously, the film in the confined state (C3;L35-55).The strap having an unfastened state in which the strap, simultaneously, releases the ring from the compressed state and the film from the confined state (Fig. 5). The fastener is capable of releasably attaching the strap from the fastened state to the unfastened state and releasing the ring from the compressed state and the film from the confined state. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of claimed invention to have provided the bag of Kessler with a strap, as taught by Campbell, to provide means for releasably roll or fold the bag while carrying or transporting the bag.
The proposed modification is a predictable use of prior-art elements according to their established functions (KSR, 550 U.S. at 417). A POSITA designing a surgical containment bag that must be stored and deployed in a controlled manner would have found it obvious to add a releasable strap known to secure flexible bag material around an opening to stabilize the collapsed ring and folded film together, thereby controlling deployment and transport, with a reasonable expectation of success. See MPEP § 2143.”
Although Campbell relates to non-surgical foldable bags, it is reasonably pertinent to the problem of managing flexible bag material and securing an opening for transport and storage—problems shared with surgical containment bags. See MPEP § 2141.01(a).
Regarding claim 6, the combination of Kessler and Campbell discloses that the fastener releasably connects the strap to itself (C3;L35-55; Campbell).
Regarding claim 9, the combination of Kessler and Campbell discloses that the fastener is capable of being covered by the strap with the strap in the fastened state (Fig. 5, 7; Campbell).
Claim(s) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kessler in view of Campbell, as applied to claim 1 above, and further in view of Hubbard et al. (US 4,872,599, “Hubbard”).
Regarding claim 10, the combination of Kessler and Campbell does not disclose that the strap is made of laminated fabric. In the same field of endeavor, bags, Hubbard teaches straps that are formed of flexible, laminated fabric (abs, C2;L55-57). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have substituted the material of the strap of the combination of Kessler and Campbell with laminated fabric, as taught by Hubbard, as this modification involves the simple substitution of one material for another for the predictable result of providing a flexible strap to releasably secure folded or rolled bag material to stabilize components during transport or insertion into a procedure site.
Claim(s) 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kessler in view of Campbell, as applied to claim 1 above, and further in view of Fleming et al. (US 2012/0083795A1, “Fleming”).
Regarding claim 11, the combination of Kessler and Campbell discloses that the film is monolithic [0337] but does not disclose that the film is impermeable. In the same field of endeavor, bags, Fleming teaches a retrieval bag formed of a film or sheet having an impermeable barrier [0040]. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have provided the material of the film of the combination of Kessler and Campbell with an impermeable barrier, as taught by Fleming, to provide means for being impervious to penetration.
Allowable Subject Matter
Claim(s) 2-5, 7, 8 and 14-20 is/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
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Duty (US 2005/0028910A1) and Shibley et al. (US 2013/0184536A1) discloses retrieval bags having means to be folded or rolled.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOCELIN C TANNER whose telephone number is (571)270-5202. The examiner can normally be reached M-F 8am-4pm.
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/JOCELIN C TANNER/Primary Examiner, Art Unit 3771