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 .
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in parent Application No. 17/262,526, filed on 22 January 2021.
Specification
The disclosure is objected to because of the following informalities: On page 1, the status of the non-provisional parent application should be updated (the information should include the application number, the filing date and the patent number).
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.
Claim 5 is 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.
In claim 5, line 2, it is not clear what the term “foe” means or refers to.
Double Patenting
The non-statutory 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 non-statutory 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 non-statutory 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 non-statutory 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 e-Terminal Disclaimer may be filled out completely online using web-screens. An e-Terminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about e-Terminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-11 are rejected on the ground of non-statutory double patenting as being unpatentable over claims 1-9 of U.S. Patent No. 12,156,808 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the elimination of an element (i.e., elimination of providing a solution with average molecular weight of 5,000 – 200,00 g/mol; providing an electrospinning apparatus operating with humidity in the range of 40 – 60% at a temperature of 16 - 22°C; flow of 0.2 – 5 ml/h to 40 ml/h; a length of 50 – 6,000 mm; and a time period of 30 minutes to 4 hours) and its function is obvious if the function of the element is not desired (see MPEP §2144.04(II)(A)).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Naz et al (U.S. Patent Application Publication 2018/0274131 A1; Figures 1 a and 1b; paragraphs [0002] (method of making implants), [0027] (stent 12 is between layer 14 and layer 16) and [0028] (second and third sets of fibers are placed over stent 22 and first layer of fibers 24).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LEO B. TENTONI whose telephone number is (571)272-1209. The examiner can normally be reached 7:30-4:00 ET M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Christina A. Johnson can be reached at (571)272-1176. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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LEO B. TENTONI
Primary Examiner
Art Unit 1742
/LEO B TENTONI/Primary Examiner, Art Unit 1742
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