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 .
Election/Restrictions
Claims 6-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 05/21/2026.
Applicant’s election without traverse of invention I, drawn to an adhesion device in the reply filed on 05/21/2026 is acknowledged.
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: “element transition mechanism” in claim 1.
The claim limitation “element transition mechanism” invokes 112(f) because the term “mechanism” is a generic placeholder without a specific structural meaning modified by the functional language “transition” or “transitioning”. Mechanism is further preceded by “element” which also does not have a specific structural meaning. Hence, “element transition mechanism” will be interpreted as one of the following per applicant’s patent application publication: “a balloon apparatus” ([0151]), “a shape memory insert” ([0224]), or “a capacitor plate assemblies” ([0242]).
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 Objections
Claim 1 is objected to because of the following informalities:
Claim #
Line #
Current
Suggested change
1
17
an expanded configuration
and an expanded configuration
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.
Claims 1-5 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.
In claim 1, paragraph D., lines 1-3, the claim limitations “each element transition mechanism” and “selected transition mechanisms” render the claim indefinite as it is not clear if these refer to the singular “an element transition mechanism” in paragraph B., line 1, or different ones. For the purpose of prior art examination these limitations will be interpreted as “the element transition mechanism” and “selected transition mechanism”. Appropriate correction is required.
Claims 4-5 are rejected as being dependent on claim 1.
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 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 7, 8, and 11, with claim 11 depending on claim 8, and claim 8 depending on claim 7, and claim 7 depending on claim 1 of U.S. Patent No. 12185944 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because see the table below for similar language.
U.S. Patent No. 12185944 B2
Pending claims
1. An adhesion device comprising: A. a plurality of element block assemblies with each element block assembly releasably secured to at least one adjacent element block assembly, each element block assembly comprising: (i) a plurality of engagement elements with each engagement element having an elongated element activation section which extends monolithically from an element activation sheet and an elongated element deployment section which extends monolithically from an element deployment sheet, each element activation section being fused to a respective element deployment section within a respective element tip segment; (ii) an element transition mechanism disposed between an element activation sheet upper surface and an element deployment sheet lower surface with the element transition mechanism being operatively coupled to each engagement element, the element transition mechanism being configured to reversibly transition between a neutral configuration wherein the activation sheet upper surface is substantially adjacent to the deployment sheet lower surface an expanded configuration wherein the activation sheet upper surface and the deployment sheet lower surface are separated by a transition gap; and B. an element support body having an engagement surface and engaging the plurality of element block assemblies constraining each engagement element in a deployment state which is suitable for insertion into (or removal from) a target material with the associated transition mechanism disposed in the neutral configuration, and the element support body constraining each engagement element in an engagement state which is configured to mechanically capture surrounding target material with the associated transition mechanism disposed in the expanded configuration; and C. a user operated control system which is operatively coupled to each element transition mechanism, the control system being configured to reversibly transition selected element transition mechanisms from the neutral configuration to the expanded configuration.
7. The adhesion device of claim 1 wherein each element block assembly further comprises an element guide sheet.
8. The adhesion device of claim 7 wherein each element guide sheet includes a plurality of element guides with each element guide being operatively coupled to a respective engagement element, each element guide engaging the element block assembly and constraining each engagement element in a deployment state which is suitable for insertion into (or removal from) a target material with the associated transition mechanism disposed in the neutral configuration, and each element guide constraining each engagement element in an engagement state which is configured to mechanically capture surrounding target material with the associated transition mechanism disposed in the expanded configuration.
11. The adhesion device of claim 8 wherein the element support body encompasses each element guide sheet.
1. An adhesion device comprising: A. a plurality of element block assemblies, each element block assembly comprising: (i) a plurality of engagement elements with each engagement element having an elongated element activation section which extends monolithically from an element activation sheet and an elongated element deployment section which extends monolithically from an element deployment sheet, each element activation section being fused to a respective element deployment section within a respective element tip segment; and (ii) an element transition mechanism disposed between an element activation sheet upper surface and an element deployment sheet lower surface with the element transition mechanism operatively coupled to each engagement element, the element transition mechanism being configured to reversibly transition between a neutral configuration wherein the activation sheet upper surface is substantially adjacent to the deployment sheet lower surface an expanded configuration wherein the activation sheet upper surface and the deployment sheet lower surface are separated by a transition gap; B. a resilient element guide sheet having a plurality of element guides and engaging the plurality of element block assemblies constraining each engagement element in a deployment state which is suitable for insertion into (or removal from) a target material with the associated transition mechanism disposed in the neutral configuration, and the element guide sheet constraining each engagement element in an engagement state which is configured to mechanically capture surrounding target material with the associated transition mechanism disposed in the expanded configuration; C. an element support body encompassing the element deployment sheet and the element activation sheet; and D. a user operated control system which is operatively coupled to each element transition mechanism, the control system being configured to reversibly transition selected transition mechanisms from the neutral configuration to the expanded configuration.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Karp et al (US 20130331792 A1) teaches an adhesion device an element block assembly with a plurality of engagement element, however, these elements are not configured to reversibly transition between a neutral configuration and an expanded configuration, as the temperature activated shape memory elements expand when heated and do not return to the neutral configuration when cooled. Additionally, there is only element activation sheet and no element transition mechanism such as shape memory insert or capacitor plates.
Melsheimer (US 20110034860 A1) teaches an adhesion device with a plurality of engagement element, however, these elements are not configured to reversibly transition between a neutral configuration and an expanded configuration. Melsheimer teaches a balloon element transition mechanism but not between an element activation sheet upper surface and an element deployment sheet lower surface.
Shelton et al (US 20190029794 A1) teaches an adhesion device an element block assembly with a plurality of engagement element, however, these elements are not configured to reversibly transition between a neutral configuration and an expanded configuration, as the elements are not reversibly deployable, but rather degrade over time. Shelton teaches a balloon element transition mechanism but not between an element activation sheet upper surface and an element deployment sheet lower surface.
Anderson (US 20120324975 A1) teaches an adhesion device with a plurality of engagement elements and an element activation sheet upper surface and an element deployment sheet lower surface with each engagement element being reversibly transitionable, but does not teach an element transition mechanism (of a balloon, shape memory insert, or capacitor plate assemblies) in between the two sheets, but rather a polymer layer in between the two sheets, and furthermore does not teach a control system for the element transition mechanism.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RAIHAN R KHANDKER whose telephone number is (571)272-6174. The examiner can normally be reached Monday - Friday 8:00 AM - 5:00 PM.
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RAIHAN R. KHANDKER
Examiner
Art Unit 3771
/RAIHAN R KHANDKER/Examiner, Art Unit 3771
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