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 .
Status of Claims
Claims 18-31 are pending in the application.
Claims 18-31 are examined on the merits.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, or 365(c) is acknowledged.
Information Disclosure Statement
The information disclosure statement(s) (IDS) submitted on 02/24/2025 in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement(s) has/have been considered by the examiner.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the “third elliptical shape, wherein the third elliptical shape is larger than the second elliptical shape” must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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(s) 18-31 is/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 18 recites the limitation “A porous pad for the treatment of a wound using negative pressure” which is indefinite. There is not sufficient antecedent basis for “treatment” in the claim. The limitation has been examined below as if it read -- A porous pad for [[a treatment of a wound using negative pressure --.
Claim(s) 19-24 is/are rejected as being dependent from claim 18 and therefor including all the limitation thereof.
Claim 23 recites the limitation “the plurality of cuts comprises a second set of cuts forming a second elliptical shape” which is indefinite. It is unclear if the claimed “second set of cuts” same or different from the “second set of cuts” introduced in claim 18. According to ¶0024 and Fig. 2 of Applicant’s published application, cuts 202a-d form a second elliptical shape, and the second elliptical shape is larger the first elliptical shape formed from cuts 210a-d. The limitation has been examined below as if it read -- the plurality of cuts comprises a [[third set of cuts forming a second elliptical shape --.
Claim 24 recites the limitation “the plurality of cuts comprises a third set of cuts forming a third elliptical shape, wherein the third elliptical shape is larger than the second elliptical shape” which is indefinite. According to ¶0024 and Fig. 2 of Applicant’s published application, there are two elliptical shapes. Cuts 210a-d form a first elliptical shape, cuts 202a-d form a second elliptical shape, and wherein the second elliptical shape is larger than the first elliptical shape. The specification and the drawings do not discuss/show the “third elliptical shape”. Claim 24 cannot be evaluated with respect to prior art at this time as Examiner is unable to make a proper comparison between the claim and the prior art due to 112(b) issued explained above.
Claim 25 recites the limitation “A system for the treatment of a wound using negative pressure” which is indefinite. There is not sufficient antecedent basis for “treatment” in the claim. The limitation has been examined below as if it read -- A system for [[a treatment of a wound using negative pressure --.
Claim(s) 26-31 is/are rejected as being dependent from claim 25 and therefor including all the limitation thereof.
Claim 30 recites the limitation “the plurality of cuts comprises a second set of cuts forming a second elliptical shape” which is indefinite. It is unclear if the claimed “second set of cuts” same or different from the “second set of cuts” introduced in claim 18. According to ¶0024 and Fig. 2 of Applicant’s published application, cuts 202a-d form a second elliptical shape, and the second elliptical shape is larger the first elliptical shape formed from cuts 210a-d. The limitation has been examined below as if it read -- the plurality of cuts comprises a [[third set of cuts forming a second elliptical shape --.
Claim 31 recites the limitation “the plurality of cuts comprises a third set of cuts forming a third elliptical shape, wherein the third elliptical shape is larger than the second elliptical shape” which is indefinite. According to ¶0024 and Fig. 2 of Applicant’s published application, there are two elliptical shapes. Cuts 210a-d form a first elliptical shape, cuts 202a-d form a second elliptical shape, and wherein the second elliptical shape is larger than the first elliptical shape. The specification and the drawings do not discuss/show the “third elliptical shape”. Claim 31 cannot be evaluated with respect to prior art at this time as Examiner is unable to make a proper comparison between the claim and the prior art due to 112(b) issued explained above.
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 18 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 12 of U.S. Patent No. 8791315.
Although the claims at issue are not identical, they are not patentably distinct from each other because they are coextensive in scope (i.e. the claims of the reference patent explicitly/implicitly disclose all the claimed limitations).
Regarding instant claim 18, claim 12 of the reference patent discloses all of the limitations of instant claim 18.
Examiner notes that the scope of the claimed “first set of four cuts forming a first elliptical shape and comprising one cut in each of the four quadrants” encompass “a plurality of arcuate inner cuts or perforations having an elliptical shape …, the plurality of arcuate inner cuts or perforations comprising four inner cuts …, wherein an inner cut is located in each of the four quadrants ” and the claimed “second set of cuts comprising a fifth cut and a sixth cut symmetrically disposed on opposite sides of the minor axis” encompass “an upper arcuate cut or perforation and a lower arcuate cut or perforation symmetrically arranged about the minor axis located at opposite ends of the pad”. Thus, the disclosed “a plurality of arcuate inner cuts or perforations having an elliptical shape …, the plurality of arcuate inner cuts or perforations comprising four inner cuts … , wherein an inner cut is located in each of the four quadrants” in the reference patent read on the claimed “first set of four cuts forming a first elliptical shape and comprising one cut in each of the four quadrants” and the disclosed “an upper arcuate cut or perforation and a lower arcuate cut or perforation symmetrically arranged about the minor axis located at opposite ends of the pad” in the reference patent reads on the claimed “second set of cuts comprising a fifth cut and a sixth cut symmetrically disposed on opposite sides of the minor axis”.
Thus, instant claim 18 and claim 12 of the reference patent are coextensive in scope.
Claim 25 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 9 of U.S. Patent No. 11484443.
Although the claims at issue are not identical, they are not patentably distinct from each other because they are coextensive in scope (i.e. the claims of the reference patent explicitly/implicitly disclose all the claimed limitations).
Regarding instant claim 25, claim 9 of the reference patent discloses all of the limitations of instant claim 25.
Examiner notes that the scope of the claimed “first set of four cuts forming a first elliptical shape and comprising one cut in each of the four quadrants” encompass “first plurality of cuts or perforations being arranged to delimit a first elliptical shape, …the first plurality of cuts or perforations comprising a first cut or perforation and a second cut or perforation … a third cut or perforation and a fourth cut or perforation and … the first and second cuts or perforations are symmetrically disposed on an opposite side of the minor axis from the third and fourth cuts or perforations”.
Thus, instant claim 25 and claim 9 of the reference patent are coextensive in scope.
Allowable Subject Matter
The reasons for indicating allowable subject matter are the same as those presented in the Notice of Allowance Office Action filed on 09/23/2022 for the parent application 17/009523 (U.S. Patent No. 11484443).
The following is a statement of reasons for the indication of allowable subject matter:
The closest prior art is Kaplan (US PGPUB 20090099519) and Samuelsen (US PAT 4699134).
Regarding claim 18, Kaplan in view of Samuelsen discloses a porous pad comprising a plurality of cuts and wherein the plurality of cuts comprising a first set of four cuts forming a first elliptical shape. The prior art of record when considered alone or in combination neither anticipates nor renders obvious the porous pad further comprising a second set of cuts comprising a fifth cut and a sixth cut symmetrically disposed on opposite sides of the minor axis, wherein the first set of four cuts is positioned between the fifth cut and the sixth cut, and wherein the fifth cut and the sixth cut extend through the major axis with the major axis. Examiner did not find any teachings/motivations to modify the porous pad to incorporate a fifth cut and a sixth cut symmetrically disposed on opposite sides of the minor axis, wherein the first set of four cuts is positioned between the fifth cut and the sixth cut, and wherein the fifth cut and the sixth cut extend through the major axis with the major axis.
No other prior art was located that fairly suggested the claimed invention in whole or in part, along with the requisite motivation for combining to render the claimed invention obvious.
Thus, claim 18 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
Regarding claim 25, Kaplan in view of Samuelsen discloses a system for treatment of a wound using negative pressure, comprises a wound contact layer, a porous pad comprising a plurality of cuts and wherein the plurality of cuts comprising a first set of four cuts forming a first elliptical shape. The prior art of record when considered alone or in combination neither anticipates nor renders obvious the porous pad further comprising a second set of cuts comprising a fifth cut and a sixth cut symmetrically disposed on opposite sides of the minor axis, wherein the first set of four cuts is positioned between the fifth cut and the sixth cut, and wherein the fifth cut and the sixth cut extend through the major axis with the major axis. Examiner did not find any teachings/motivations to modify the porous pad to incorporate a fifth cut and a sixth cut symmetrically disposed on opposite sides of the minor axis, wherein the first set of four cuts is positioned between the fifth cut and the sixth cut, and wherein the fifth cut and the sixth cut extend through the major axis with the major axis.
No other prior art was located that fairly suggested the claimed invention in whole or in part, along with the requisite motivation for combining to render the claimed invention obvious.
Thus, claim 25 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NHU Q TRAN whose telephone number is (571)272-2032. The examiner can normally be reached Monday-Thursday 8:00-5:00 (PST).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, SARAH AL-HASHIMI can be reached at (571) 272-7159. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NHU Q. TRAN/Examiner, Art Unit 3781
/CATHARINE L ANDERSON/Primary Examiner, Art Unit 3781
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