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 .
Specification
Applicant is reminded of the proper content of an abstract of the disclosure.
A patent abstract is a concise statement of the technical disclosure of the patent and should include that which is new in the art to which the invention pertains. The abstract should not refer to purported merits or speculative applications of the invention and should not compare the invention with the prior art.
If the patent is of a basic nature, the entire technical disclosure may be new in the art, and the abstract should be directed to the entire disclosure. If the patent is in the nature of an improvement in an old apparatus, process, product, or composition, the abstract should include the technical disclosure of the improvement. The abstract should also mention by way of example any preferred modifications or alternatives.
Where applicable, the abstract should include the following: (1) if a machine or apparatus, its organization and operation; (2) if an article, its method of making; (3) if a chemical compound, its identity and use; (4) if a mixture, its ingredients; (5) if a process, the steps.
Extensive mechanical and design details of an apparatus should not be included in the abstract. The abstract should be in narrative form and generally limited to a single paragraph within the range of 50 to 150 words in length.
See MPEP § 608.01(b) for guidelines for the preparation of patent abstracts.
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided.
The abstract of the disclosure is objected to because the abstract includes the numerical character “641” which should be deleted. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
Applicant has indicated co-pending applications in the first paragraph of the specification. The first page of the specification should be updated to clarify the status of all related applications noted in the first paragraph of the specification. The status of nonprovisional parent application(s) (whether patented or abandoned) should also be included. If a parent application and child has become a patent, the expression "now Patent No.____________" should follow the filing date of the parent application. If a parent application has become abandoned, the expression "now abandoned" should follow the filing date of the parent application. Applicant is required to update and clarify the status of all related applications noted in the first paragraph of the specification. Application no. 18/058,289 now Patent No. 12,329,678.
Claim Objections
Claim 1 is objected to because of the following informalities: IUD should read Intrauterine Device (IUD). Appropriate correction is required.
Claim 1 is objected to because of the following informalities: the sheath slider in line 20 should read the moveable sheath slider. Appropriate correction is required.
Claim 2 is objected to because of the following informalities: the sheath slider in lines 2 and 4 should read the moveable sheath slider. Appropriate correction is required.
Claim 2 is objected to because of the following informalities: user interface should read proximally positioned user interface. Appropriate correction is required.
Claim 12 is objected to because of the following informalities: user interface should read proximally positioned user interface. Appropriate correction is required.
Claim 19 is objected to because of the following informalities: IUD should read Intrauterine Device (IUD). 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 1-36 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 moveable sheath slider" in line 14 of the claim. There is insufficient antecedent basis for this limitation in the claim.
Claim 1 recites the limitation "the curved distal surface of the moveable sheath slider" in lines 19-20 of the claim. There is insufficient antecedent basis for this limitation in the claim.
Claim 19 recites the limitation "the curved distal surface of the moveable sheath slider" in lines 16-17 of the claim. There is insufficient antecedent basis for this limitation in the claim.
Claims 2-18 and 20-36 36 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 since they depend directly or indirectly on rejected base claims 1 and 19 and therefore, contains the same deficiencies.
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 obviousness-type 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); and 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 a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Claims 1, 3-8, 10-11, 13-14, 17-20, 23-28 and 31-36 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-2, 6-8, 10-21, 23-32 of U.S. Patent No. (12,329,678 B2). Although the conflicting claims are not identical, they are not patentably distinct from each other because the application claims are a broader recitation of the invention than that of the patented application.
Claim 1 of the instant application recites: an insertion device for inserting an IUD comprising: an elongated sheath having a proximal end and a distal end, a lumen extending between the proximal end and the distal end wherein the elongated sheath defines an axis for operation of the insertion device and wherein the IUD is positionable within the elongated sheath; an elongated inner member having a proximal end and a distal end disposable within the lumen of the elongated sheath wherein a proximal end of the IUD is positionable adjacent the distal end of the elongated inner member; and a proximally positioned user interface, wherein the proximally positioned user interface further comprises an elongated channel, wherein the elongated channel further comprises one or more cavities on one or more of a proximal end of the elongated channel and a distal end of the elongated channel wherein the one or more cavities are adapted and configured to house at least a portion of the moveable sheath slider; a moveable sheath slider moveable within the elongated channel wherein the moveable sheath slider has an upper surface, a lower surface and two side surfaces, further wherein the moveable sheath slider has a depression on an upper surface of the moveable sheath slider facing an exterior of the user interface, and a string control slider having a curved distal surface for abutting with the curved distal surface of the moveable sheath slider when the sheath slider is adjacent the string control slider wherein the string control slider further comprises an interiorly positioned hard stop.
Claim 1 of U.S. Patent No. (12,329,678 B2) recites: an insertion device for inserting an IUD comprising: an elongated sheath having a proximal end and a distal end, a lumen extending between the proximal end and the distal end wherein the elongated sheath defines an axis for operation of the insertion device and wherein the IUD is positionable within the elongated sheath; an elongated inner member having a proximal end and a distal end disposable within the lumen of the elongated sheath wherein a proximal end of the IUD is positionable adjacent the distal end of the elongated inner member; and a proximally positioned user interface, wherein the proximally positioned user interface further comprises an elongated channel, a moveable sheath slider moveable within the elongated channel wherein the moveable sheath slider has an upper surface, a lower surface and two side surfaces, further wherein the moveable sheath slider has a depression on an upper surface of the moveable sheath slider facing an exterior of the user interface, and a string control slider having a curved distal surface for abutting with the curved distal surface of the moveable sheath slider when the sheath slider is adjacent the string control slider wherein the string control slider further comprises an interiorly positioned hard stop.
Although the conflicting claims are not identical, they are not patentably distinct from each other because the difference between claim 1 of the current application and claim 1 of patent (‘678) lies in the fact that the patented claims include many more elements and is thus much more specific. Thus, the invention of claim 1 of patent (‘678) is in effect a “species” of the “generic” invention of current application claim 1. It has been held that the generic invention is “anticipated” by the “species". See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Since claim 1 of the current application is anticipated by claim 1 of patent (‘678), it is not patentably distinct from claim 1 of patent (‘678).
All of the limitations of claim 3 can be found in claim 10 of Patent No. (‘678).
All of the limitations of claim 4 can be found in claim 11 of Patent No. (‘678).
All of the limitations of claim 5 can be found in claim 12 of Patent No. (‘678).
All of the limitations of claim 6 can be found in claim 13 of Patent No. (‘678).
All of the limitations of claim 7 can be found in claim 14 of Patent No. (‘678).
All of the limitations of claim 8 can be found in claim 15 of Patent No. (‘678).
All of the limitations of claim 10 can be found in claim 16 of Patent No. (‘678).
All of the limitations of claim 11 can be found in claim 17 of Patent No. (‘678).
All of the limitations of claim 13 can be found in claim 6 of Patent No. (‘678).
All of the limitations of claim 14 can be found in claim 2 of Patent No. (‘678).
All of the limitations of claim 17 can be found in claim 7 of Patent No. (‘678).
All of the limitations of claim 18 can be found in claim 8 of Patent No. (‘678).
All of the limitations of claim 19 can be found in claim 18 of Patent No. (‘678).
All of the limitations of claim 20 can be found in claim 26 of Patent No. (‘678).
All of the limitations of claim 23 can be found in claim 27 of Patent No. (‘678).
All of the limitations of claim 24 can be found in claim 28 of Patent No. (‘678).
All of the limitations of claim 25 can be found in claim 29 of Patent No. (‘678).
All of the limitations of claim 26 can be found in claim 30 of Patent No. (‘678).
All of the limitations of claim 27 can be found in claim 31 of Patent No. (‘678).
All of the limitations of claim 28 can be found in claim 32 of Patent No. (‘678).
All of the limitations of claim 31 can be found in claim 23 of Patent No. (‘678).
All of the limitations of claim 32 can be found in claim 19 of Patent No. (‘678).
All of the limitations of claim 33 can be found in claim 20 of Patent No. (‘678).
All of the limitations of claim 34 can be found in claim 21 of Patent No. (‘678).
All of the limitations of claim 35 can be found in claim 24 of Patent No. (‘678).
All of the limitations of claim 36 can be found in claim 25 of Patent No. (‘678).
Claims 19-20, 22-28 and 30-31 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 2, 4-9, 10-12 and 14 of U.S. Patent No. (11,571,328 B2). Although the conflicting claims are not identical, they are not patentably distinct from each other because the application claims are a broader recitation of the invention than that of the patented application.
Claim 19 of the instant application recites an insertion device for inserting an IUD comprising: an elongated sheath having a proximal end and a distal end, a lumen extending between the proximal end and the distal end wherein the elongated sheath defines an axis for operation of the insertion device and wherein the IUD is positionable within the elongated sheath; an elongated inner member having a proximal end and a distal end disposable within the lumen of the elongated sheath wherein a proximal end of the IUD is positionable adjacent the distal end of the elongated inner member; and a proximally positioned user interface, wherein the proximally positioned user interface further comprises an elongated channel, a moveable sheath slider moveable within the elongated channel wherein the moveable sheath slider has an upper surface, a lower surface and two side surfaces, further wherein the moveable sheath slider has a depression on an upper surface of the moveable sheath slider facing an exterior of the user interface, a string control slider having a curved distal surface for abutting with the curved distal surface of the moveable sheath slider when the sheath slider is adjacent the string control slider wherein the string control slider further comprises one or more string control slider detent arms in an interior of the user interface and a rib, and one or more alignment surfaces, wherein the one or more alignment surfaces of the user interface is adapted and configured to mechanically complement the one or more alignment surfaces of the sheath.
Claim 2 of U.S. Patent No. (11, 571,328 B2) recites: an insertion device for inserting an IUD comprising: an elongated sheath having a proximal end and a distal end, a lumen extending between the proximal end and the distal end wherein the elongated sheath defines an axis for operation of the insertion device and wherein the IUD is positionable within the elongated sheath; an elongated inner member having a proximal end and a distal end disposable within the lumen of the elongated sheath wherein a proximal end of the IUD is positionable adjacent the distal end of the elongated inner member; a proximally positioned user interface, wherein the proximally positioned user interface further comprises an elongated channel, a moveable sheath slider with an upper surface, a lower surface, two side surfaces, and a depression on as the upper surface of the moveable sheath slider facing an exterior of the user interface, an exterior rail extending away from a first side surface of the two side surfaces of the moveable sheath slider, and a lateral detent arm extending away from a first side surface of the two side surfaces of the moveable sheath slider, and a string control slider having a distal interior facing slider channel operable to receive the exterior rail of the moveable sheath sliders wherein the exterior rail of the moveable sheath slider slidably engages the interiorly facing slider channel of the string control slider and the moveable sheath slider is moveable within the elongated channel of the user interface and within the interiorly facing slider channel of the string control slider.
Although the conflicting claims are not identical, they are not patentably distinct from each other because the difference between claim 19 of the current application and claim 2 of patent (‘328) lies in the fact that the patented claims include many more elements and is thus much more specific. Thus, the invention of claim 2 of patent (‘328) is in effect a “species” of the “generic” invention of current application claim 19. It has been held that the generic invention is “anticipated” by the “species". See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Since claim 19 of the current application is anticipated by claim 2 of patent ('328), it is not patentably distinct from claim 2 of patent ('328).
All of the limitations of claim 20 can be found in claim 4 of Patent No. (‘328).
All of the limitations of claim 22 can be found in claim 5 of Patent No. (‘328).
All of the limitations of claim 23 can be found in claim 6 of Patent No. (‘328).
All of the limitations of claim 24 can be found in claim 7 of Patent No. (‘328).
All of the limitations of claim 25 can be found in claim 8 of Patent No. (‘328).
All of the limitations of claim 26 can be found in claim 9 of Patent No. (‘328).
All of the limitations of claim 27 can be found in claim 10 of Patent No. (‘328).
All of the limitations of claim 28 can be found in claim 11 of Patent No. (‘328).
All of the limitations of claim 30 can be found in claim 12 of Patent No. (‘328).
All of the limitations of claim 31 can be found in claim 14 of Patent No. (‘328).
Allowable Subject Matter
Claims 2, 9, 12, 15-16, 21 and 29 are objected to as being dependent upon a rejected base claim, but would be allowable if 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 a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application.
Conclusion
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/OPHELIA A HAWTHORNE/Primary Examiner, Art Unit 3786