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 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.
Claims 1-21 are rejected under 35 U.S.C. 103 as being unpatentable over Pilgeram et al. (10,167,582) in view of Reeves et al. (2005/0148922).
Regarding claim 1, Pilgeram et al. disclose a multifilament surgical suture, the multifilament suture comprising: a plurality of filaments combined together in a twined pattern (see Abstract; at least column 2, lines 29–40; and least figures 1-4). However, Pilgeram et al. fail to disclose at least one filament of the plurality of filaments comprises milkweed fibers. Attention is drawn to Reeves et al., who teach wound dressings comprising milkweed fibers, alone or blended with other fibers, to achieve absorbency, biocompatibility, and mild hemostatic action (see Abstract and at least paragraphs [0010]–[0015]). Therefore, the use of milkweed fibers is established as known in surgical and medical applications. Thus, Examiner contends one having ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to have made the twined suture of Pilgeram et al. to have included at least one filament of milkweed fiber, per the teachings of Reeves et al., since this material is shown as known and suitable for medical and surgical applications.
Regarding claims 2-7, the specific fibers of these claims are all known fibers materials. Examiner notes it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
Regarding claims 8-11, Examiner contends the use of coatings on sutures and other surgical articles is well known in the art.
Regarding claims 12 and 18-21, Examiner contends forming a mesh using filament materials is known in the art.
Regarding claims 13-17, the specific fibers of these claims are all known fibers materials. Examiner notes it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
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.
Claims 1-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-22 of U.S. Patent No. 12,246,100. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-4, 6, 8-16, 18, and 19 are more broad than, and thus anticipated by the claims of the patent (see the claim mapping chart below) and additionally Examiner contends it would have been obvious to have recited the limitations of claims 5, 7, 17, 20, and 21 of the instant application in the patent claims.
Instant Application Claims 1-4, 6, 8-16, 18, and 19 Mapping to Patent Claims
INSTANT APPLICATION CLAIMS
U.S. PATENT 12,246,100 CLAIMS
1
1-3 and 22
2
4
3
5
4
6
6
7
8
8
9
11
10
9
11
10
12
13
13
14-16
14
17
15
18
16
19
18
20
19
21
Regarding claims 5, 7, 17, 20, and 21, the claims of the patent do not recite the additional natural fibers as being animal-based fibers (claim 5) or mineral based fibers (claims 7 and 17) and the claims also do not recite the mesh patterns (claim 20) or corrugation (claim 21). However, Examiner contends these features (the additional fiber materials or the mesh structural features) were well known in the art before the effective filing date of the claimed invention, and therefore Examiner finds it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have claimed those features in the claims of the patent.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See the attached PTO-892 for a general showing of the state of the art of sutures.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RYAN J SEVERSON whose telephone number is (571)272-3142. The examiner can normally be reached Monday-Friday 6:00-2:00 central.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jackie Ho can be reached at (571) 272-4696. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Ryan J. Severson/Primary Examiner, Art Unit 3771