DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Election/Restrictions
Applicant’s election without traverse of Group I in the reply filed on 07/07/2026 is acknowledged.
Claims 13-18 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 07/07/2026.
Claim Objections
Claims 2-3 and 8-10 are objected to because of the following informalities:
Claim 2, line 2, “the” should be inserted before “at least two closed shapes”.
Claim 3, line 2, “the” should be inserted before “at least two closed shapes”.
Claim 3, line 3, “the” should be inserted before “at least two closed shapes”.
Claim 8, line 3, “a” before “urethral implant” should “the”.
Claim 8, line 9, “figuration” should read “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.
Claim 6 and 11-12 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 6 recites the limitation "the wires" in lines 1. There is insufficient antecedent basis for this limitation in the claim.
The limitation of claim 11, line 1 of “The delivery system…” is indefinite because the claim depends from claim 1 which is directed to “A urethral implant…”. For examination purposes, it is assumed that limitation is intended to depend from claim 8 directed to “A delivery system…”.
The limitation of claim 12, line 1 of “The delivery system…” is indefinite because the claim depends from claim 1 which is directed to “A urethral implant…”. For examination purposes, it is assumed that limitation is intended to depend from claim 8 directed to “A delivery system…”.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of pre-AIA 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of application for patent in the United States.
Claim(s) 1-12 are rejected under pre-AIA 35 U.S.C. 102(b) as being anticipated by US 7,179,275 (McGuckin).
1. An implant (filter 10) capable of use in a urethra (e.g., capability since filter 10 has an expanded memorized configuration from its collapsed configuration at col. 5, lns. 12-26 and col. 7, lns. 48-53 such that it is capable of use in any body passage like the urethra) configured for (or at least capable of) implantation within a constricted location of a urethra (col. 5, lns. 12-26 and col. 7, lns. 48-53), comprising a distal end (e.g., left end in FIG. 1), a proximal end (e.g., right end in FIG. 1) and at least two closed shapes (e.g., closed shapes formed by strips 14);
said at least two closed shapes are coupled between said distal end and said proximal end (FIG. 1-2; col. 5, lns. 12-26 and col. 7, lns. 48-53);
said at least two closed shapes are configured to be compressible into a compressed configuration (FIG. 3A-3B; col. 5, lns. 12-15);
said at least two shapes are configured to expand from said compressed configuration to an expanded configuration (FIG. 1-2; col. 5, lns. 12-26 and col. 7, lns. 48-53) for applying (or at least capable applying) continuous pressure on at least one of a urethral wall, tissue surrounding the urethral wall, a bladder neck, and a prostate gland, in said expanded configuration (FIG. 1-3B; col. 5, lns. 12-26 and col. 7, lns. 48-53).
2. The urethral implant comprises at least two wires (strips 14) extending between the proximal end and the distal end, said at least two wires forming the at least two closed shapes (FIG. 1-3B; col. 5, lns. 12-26 and col. 7, lns. 48-53).
3. The urethral implant comprises at least three wires (strips 14), said at least three wires forming the at least two closed shapes in which one of said at least three wires is a coupling between the at least two closed shapes (FIG. 1-3B; col. 5, lns. 12-26 and col. 7, lns. 48-53).
4. The urethral implant has at least one wire (strip 14) extending radially outwardly from a center of the urethral implant (FIG. 1).
5. The urethral implant comprises at least one anchor (ribs 192 of FIG. 11A or anchoring elements 172 of FIG. 8) configured for anchoring the urethral implant into surrounding tissues preventing migration of the urethral implant (FIG. 8; col. 6, lns. 27-40)(FIG. 11A-11B; col. 9, lns. 21-43).
6. A shape of the wires comprises a portion of a circle, a butterfly wing shape, or a polygon, and/or a cross-section of the wires is round, rectangular, triangular, or any polygonal shape (FIG. 1-3A).
7. The is removable via extraction (col. 9-10, lns. 61-3).
8. A delivery system (system of FIG. 13-15) for delivering a urethral implant toward a constricted location of a urethra, comprising:
an implant (filter 10) capable of use in a urethra (e.g., capability since filter 10 has an expanded memorized configuration from its collapsed configuration at col. 5, lns. 12-26 and col. 7, lns. 48-53 such that it is capable of use in any body passage like the urethra) comprising a distal end (e.g., left end in FIG. 1), a proximal end (e.g., right end in FIG. 1) and at least two closed shapes (e.g., closed shapes formed by strips 14); said at least two closed shapes are coupled between said distal end and said proximal end (FIG. 1); said at least two closed shapes are configured to be compressible into a compressed configuration (FIG. 3A-3B; col. 5, lns. 12-15), and said at least two shapes are configured to expand from said compressed configuration to an expanded configuration (FIG. 1-2; col. 5, lns. 12-26 and col. 7, lns. 48-53), wherein at least one of said distal end and said proximal end enables coupling with the delivery system (FIG. 13-15; col. 7-8, lns. 54-9); and
an implant sheath (delivery sheath 100) configured to hold said urethral implant in the compressed figuration (FIG. 13-15; col. 7-8, lns. 54-9).
9. The implant sheath enables delivery of said urethral implant to said constricted location (FIG. 13-15; col. 7-8, lns. 54-9).
10. The implant sheath enables extraction of said urethral implant (FIG. 13-15; col. 7-8, lns. 54-9 and col. 9-10, lns. 61-3).
11. The delivery system includes an external tube (delivery sheath 100) and an internal tube (“snare” at col. 9, lns. 47-60), wherein said internal tube is slidably coupled with said external tube (FIG. 13-15; col. 9, lns. 47-60).
12. The delivery system has a string (“snare” at col. 9, lns. 47-60) configured to couple with said distal end or said proximal end for enabling at least one of: said extraction of said urethral implant, guiding a delivery system for said extraction, and for anchoring said urethral implant (FIG. 5A-5B and 13-15; col. 9, lns. 47-60).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TODD J SCHERBEL whose telephone number is (571)270-7085. The examiner can normally be reached Mon - Fri 9:00-6:00.
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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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TJ SCHERBEL
Primary Examiner
Art Unit 3771
/TODD J SCHERBEL/Primary Examiner, Art Unit 3771
Prosecution Insights