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
Applicant’s election of Invention II, claims 78-85, 87-101, 103, and 104, in the reply filed on 25 February 2026 is acknowledged. Because Applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 65-77 and 106-125 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected inventions, there being no allowable generic or linking claim.
Priority
Acknowledgment is made of applicant's claim for foreign priority based on an application filed in Sweden on 15 March 2013. It is noted, however, that applicant has not filed a certified copy of the SE 1350317-2 application as required by 37 CFR 1.55.
Specification
The disclosure is objected to because of the following informalities: Applicant is requested to amend the opening paragraph of the specification to indicate that parent application 17/377,455 has issued as U.S. Patent No. 12,318,572 (in the same manner as the other two U.S. applications mentioned in this paragraph).
Appropriate correction is required.
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which Applicant may become aware in the specification.
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 78-85, 87-101, 103, and 104 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 78 recites the limitation “fluid” in line 12. It is not clear if this is intended to refer to the previously recited “hydraulic fluid” or to a separate fluid.
Claim 78 also recites the limitation "the wall of the reservoir" in line 13. There is insufficient antecedent basis for this limitation in the claim; the claim only previously recites a movable wall portion.
Claim 78 also recites the limitation "the at least one movable wall portion" in line 16. There is insufficient antecedent basis for this limitation in the claim; the claim only previously recites a movable wall portion.
Claim 85 recites the limitation "the threaded member" in lines 2-3. There is insufficient antecedent basis for this limitation in the claim.
Claim 88 recites the limitation “the operation device” in line 2. It is not clear if this is intended to refer to the previously recited “hydraulic operation device” or to a separate device.
Claims 79-85, 87, and 88 are rejected by virtue of their dependence upon claim 78.
Claim 89 recites the limitation “fluid” in line 12. It is not clear if this is intended to refer to the previously recited “hydraulic fluid” or to a separate fluid.
Claim 89 also recites the limitation "the wall of the reservoir" in line 13. There is insufficient antecedent basis for this limitation in the claim; the claim only previously recites a movable wall portion.
Claim 89 also recites the limitation "the at least one movable wall portion" in line 16. There is insufficient antecedent basis for this limitation in the claim; the claim only previously recites a movable wall portion.
Claim 90 recites the limitation “a bellows” in line 2. It is not clear if this is intended to refer to the bellows recited in line 15 of claim 89 or to a separate bellows.
Claim 90 also recites the limitation "the threaded member" in lines 2-3. There is insufficient antecedent basis for this limitation in the claim.
Claim 99 recites the limitations “high velocity,” “low force,” “low velocity,” and “high force” in lines 2-3. The terms “high” and “low” are relative terms which render the claim indefinite. The terms are not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. The metes and bounds of a high/low velocity and a high/low force are not readily determinable.
Claim 104 recites the limitation “the operation device” in line 2. It is not clear if this is intended to refer to the previously recited “hydraulic operation device” or to a separate device.
Claims 90-101, 103, and 104 are rejected by virtue of their dependence upon at least one rejected base claim.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 82, 83, 100, and 101 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Each of these claims further specifies the type of electrical motor. However, the electrical motor is not positively recited as part of the claimed invention; the enclosure is merely adapted to hermetically enclose the electrical motor. Thus, these claims fail to provide any further structural limitations to the claimed invention. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Allowable Subject Matter
Claims 78-85, 87-101, 103, and 104 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) and 112(d) set forth in this Office action.
The following is a statement of reasons for the indication of allowable subject matter: it is known in the prior art to provide an implant for hydraulically constricting a urethra, wherein the implant includes a hydraulic constriction device, a hydraulic operation device including a reservoir for holding fluid, and a connecting portion between the hydraulic constriction device and the hydraulic operation device, wherein the reservoir comprises a movable wall portion for pumping fluid from the reservoir to the hydraulic constriction device (e.g., U.S. Pub. Nos. 2012/0116415 A1, 2009/0247817 A1). These references also teach that the reservoir can be part of an assembly that includes a motor/pump unit. However, neither these references, nor any other prior art of record, teaches or reasonably suggests such an operable implant wherein the hydraulic operation device comprises an enclosure adapted to hermetically enclose such an electrical motor, wherein a wall of the enclosure comprises at least a portion of a wall of the reservoir, and the movable wall portion is between the reservoir and the motor such that it separates the reservoir from a portion of the enclosure enclosing the motor, so as to seal the motor from the reservoir. Finegold et al. (U.S. No. 4,711,231) teaches a similar implant that comprises a sealed housing that encloses a reservoir and a motor, but fails to teach a hermetic enclosure, as well as the recited movable wall portion limitations.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to THADDEUS B COX whose telephone number is (571)270-5132. The examiner can normally be reached M-F 9am-6pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jason M. Sims can be reached at (571)272-7540. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/THADDEUS B COX/Primary Examiner, Art Unit 3791