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/Restriction
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 1-14 & 20, drawn to an intravascular flow diverter, classified in A61F2/06.
II. Claims 15-19, drawn to a method of treating a main vessel sidewall aneurysm, classified in A61B17/12109.
The inventions are independent or distinct, each from the other because:
Inventions I and II are related as product and process of use. The inventions can be shown to be distinct if either or both of the following can be shown: (1) the process for using the product as claimed can be practiced with another materially different product or (2) the product as claimed can be used in a materially different process of using that product. See MPEP § 806.05(h). In the instant case the product of Invention I can be used in a materially different procedure than that of Invention II, such as in a method of expanding a narrowing blood vessel within the body to re-establish proper blood flow.
Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply:
(a) the inventions have acquired a separate status in the art in view of their
different classification;
(c) the inventions require a different field of search (for example, searching different classes/subclasses or electronic resources, or employing different search queries);
(d) the prior art applicable to one invention would not likely be applicable to
another invention.
Applicant is advised that the reply to this requirement to be complete must include (i) an election of an invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
During a telephone conversation with Thomas Arno on 7/23/2026 a provisional election was made without traverse to prosecute the invention of Group I, claims 1-14 & 20. Affirmation of this election must be made by applicant in replying to this Office action. Claims 15-19 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
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 1-14 & 20 is 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 ‘wherein in the expanded configuration at least 95% of the pores by pore count over the at least 70% of the total cover area have an areal equivalent pore diameter of less than 20 microns’ then recites ‘wherein in the expanded configuration 5% to 20% of the pores by pore count over the at least 70% of the total cover area have an areal equivalent pore diameter of 12 or more microns’. These two limitations have an overlap region where it is indefinite as to what the claim is intending to claim. For example, when the first clause is read as ‘95%’ (from the range ‘at least 95%’) and the second clause is read as ‘20%’ you have ‘15%’ overlap of contradicting areal equivalent pore diameters since the 95% is ‘less than 20 microns’ and the 20% is 12 or more microns (‘or more’ can exceed the first clause’s limit of less than 20 microns). These parameters cannot co-exist since the ranges do not share a limit. This applies to all other instances where there is an overlap (i.e. when the percentages chosen from each clause total more than 100%). For this reason, the claim is deemed indefinite. Because it is unclear what applicant is trying to claim, the claim cannot be considered in view of the prior art until further clarification is made via an amendment to the claim.
Claim 20 recites ‘wherein in the expanded configuration 70% to 95% of the pores by pore count over the at least 70% of the total cover area have an areal equivalent pore diameter of less than 10 microns’ then recites ‘wherein in the expanded configuration 5% to 30% of the pores by pore count over the at least 70% of the total cover area have an areal equivalent pore diameter of 10 microns or more’. These two limitations have an overlap region where it is indefinite as to what the claim is intending to claim. For example, when the first clause is read as ‘95%’ and the second clause is read as ‘30%’ you have a ‘25%’ overlap of contradicting areal equivalent pore diameters since the 95% is ‘less than 10 microns’ and the 30% is ‘10 microns or more’. These parameters cannot co-exist since the ranges do not share a limit. This applies to all other instances where there is an overlap (i.e. when the percentages chosen from each clause total more than 100%). For this reason, the claim is deemed indefinite. Because it is unclear what applicant is trying to claim, the claim cannot be considered in view of the prior art until further clarification is made via an amendment to the claim.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. WO 97/17912 is considered an example of pertinent art - Fig. 1 showing a wire frame covered by a cover having a pore size range falling in the scope of applicant’s invention (page 8, line 18 to page 9, line 2).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ASHLEY LAUREN FISHBACK whose telephone number is (571)270-7899. The examiner can normally be reached M-F 7:30a-3:30p.
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, Darwin Erezo can be reached at (571) 272-4695. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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ASHLEY LAUREN FISHBACK
Primary Examiner
Art Unit 3771
/ASHLEY L FISHBACK/Primary Examiner, Art Unit 3771 July 24, 2026
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