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` UNITED STATES PATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria1 Virginia 22313-1450
`wwwnsptogov
`
`APPLICATION NO.
`
`
`
`
` F ING DATE
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`
`
`
`CONF {MATION NO.
`
`08/461,402
`
`06/05/1995
`
`ANDREW H. CRAGG
`
`94— P0273US02
`
`6448
`
`54953
`
`7590
`
`01/19/2010
`
`BROOKS, CAMERON & HUEBSCH, PLLC
`1221 NICOLLET AVENUE
`SUITE 500
`MINNEAPOLIS, MN 55403
`
`EXAMINER
`
`SONNETT, KATHLEEN C
`
`ART UNIT
`
`3731
`
`MAIL DATE
`
`01/19/2010
`
`PAPER NUMBER
`
`DELIVERY MODE
`
`PAPER
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`PTOL—90A (Rev. 04/07)
`
`W.L. Gore & Associates, Inc.
`Exhibit 1014-1
`
`W.L. Gore & Associates, Inc.
`Exhibit 1014-1
`
`

`

`
`
`Office Action Summary
`
`Application No.
`
`Applicant(s)
`
`08/461,402
`
`CRAGG ET AL.
`
`Examiner
`
`KATHLEEN SONNETT
`
`Art Unit
`
`3731 -
`
`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE 3 MONTH(S) OR THIRTY (30) DAYS,
`WHICHEVER IS LONGER, FROM THE MAILING DATE OF THIS COMMUNICATION.
`Extensions of time may be available under the provisions of 37 CFR 1.136(a).
`In no event however may a reply be timely filed
`after SIX (6) MONTHS from the mailing date of this communication.
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any
`earned patent term adjustment. See 37 CFR 1.704(b).
`
`Status
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`1)IXI Responsive to communication(s) filed on 21 August 2009.
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`2a)I:I This action is FINAL.
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`2b)IZI This action is non-final.
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`3)I:I Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
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`closed in accordance with the practice under EX parte Quayle, 1935 CD. 11, 453 O.G. 213.
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`Disposition of Claims
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`4)IZI Claim(s) 89 and 91-95 is/are pending in the application.
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`4a) Of the above Claim(s) 91-95 is/are withdrawn from consideration.
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`5)I:I Claim(s)
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`is/are allowed.
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`6)IXI Claim(s) @ is/are rejected.
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`7)I:I Claim(s) _ is/are objected to.
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`8)I:I Claim(s) _ are subject to restriction and/or election requirement.
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`Application Papers
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`9)IXI The specification is objected to by the Examiner.
`
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`10)I:I The drawing(s) filed on
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`is/are: a)I:I accepted or b)I:I objected to by the Examiner.
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`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
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`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121(d).
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`11)I:I The oath or declaration is objected to by the Examiner. Note the attached Office Action or form PTO-152.
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`Priority under 35 U.S.C. § 119
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`12)I:I Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)—(d) or (f).
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`a)I:I All
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`b)I:I Some * c)I:I None of:
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`1.I:I Certified copies of the priority documents have been received.
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`2.I:I Certified copies of the priority documents have been received in Application No.
`
`
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`3.I:I Copies of the certified copies of the priority documents have been received in this National Stage
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`application from the International Bureau (PCT Rule 17.2(a)).
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`* See the attached detailed Office action for a list of the certified copies not received.
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`Attachment(s)
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`4) D Interview Summary (PTO-413)
`1) D Notice of References Cited (PTO-892)
`Paper No(s)/Mai| Date. _
`2) D Notice of Draftsperson‘s Patent Drawing Review (PTO-948)
`3) IZI Information Disclosure Statement(s) (PTO/SB/08)
`5) I:I Notice of Informal Patent Application
`
`Paper No(s)/Mai| Date 8/21/2009.
`6) D Other:
`U.S. Patent and Trademark Office
`
`PTOL-326 (Rev. 08-06)
`
`Office Action Summary
`
`Part of Paper No./Mai| Date 20100108
`W.L. Gore & Associates, Inc.
`Exhibit 1014-2
`
`W.L. Gore & Associates, Inc.
`Exhibit 1014-2
`
`

`

`Application/Control Number: 08/461,402
`
`Page 2
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`Art Unit: 3731
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`DETAILED ACTION
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`Continued Examination Under 37 CFR 1.114
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`1.
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`A request for continued examination under 37 CFR 1.114, including the fee set forth in
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`37 CFR 1.17(e), was filed in this application after allowance or after an Office action under EX
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`Parte Quay/e, 25 USPQ 74, 453 O.G. 213 (Comm'r Pat. 1935). Since this application is eligible
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`for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has
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`been timely paid, prosecution in this application has been reopened pursuant to 37 CFR 1.114.
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`Applicant's submission filed on 8/21/2009 has been entered.
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`2.
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`Claims 1-88 and 90 are canceled. Claims 89 and 91-95 are pending. Claims 91-95 are
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`withdrawn from consideration.
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`3.
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`It is noted that the allowability of claim 89 indicated in the Ex Parte Quayle action mailed
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`7/6/2009 has been withdrawn in view of the rejections presented below.
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`Change of address
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`4.
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`While the Office previously accepted the request for revocation of power of attorney, and
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`change of address, a review of the papers filed are defective. Specifically, the heading for the
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`papers filed list the first named inventor as “Goicoechoa” which is incorrect.
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`In addition, the
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`statement under 37 CFR 3.73(b) is defective, because it fails to list a proper chain of title from
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`the inventors to the current assignee. The Office records indicate at least one assignment
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`record has been omitted.
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`Priority
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`5.
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`Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or
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`under 35 U.S.C. 120, 121, or 365(c) is acknowledged. Applicant has not complied with one or
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`more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 120 as follows:
`
`W.L. Gore & Associates, Inc.
`Exhibit 1014-3
`
`W.L. Gore & Associates, Inc.
`Exhibit 1014-3
`
`

`

`Application/Control Number: 08/461,402
`Art Unit: 3731
`
`Page 3
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`6.
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`This application appears to be a division of Application No. 08/317,763, filed October 4,
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`1994. A later application for a distinct or independent invention, carved out of a pending
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`application and disclosing and claiming only subject matter disclosed in an earlier or parent
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`application is known as a divisional application or "division." The divisional application should,
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`among other conditions, set forth the portion of the earlier disclosure that is germane to the
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`invention as claimed in the divisional application and otherwise comply with the requirements of
`35 usc 120.
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`7.
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`35 USC 120 requires an application for patent be "filed by an inventor or inventors
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`named in the previously filed application ... " At this time, it appears that 08/317, 763 had an
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`inventive entity of "Goicoechea, Hudson, and Mialhe". Application 08/461,402 appears to have
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`an inventive entity of either Cragg and Dake or just Dake (see Interference 104,192 papers). As
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`there is not at least one inventor named in this application named in application '763, applicants
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`are not entitled to the priority claim made in the amendment filed on August 21, 2009.
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`Therefore, the specification is objected to, and applicants are required to correct the claim for
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`priority found in the specification.
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`8.
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`For purposes of this action on the merits, it appears the application is a CIP of
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`08/312,881 with a filing date of Sep 27, 1994.
`
`Interference No. 104,083
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`9.
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`It appears from the record, that applicant prevailed on a claim of priority against USP
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`5,575,817 (Martin) in Interference #104,083. However, because that determination was made
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`prior to the decision for Interference #1 04,192, applicants are no longer considered to have
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`priority over Martin for purposes of this action on the merits. The decision in '083 was based
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`upon applicant's claim of foreign priority, which was subsequently determined to be improper in
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`'192. It is also noted that applicant appears to concede the previous priority claim in the most
`
`W.L. Gore & Associates, Inc.
`Exhibit 1014-4
`
`

`

`Application/Control Number: 08/461,402
`Art Unit: 3731
`
`Page 4
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`recently filed amendment to the specification. Therefore, for purposes of this action on the
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`merits, USP '817 is considered to be relevant prior art.
`
`Claim Rejections - 35 USC § 102
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`10.
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`The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the
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`basis for the rejections under this section made in this Office action:
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`A person shall be entitled to a patent unless-
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`(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.
`
`(e) the invention was described in (1) an application for patent, published under section 122(b), by
`another filed in the United States before the invention by the applicant for patent or (2) a patent
`granted on an application for patent by another filed in the United States before the invention by the
`applicant for patent, except that an international application filed under the treaty defined in section
`351 (a) shall have the effects for purposes of this subsection of an application filed in the United States
`only if the international application designated the United States and was published under Article 21 (2)
`of such treaty in the English language.
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`(f) he did not himself invent the subject matter sought to be patented.
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`(g)(1) during the course of an interference conducted under section 135 or section 291, another
`inventor involved therein establishes, to the extent permitted in section 104, that before such person's
`invention thereof the invention was made by such other inventor and not abandoned, suppressed, or
`concealed, or (2) before such person's invention thereof, the invention was made in this country by
`another inventor who had not abandoned, suppressed, or concealed it. In determining priority of
`invention under this subsection, there shall be considered not only the respective dates of conception
`and reduction to practice of the invention, but also the reasonable diligence of one who was first to
`conceive and last to reduce to practice, from a time prior to conception by the other.
`
`11.
`
`Claim 89 is rejected under 35 U.S.C. 1 02(b) as being anticipated by Kornberg (US
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`4,562,596). Kornberg discloses an apparatus for reinforcing a bifurcated lumen comprising a
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`first section (10; figs. 1 and 8 for example) configured to be positioned within the lumen
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`comprising an upper limb configured to fit within the lumen upstream of the bifurcation, a first
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`lower limb (1 OA) configured to extend into a first leg of the bifurcation when the first section is
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`positioned in the lumen and a second lower limb (1 OB) shorter than the first lower limb and
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`configured so that, when the first section is positioned in the lumen, the second lower limb does
`
`W.L. Gore & Associates, Inc.
`Exhibit 1014-5
`
`

`

`Application/Control Number: 08/461,402
`Art Unit: 3731
`
`Page 5
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`not extend into a second leg of the bifurcation (col. 2 II. 66-68). It is noted that the language of
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`the first limb "configured to extend into a first leg of said bifurcation when said first section is
`
`positioned in the lumen" and a second limb "configured so that when said first section is
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`positioned in the lumen, said second lower limb does not extend into a second leg of said
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`bifurcation" is considered a recitation of intended use. A recitation of the intended use of the
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`claimed invention must result in a structural difference between the claimed invention and the
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`prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art
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`structure is capable of performing the intended use, then it meets the claim. It is well settled that
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`the recitation of a new intended use for an old product does not make a claim to that old product
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`patentable (In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997)). Because the device of
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`Kornberg discloses two limbs, one of which is shorter than the other, the apparatus is capable of
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`having the first section positioned in the lumen in a manner such that the first lower limb extends
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`into the first leg of the bifurcation and the second lower limb does not extend into a second leg
`
`of the bifurcation. For example, the device shown in fig. 8 of Kornberg can be placed into the
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`lumen such that the length of the device from the upper limb to the bottom of the second lower
`
`limb is less than the distance from the upper limb to the second leg of the bifurcation and the
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`length of the device from the upper limb to the bottom of the first lower limb is greater than the
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`distance from the upper limb to the first leg of the bifurcation.
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`12.
`
`Claim 89 is rejected under 35 U.S.C. 1 02(e) as being clearly anticipated by Martin (USP
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`5,575,817).
`
`13.
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`Claim 89 is rejected under 35 U .S.C. 1 02(f) because the applicant did not invent the
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`claimed subject matter. See Interference #1 04,083.
`
`14.
`
`Claim 89 is rejected under 35 U.S.C. 102 (g) based upon claim 1 of Patent No.
`
`5,575,817 (Martin). See Interference 104,083 and 104,192.
`
`W.L. Gore & Associates, Inc.
`Exhibit 1014-6
`
`

`

`Application/Control Number: 08/461,402
`Art Unit: 3731
`
`Page 6
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`15.
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`Claim 89 is provisionally rejected under 35 U.S.C. 102 (g) based upon claims of
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`application 08/463,836 (Fogarty et al.).
`
`16.
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`Count 2 of Int. 104,192 contains applicants' limitations found in original Claims 89 and
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`90. Claim 90 has been canceled in this application, and only Claim 89 is pending and not
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`withdrawn. Claim 89 is therefore broader than Count 2 upon which applicants lost priority in
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`Interference# '192. As Fogarty et al. have been determined as having been the first to invent
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`the interfering claimed invention, it is appropriate to make a rejection against Claim 89 under 35
`usc 102(g).
`
`17.
`
`Failure to present claims and/or take necessary steps for interference purposes after
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`notification that interfering subject matter is claimed constitutes a disclaimer of the subject
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`matter. This amounts to a concession that, as a matter of law, the patentee is the first inventor
`
`in this country. See In re Oguie, 517 F.2d 1382, 186 USPQ 227 (CCPA 1975).
`
`Conclusion
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`The prior art made of record and not relied upon is considered pertinent to applicant's
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`disclosure. US 5,628,783 to Quiachon et al. discloses a bifurcated graft with two branching
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`limbs, one limb shorter than the other.
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`Any inquiry concerning this communication or earlier communications from the examiner
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`should be directed to KATHLEEN SON NETT whose telephone number is (571 )272-5576. The
`
`examiner can normally be reached on 7:30-5:00, M-F, alternate Fridays off.
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner's
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`supervisor, Anhtuan Nguyen can be reached on 571-272-4963. The fax phone number for the
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`organization where this application or proceeding is assigned is 571-273-8300.
`
`W.L. Gore & Associates, Inc.
`Exhibit 1014-7
`
`

`

`Application/Control Number: 08/461,402
`
`Page 7
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`Art Unit: 3731
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`Information regarding the status of an application may be obtained from the Patent
`
`Application Information Retrieval (PAIR) system. Status information for published applications
`
`may be obtained from either Private PAIR or Public PAIR. Status information for unpublished
`
`applications is available through Private PAIR only. For more information about the PAIR
`
`system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private
`
`PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you
`
`would like assistance from a USPTO Customer Service Representative or access to the
`
`automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
`
`KCS1/11/2010
`
`/Anhtuan T. Nguyen/
`Supervisory Patent Examiner, Art Unit 3731
`01/15/2010
`
`W.L. Gore & Associates, Inc.
`Exhibit 1014-8
`
`W.L. Gore & Associates, Inc.
`Exhibit 1014-8
`
`