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`UNITED STATES PATENT AND TRADEMARK OFFICE
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`APPLICATION NO.
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`FILING DATE
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`FIRST NAMED INVENTOR
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`UNITED STATES DEPARTMENT OF COMMERCE
`Unlted States Patent and Trademark Office
`Addtess: COMMISSIONER FOR PATENTS
`P.O. Box I450
`Alexandria. Virginia 22313-1450
`www.usplo.guv
`ATTORNEY DOCKET NO.
`
`5 W
`CONFIRMATION NO.
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`l0/ 145,406
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`05/I4/2002
`
`Terence R. Ellard
`
`P056l9USO
`
`51 II
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`22885
`
`7590
`
`07/29/2004
`
`MCKEE, VOORHEES & SEASE, P.L.C.
`801 GRAND AVENUE
`SUITE 3200
`
`DES MOINES, IA 50309-2721
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`EXAMINER
`
`GILBERT, SAMUELG
`
`PAPER "UMBER
`
`DATE MAILED: 07/29/2004
`
`3736
`
`6
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`Please find below and/or attached an Office communication concerning this application or proceeding.
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`PTO-90C (Rev. 10/03)
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`Ex. C&D 1017, page 1
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`Ex. C&D 1017, page 1
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`

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`Office Action Summary
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`-
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`Examine,
`
`Samuel GGi|bert
`
`'
`
`Application No.
`10/145,406
`
`App|icant(s)
`ELLARD ET AL.
`
`An Unit
`
`3736
`
`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address --
`Period for Reply
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`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE Q MONTH(S) FROM
`THE MAILING DATE OF THIS COMMUNICATION.
`In no event, however, may a reply be timely filed
`Extensions oftime may be available under the provisions of 37 CFR 1.136(a).
`'
`after SIX (6) MONTHS from the mailing date of this communication.
`It the period for reply specified above is less than thirty (30) days, a reply within the statutory minimum of thirty (30) days will be considered timely.
`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)I:] Responsive to communication(s) filed on _
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`2b)® This action is non-final.
`2a)I:l This action is FINAL.
`3)|:l Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Ex parte Quayle, 1935 C.D. 11, 453 O.G. 213.
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`Disposition of Claims
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`4)IZ| CIaim(s)1;1Qis/are pending in the application.
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`4a) Of the above claim(s) filg is/are withdrawn from consideration.
`5)l:l Claim(s) __ is/are allowed.
`I
`6)IXl Claim(s) _ is/are rejected.
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`_
`DE Claim(s) § is/are objected to.
`8)® Claim(s) 1 are subject to restriction and/or election requirement.
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`Application Papers
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`9)E] The specification is objected to by the Examiner. '
`10)IZ] The drawing(s) filed on 25 August 2002 is/are: a)lZl accepted or b)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 ifthe drawing(s) is objected to. See 37 CFR 1.121(d).
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`11)E] The oath or declaration is objected to by the Examiner. Note. the attached Office Action or form PTO-152.
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`.
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`Priority under 35 U.S.C. § 119
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`12)I:] Acknowledgment is made of a claim for foreign priority under-35 U.S.C. § 119(a)-(d) or (f).
`a)I:] All
`b)I:l Some * c)I:] None of:
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`1.E] Certified copies of the priority documents have been received.
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`2.E] Certified copies of the priority documents have been received in Application No. ___.
`3.|:I Copies of the certified copies ofth'e 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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`1) E Notice of References Cited (PTO-892)
`2) CI Notice of Draftsperson’s Patent Drawing Review (PTO-948)
`3) E Information Disclosure Statement(s) (PTO-1449 or PTO/SB/O8)
`Paper No(s)/Mail Date 8 and 9.
`U.S. Patent and Trademark Office
`
`'
`
`4) E Interview Summary (PTO-413)
`Papei N°(5)/M3" D3Ie- . -
`5) I:I Notice of Informal Patent Application (PTO-152)
`6) C] Other:
`.
`
`PTOL-326 (Rev. 1-04)
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`.
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`Office Action Summary
`
`Part of Paper No./Mail Date 07262004
`Ex. C&D 1017, page 2
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`Ex. C&D 1017, page 2
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`

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`Application/Control Number: 10/145,406
`Art Unit: 3736
`
`Page 2
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`DETAILED ACTION
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`Election/Restrictions
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`Restriction to one of the following inventions is‘required under 35 U.S.C. 121:
`
`l.
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`Claims 1-9, drawn to a drum cartridge magazine, classified in class 600,
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`subclass 007.
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`ll.
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`Claims 10-16, drawn to an apparatus for dispensing seeds, classified in
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`class 600, subclass 007.
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`Ill.
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`Claims 17-19, drawn to a method of implanting seeds, classified in class
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`600, subclass 003.
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`The inventions are distinct, each from the other because of the following reasons:_
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`Inventions II and I are related as combination and subcombination.
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`Inventions in
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`this relationship are distinct if it can be shown that (1) the combination as claimed does
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`not require the particulars of the subcombination as claimed for patentability, and (2)
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`that the subcombination has utility by itself or in other combinations (MPEP §
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`806.05(c)).
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`In the instant case, the combination-as claimed does not require the
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`particulars of the subcombination as claimed because the combination does not require
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`a seed drum. The subcombination has separate utility such as a cartridge for use in
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`implanting therapeutic agents as setforth in US Patent 4,451,254 or for use in
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`delivering ammunition to an automatic pistol as in US Patent 4,332,097.
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`Inventions Ill and inventions I and Il are related as product and process of use.
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`The inventions can be shown to be distinct if either or both of the following can be
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`Ex. C&D 1017, page 3
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`Ex. C&D 1017, page 3
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`

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`Application/Control Number: 10/145,406
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`'
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`Page 3
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`Art Unit: 3736
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`shown:>(1) the process for using the product as claimed can be practiced with another
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`materially different product or (2) the product as claimed can be used in a materially
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`different process of using that product (MPEP § 806.05(h)).
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`In the instant case the
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`‘process can be practiced with an implantation system that does not include cartridge.
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`The needle itself may be preloaded by hand and then a plurality of seeds can be
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`implanted at the same time.
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`' Because these inventions are. distinct for the reasons given above and the
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`search required for Group I is not required for Group II, restriction for examination
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`purposes as indicated is proper.
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`Because these inventions are distinct for the reasons given above and have
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`acquired a separate status in the art because of their recognized divergent subject
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`matter, restriction for examination purposes as indicated is proper.
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`During a telephone conversation with Mr. Kirk Hartung on 7/16/2004 a
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`provisional election was made with traverse to prosecute the invention of Group I,
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`claims 1-9, Affirmation of this election must be made by applicant in replying to this
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`Office action. Claims 10-17 are withdrawn -from further consideration by the examiner,
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`37 CFR 1.142(b), as being drawn to a non-elected invention.
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`Applicant is reminded that upon the cancellation of claims to a non-elected
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`invention, the inventorship must be amended in compliance with 37 CFR 1.48(b) if one
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`or more of the currently named inventors is no longer an inventor of at least one claim
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`remaining in the application. Any amendment of inventorship must be accompanied by
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`a request under 37 CFR 1.48(b) and by the fee required under 37 CFR 1.17(i).
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`Ex. C&D 1017, page 4
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`Ex. C&D 1017, page 4
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`

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`App|icationlControl Number: 10/145,406
`Art Unit: 3736
`
`'
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`Page 4
`A
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`. DETAILED ACTION
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`Information Disclosure Statement
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`The information disclosure statements filed 10/21/2002 and 05/14/2002 have
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`been considered.
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`Drawings
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`The drawings were received on 08/26/2002. These drawings are accepted by
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`the examiner.
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`C/aim Rejections - 35 USC § 102
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`The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that
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`form the 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 priorto the date of application for patent in the United
`States.
`
`Claims 1-4 and 9are- rejected under 35 U.S.C. 102(b) as being anticipated by
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`Lilley (4,986,251).
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`Claim 1 - elements -1- and -3- form a casing, element -2- is a drum having an
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`elongate track element -22-, figure 2, a discharge opening , distal opening -21-, and a
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`spring -4-.
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`Claims 2 and 3 - slot -22- is'an annular channel extending along the perimeter of
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`the drum. 1
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`Claim 4 - small hole -16- fixes the spring.
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`Claim 9 - the casing is fit together and held by the friction of the screw -5-.
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`Ex. C&D 1017, page 5
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`Ex. C&D 1017, page 5
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`

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`Application/Control Number: 10/145,406
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`Page 5
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`Art Unit: 3736
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`Claims 1-3 and 4 are rejected under 35 U.S.C. 102(b) as being anticipated by
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`Taylor, Jr. (4,332,097).
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`Taylor teaches a casing -22- and -23-, a drum -20- and -28-, track -30- and -31-,
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`discharge opening is between element -14a- and -14b-, spring -68-
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`Claim 4- the springvis fixed in slot -70- which is fixed to the casing.
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`Claim 9 - the casing is frictionally fit and held together by screw element -38-.
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`I/
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`Claim Rejections - 35 USC § 103
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`The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all
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`obviousness rejections set forth in this Office action:
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`(a) A patent may not be obtained though the invention is not identically disclosed or described as set
`forth in section 102 of this title, if the differences between the subject matter sought to be patented and
`the prior art are such that the subject matter as a whole would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said subject matter pertains.
`Patentability shall not be negatived by the manner in which the invention was made.
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`Claims 6-8 are rejected under 35 U.S.C. 103(a) as being unpatentable over Lilley
`(4.986,251) in view of Wright, Sr. et al (5,799,432).
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`Lilley teaches a cartridge as claimed but does not include indicia as claimed.‘
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`Wright, Sr. et al teaches a system for counting the number of rounds in a magazine
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`through a variety of means and a display for showing the information. it would have
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`been obvious to one of ordinary skill in the art at the time the invention was made to
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`include a counting system and display as conceptually taught by Wright, Sr. et al
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`particularly the embodiment of figure 3, which incorporates a rotary spring. The
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`Ex. C&D 1017, page 6
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`Ex. C&D 1017, page 6
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`

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`Application/Control Number: 10/145,406
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`Page 6
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`Art Unit: 3736
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`addition of the counter/display system provides vital information to the user to maximize
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`the user's ability to protect, survive and prevail as taught by Wright Sr. et al.
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`Claims 6-8 are rejected under 35 U.S.C. 103(a) as being unpatentable over
`
`_
`Taylor, Jr.‘(4,332,097). in view-of Wright, Sr. et al (5,799,432).
`Taylor, Jr. teaches a cartridge as claimed but does not include indicia as claimed.
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`Wright, Sr. et al teaches a system for counting the number of rounds in a magazine
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`through a variety of means and a display for showing the information.
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`It would have
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`been obvious to one of ordinary skill in the art at the time the invention was made to
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`include a counting system and display as conceptually taught by Wright, Sr. et al
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`particularly the embodiment of figure 3, which incorporates a rotary spring. The
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`addition of the counter/display system provides vital information to the user to maximize
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`the user’sability to protect, survive and prevail as taught by Wright Sr. et al.
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`Allowable Subject Matter
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`Claim 5 is objected to as being dependent upon a rejected base claim, but would
`
`be allowable if rewritten in independent form including all of the limitations of the base
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`claim and any intervening claims.
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`Ex. C&D 1017, page 7
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`Ex. C&D 1017, page 7
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`

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`Application/Control Number: 10/145,406
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`Page 7
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`Art Unit: 3736
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`Conclusion
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`The prior art made of record and not relied upon is considered pertinent to
`applicant's disclosure. US Patents 4,150,766 and 4,451,254 teach related cartridge
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`structure.
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`I
`
`0
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`Any inquiry concerning this communication or earlier communications from the
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`examiner should be directed to Samuel G Gilbert whose telephone number is 703-308-
`
`3553. The examiner can normally be reached on M-F 5:30-2:00.
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`If attempts to reach the examiner by telephone are unsuccessful, the examiner's
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`supervisor, Mary Beth Jones can be reached on 703-308-3400. The fax phone number
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`for the organization where this application or proceeding is assigned is 703-872-9306.
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`Information regarding the status of an application may be obtained from the
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`Patent Application Information Retrieval (PAIR) system. Status information for
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`published -applications may be obtained from either Private PAIR or Public PAIR.
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`‘Status information for unpublished applications is available through Private PAIR only.
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`For more information about the PAIR system, see http://pair-direct.uspto.gov. Should
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`you have questions on access to the Private PAIR system, contact the Electronic
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`Business Center (EBC) at 866-217-9197 (toll-free).
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`/
`
`Samuel G Gilbert
`
`Primary Examiner
`Art Unit 3736
`
`599
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`EX. C&D "1017, page 8
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`Ex. C&D 1017, page 8