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 .
In view of the Appeal Brief filed on 02/05/2026, PROSECUTION IS HEREBY REOPENED. Previous indicated allowable claims are withdrawn and a new ground of rejection is set forth below.
To avoid abandonment of the application, appellant must exercise one of the following two options:
(1) file a reply under 37 CFR 1.111 (if this Office action is non-final) or a reply under 37 CFR 1.113 (if this Office action is final); or,
(2) initiate a new appeal by filing a notice of appeal under 37 CFR 41.31 followed by an appeal brief under 37 CFR 41.37. The previously paid notice of appeal fee and appeal brief fee can be applied to the new appeal. If, however, the appeal fees set forth in 37 CFR 41.20 have been increased since they were previously paid, then appellant must pay the difference between the increased fees and the amount previously paid.
A Supervisory Patent Examiner (SPE) has approved of reopening prosecution by signing below:
/ELIZABETH HOUSTON/ Supervisory Patent Examiner, Art Unit 3771
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “biasing mechanism” in claim 13, “suture grasping mechanism” in claim 18.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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 8-9, 11, 13 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 8 recites “the first jaw comprises a movable jaw…..the second jaw comprises a fixed jaw…”. It is unclear since claim 2 which claim 8 depends on recites “the suture grasping mechanism includes a first jaw and a second jaw that moves relative to the first jaw. The examiner’s position is that this is a typo and that the second jaw moves relative to the first jaw.
Claim 9 recites “the first jaw is biased by a first biasing member…”. Again, the examiner’s position is that this is a typo. It should be the second jaw is biased by a biasing member since the second jaw is movable relative to the first jaw according to claim 2.
Claim 11 recites “the first jaw is biased to an open position which comprises an at-rest position of the suture grasping mechanism”. Again, the examiner’s position is that this is a typo. It should be the second jaw that biased to an open position.
Claim 13 recites the limitation "the first biasing mechanism" in line 3. There is insufficient antecedent basis for this limitation in the claim. It is unclear if the biasing mechanism is the same as the biasing member in claim 9. The examiner’s position is that they are the same.
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 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 –
The following is a quotation of the appropriate paragraphs of 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 –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 5,439,471 to Kerr.
Kerr teaches:
Claim 1: A device comprising:
a handle having a housing (arms 1 and 2 including finger loops 15, Fig. 1, the housing 3 of arm 1 covers the distal portion of arm 2, thus it is considered a housing/a covering), the handle being configured to perform at least a first operation (for closing and opening the distal jaws for grasping a suture); and
a suture grasping mechanism (clamping jaws, Fig. 1) that forms part of the handle (arms 1 and 2, Fig. 1) and includes a first part (1, Fig. 1) and a second part (2, Fig. 1) that is movable relative to the first part and the housing to perform a second operation (for closing and opening the distal jaws for grasping a needle) different than the first operation and permit the suture grasping mechanism to have an open position (Fig. 2) for receiving a suture (functional limitation, the suture is not positively recited) and a closed position (Fig. 4) for grasping and holding the suture (functional limitation, the clamping jaws are capable of holding a suture) between the first part and the second part (jaws of 1 and 2, Fig. 4);
wherein at least one of the first part (1, Fig. 2) and the second part along with the housing (slot 3, Fig. 2) are formed as a one-piece construction (Fig. 2, formed as one piece).
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Claim(s) 2, 4, 6-9, 11, 14 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2015/0173742 to Palese et al. (Palese).
Palese teaches:
Claim 2: A device (10, Fig. 1) for suturing tissue (Fig. 1) comprising:
a handle having a housing (12, Fig. 1);
a suturing mechanism (suture carrier 14 including a proximal body 42 housed in handle 12, cylindrical body 44 and elongate body/needle 45, Fig. 2) coupled to the handle and being configured to suture the tissue with a suture element (the suture element has not been positively recited); and
a suture grasping mechanism (jaws 36, 38, Fig. 1) coupled to the housing (“coupled is a very broad term, the jaws are being “coupled” to the housing/handle because the jaws are actuated by the trigger 24 of the handle) and being configured to move between an open position for receiving the suture element and a closed position for grasping and holding the suture element (functional limitation), wherein the suture grasping mechanism includes a first jaw (38, Fig. 1) and a second jaw (36, Fig. 1) that moves relative to the first jaw (Fig. 1).
Claim 4: The suturing mechanism (suture carrier 14 including a proximal body 42 housed in handle 12, cylindrical body 44 and elongate body/needle 45, Fig. 2) is disposed at a first end of the handle and the suture grasping mechanism (jaws 36, 38, Fig. 1) is disposed at or proximate to an opposite second end.
Claim 6: The suturing mechanism (suture carrier 14 including a proximal body 42 housed in handle 12, cylindrical body 44 and elongate body/needle 45, Fig. 2) includes an actuator (20, 22, Fig. 1) that is disposed along an opposite side of the housing as the suture grasping mechanism (jaws 36, 38, Fig. 1).
Claim 7: In the open position, the first jaw and the second jaw (38, 36, Fig. 1) are spaced apart from one another, while in the closed position (Figs. 4A-B), the first jaw abuts or is in close proximate contract with the second jaw.
Claim 8: The second jaw (38, Fig. 1) comprises a movable jaw that is movably coupled to the housing, while the first jaw (38, Fig. 1) comprises a fixed jaw that is coupled to the housing.
Claim 9: The first jaw (38, Fig. 2) is biased by a first biasing member (32, Fig. 2) that is coupled to the first jaw and the housing.
Claim 11: The first jaw is biased to an open position which comprises an at-rest position of the suture grasping mechanism.
Claim 14: The suture grasping mechanism includes a first jaw (38, Fig. 1) and a second jaw (36, Fig. 1) that moves relative to the first jaw and further includes an actuator (24, Fig. 1) that comprises at least one of a button or lever that is disposed and accessible along the handle (12) and configured to move the second jaw (para. 0051).
Claim Rejections - 35 USC § 103
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 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 2, 4, 7, 15, 23-24 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kerr.
Kerr teaches:
Claim 2: A device for suturing tissue (Fig. 1) comprising:
a handle having a housing (arms 1 and 2 including finger loops 15, Fig. 1, the slot 3 of arm 1 is housing/cover the distal portion of arm 2, thus it is considered a housing or a covering);
a suturing mechanism (jaws capable of holding a needle for suturing) coupled to the handle and being configured to suture the tissue with a suture element (the suture element has not been positively recited); and
a suture grasping mechanism (projectors 16 capable of grasping a suture in the grooves 17, Fig. 1) coupled to the housing (finger loop 15, Fig. 1) and being configured to move between an open position for receiving the suture element and a closed position for grasping and holding the suture element (functional limitation, projectors 16 capable of abut/close or un-abut/open), wherein the suture grasping mechanism includes a first jaw and a second jaw (projectors 16 considered as jaws, Fig. 1) that moves relative to the first jaw (Fig. 1).
Claim 4: The suturing mechanism (jaws, Fig. 2 reproduced with annotation below, capable of holding a needle for suturing) is disposed at a first end of the handle and the suture grasping mechanism (the projectors 16) is disposed at or proximate to an opposite second end.
Claim 7: In the open position, the first jaw and the second jaw (projectors 16, Fig. 1) are spaced apart from one another, while in the closed position (Fig. 4, not showing the projectors 16 but it is inherent that in order for the jaws to be closed, the projectors has to be abuts or is in closed contact with each other), the first jaw abuts or is in close proximate contract with the second jaw.
Claim 15: Each of the first jaw and the second jaw comprise a movable jaw (Fig. 1).
Claim 23: At least one of the first jaw and the second jaw (projectors 16, Fig. 1) has a groove (serrated 17) formed therein for receiving the suture element (functional limitation).
Claim 24: At least one of the first jaw and the second jaw (Fig. 2 reproduced with annotation below) has serrated surface (17, Fig. 1) for contacting the suture element.
Kerr fails to teach:
The suturing mechanism includes a suturing needle.
Kerr fails to explicitly recite a suturing needle. However, Kerr is teaching a needle holder for use in suturing procedures (abstract) and hence it is obvious for Kerr to employ a suturing needle for suturing purposes.
Claim(s) 2, 4-11, 14 and 30 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 2004/0068253 to Bayer et al. (Bayer).
Bayer teaches:
Claim 2: A device for suturing tissue comprising: a handle having a housing (Fig. 1A reproduced with annotation below); a suturing mechanism coupled to the handle and being configured to suture the tissue with a suture element (suture element not claimed), wherein the suturing mechanism includes a suturing needle (para. 0040 the instrument is a needle holder and driver); and a suture grasping mechanism (Fig. 1A reproduced with annotation below) coupled to the housing and being configured to move between an open position for receiving the suture element and a closed position for grasping and holding the suture element (functional limitation, the forceps are capable of doing such); wherein the suture grasping mechanism includes a first jaw and a second jaw that moves relative to the first jaw (Fig. 1A reproduced with annotation below).
Claim 4: The suturing mechanism is disposed at a first end of the handle and the suture grasping mechanism is disposed at or proximate to an opposite second end (Fig. 1A reproduced with annotation below).
Claim 5: The suturing mechanism (Fig. 1A reproduced with annotation below) includes an actuator (54, Fig. 1A) that is disposed along a same side of the housing as the suture grasping mechanism.
Claim 6: The suturing mechanism includes an actuator that is disposed along an opposite side of the housing as the suture grasping mechanism (calling instrument 30 or 40 the suturing mechanism and the actuators 34 or 44 would position the actuator of the suturing mechanism on the opposite side of the suture grasping mechanism 20).
Claim 7: In the open position, the first jaw and the second jaw (Fig. 1A reproduced with annotation below) are spaced apart from one another, while in the closed position, the first jaw abuts or is in close proximate contact with the second jaw.
Claim 8: The second jaw comprises a movable jaw that is movably coupled to the housing, while the first jaw comprises a fixed jaw that is coupled to the housing (Fig. 1A reproduced with annotation below).
Claim 9: The second jaw is biased by a first biasing member that is coupled to the first jaw and the housing (para. 0045, forceps 20 deploys in similar fashion as forceps 30, the forceps being biased to couple the jaw to housing by locking flange 29 and locking post 19a to release spring arm).
Claim 10: The first biasing member comprises a spring (spring arm, para. 0045) that is attached at a first end to the first jaw (attached at locking flange 29 of the jaw 22a) and at a second end to the housing (the other end attached to the housing, just like spring arm 37, para. 0043).
Claim 11: The second jaw (Fig. 1A reproduced with annotation below) is biased to an open position (spring arm, para. 0045) which comprises an at-rest position of the suture grasping mechanism (not grasping considered as at-rest position).
Claim 14: The suture grasping mechanism includes a first jaw and a second jaw that moves relative to the first jaw (Fig. 1A reproduced with annotation below) and further includes an actuator (24, Fig. 1A, para. 0044) that comprises at least one of a button or lever that is disposed and accessible along the handle and configured to move the second jaw.
Claim 18: A device for suturing tissue comprising:
a handle having a housing (Fig. 1 reproduced with annotation below);
a suturing mechanism coupled to the handle and being configured to suture the tissue with a suture element (suture element not claimed), wherein the suturing mechanism includes a suturing needle (para. 0040 the instrument is a needle holder and driver);
a suture grasping mechanism (Fig. 1 reproduced with annotation below) coupled to the housing and being configured to move between an open position for receiving the suture element and a closed position for grasping and holding the suture element (functional limitation, the forceps are capable of doing such , also suture element not claimed); and
a suture cutter (720, Fig. 4A) including a slot (guard 730 has slot for scalpel protection) formed within the housing (the whole cutter and slot are within the housing) and being directly open to an exterior of the handle (the scalpel moving in and out of the housing, therefore it is said that the slot/guard 730 is facing directly open to the exterior of the handle) for receiving the suture element.
Claim 30: A device for suturing tissue comprising: a handle (Fig. 1A reproduced with annotation below) having a housing that includes a first portion that defines an interior space (interior space where ergonomic surface 26 including the jaw, being retracted within the housing like ergonomic 36, 46 of instrument 30 and 40, Fig. 1A);
a suturing mechanism (Fig. 1A reproduced with annotation below) coupled to the housing of the handle and being configured to suture the tissue with a suture element (suture element not claimed, functional limitation); and
a suture grasping mechanism (Fig. 1A reproduced with annotation below) that is associated with the housing and being configured to move between an open position for receiving the suture element and a closed position for grasping and holding the suture element (functional limitation);
wherein the suture grasping mechanism (Fig. 1A reproduced with annotation below) includes at least one extension that protrudes outwardly from the first portion of the housing (the jaws are extending from within the housing to an exterior of the housing, such as shown in instrument 20, Fig. 1A) and includes a grasping surface that is exposed and is external to the interior space of the first portion of the housing in the open position (Fig. 1A, the jaws having grasping surface such as 23a shown in an open position).
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Bayer fails to teach:
The suturing mechanism includes a suturing needle.
Bayer fails to explicitly recite a suturing needle. However, Bayer is teaching a needle holder for use in such as suturing procedures and hence it is obvious for Bayer to employ a suturing needle for suturing purposes.
Claim(s) 12-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Palese in view of US 2020/0038121 to Yang et al. (Yang).
Palese teaches:
The device of claim 9 (see rejection of claim above).
Palese fails to teach:
The first jaw is biased to a closed position which comprise an at-rest position of the suture grasping mechanism.
The suture grasping mechanism includes an actuator that when actuated causes the first jaw to move to the open position from the closed position whereby the first biasing mechanism stores energy.
Yang teaches:
A surgical instrument comprising a pair of jaws (33, 35, Fig. 16) biased in a closed position by a return spring (para. 0054). The first jaw is biased by a first biasing member (return spring) that is coupled to the first jaw and the housing (“coupled” is a very broad term, parts in the device are “coupled” to one another via parts of the device). The suture grasping mechanism (jaws) includes an actuator (para. 0104 described how the quadrilateral mechanism connected to the jaws and the drive tendon (31g) connected to the return spring to keep the jaws biased closed) that when actuated causes the first jaw to move to the open position from the closed position whereby the first biasing mechanism stores energy (the return spring stored energy to return the jaw back to the biased closed position).
It would have been obvious to one of ordinary skill in the art at the time of the invention was filed to modify the jaws of Palese with the return spring as taught by Yang in order to have the jaws in biased closed position to enhance storage purposes and avoid snagging.
Allowable Subject Matter
Claims 16-17, 19-22, 25-29 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 claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: The prior art fails to disclose the hinge points in claims 16 and 17.
The following is a statement of reasons for the indication of allowable subject matter: Regarding claim 19, The prior art fails to disclose a part of the suture grasping mechanism also forms a part of the suture cutter. Claims 20-22 also objected for depending on objected claim 19.
The following is a statement of reasons for the indication of allowable subject matter: The prior art fails to disclose an actuator and needle grippers, actuation of the actuator rotates the second needle gripper relative to the handle, and causes the first needle gripper to assume one of the open and closed positions in claim 25. The prior art fails to disclose the suture grasping mechanism moves between a retracted and extended positions relative to the housing in claim 27.
Response to Arguments
Applicant's arguments filed 02/05/2026 have been fully considered but they are not persuasive.
Regarding the argument that Kerr does not teach a housing and slot 3 is not a housing. The applicant also including a link of Merriam Webster to show the definition of a housing. This is not persuasive. The examiner's position is that the definition for "housing" can be very broad and yes, as shown by the applicant, it can mean a case or enclosure (as for mechanical part), but it can also mean a support (such as a frame) for mechanical part. This is shown in the same Merriam Webster link provided by the applicant. The slot 3 of Kerr is a support structure (frame) and therefore can be considered as a "housing". Regarding the inconsistent in the drawings of the slot 3 whether or not the slot 3 is a closed box, the examiner's position is that the jaws are being flipped upside down and there might be some inconsistency in the drawings but it would make no sense for one of skill in the art to make the slot not to be a closed box. Regarding the argument that there must be an opening along the wall of the slot 3 that allows the components to be assembled and pinned, there is no evidence that this is the only way that the device can be assembled. This is only the argument from the appellant (The arguments of counsel cannot take the place of evidence in the record. In re Schulze, 346 F.2d 600, 602, 145 USPQ716, 718 (CCPA 1965). Examples of attorney statements which are not evidence and which must be supported by an appropriate affidavit or declaration include statements regarding unexpected results, commercial success, solution of a long-felt need, inoperability of the prior art, invention before the date of the reference, and allegations that the author(s) of the prior art derived the disclosed subject matter from the applicant). Also, even if there is an opening in the slot 3 as argued by the appellant, that slot 3 can still be considered a “housing” since the slot 3 still “holding” and “housing” the other arm inside of the slot.
Regarding the argument that Kerr and Bayer fail to teach a suturing needle and that the suturing needle is part of the suturing mechanism in the current invention and that is contrast to Kerr or Bayer, where the needle is merely a loose part separate and distinct from the scissors and that one skilled in the art would not contend that the scissors themselves have a suturing mechanism that includes a suturing needle (page 23 of applicant's remarks). This is not persuasive. As stated by the applicant that a "loose needle" is contemplated, the device in Kerr or Bayer are capable of using a needle or a suturing needle for use in different purposes, therefore, the counsel argument that one skill in the art would not contend that Kerr or Bayer to have a suturing mechanism that includes a suturing needle is not persuasive (The arguments of counsel cannot take the place of evidence in the record. In re Schulze, 346 F.2d 600, 602, 145 USPQ716, 718 (CCPA 1965). Examples of attorney statements which are not evidence and which must be supported by an appropriate affidavit or declaration include statements regarding unexpected results, commercial success, solution of a long-felt need, inoperability of the prior art, invention before the date of the reference, and allegations that the author(s) of the prior art derived the disclosed subject matter from the applicant).
The appellant also argued that Kerr and Bayer lack both the suturing mechanism and suture grasping mechanism are coupled to the housing. This is not persuasive. The term “coupled” is a very broad term and parts of the surgical device while they might not be directly connected to one another, but they are being “coupled” to one another to function as a whole device.
The applicant also argued that the projection 16 in Kerr is not for suture grasping. The applicant argued that the projections 16 cannot be equate as being the suture grasping mechanism and that it would be cumbersome and awkward. This is not persuasive. The examiner's position is that, yes, the projections 16 are used as a ratchet arm lock having serrated surfaces and such surfaces can be used to grasp and hold a piece of suture. Whether or not one skill in the art would use it as a suture grasping instrument is not relevant. The projections are capable of grasping the piece of suture.
The appellant argued that Bayer fails to describe any type of suturing action and that the clear gist of Bayer is the presentation and use of forceps for manipulating and palpating tissue in a hand assisted laparoscopic procedure. Further, the needle illustrated in Bayer is a straight needle used for puncturing tissue and not a suturing needle for suturing tissue. This is not persuasive. The applicant brought up an embodiment of the Bayer's device in figure 1B to show the straight needle being retracted and extended in and out of Bayer's housing. However, as stated, Bayer's device can have many different surgical instruments, and the examiner brought up this to illustrate that Bayer device can and capable to be used for suturing using a suturing needle too.
About the argument which the length of the lever arms in Bayer’s forceps are too short to manipulate the curved suturing needle and that the Bayer’s device was clearly not designed for grasping and manipulating a suturing needle, why call suturing needle or suture or suturing was never contemplated and specified, and why calling the Bayer forceps a suturing mechanism is overreaching and not supported by Bayer document itself. This is not persuasive. The Bayer’s device might not be designed for suturing purposes but it is capable of using a needle or a suturing needle for suturing, therefore, the counsel argument that one skill in the art would not contend Bayer to have a suturing mechanism that includes a suturing needle is not persuasive. Also, the curved suturing needle is never claimed and such argument is only the argument from the counsel and is not persuasive (The arguments of counsel cannot take the place of evidence in the record. In re Schulze, 346 F.2d 600, 602, 145 USPQ716, 718 (CCPA 1965). Examples of attorney statements which are not evidence and which must be supported by an appropriate affidavit or declaration include statements regarding unexpected results, commercial success, solution of a long-felt need, inoperability of the prior art, invention before the date of the reference, and allegations that the author(s) of the prior art derived the disclosed subject matter from the applicant).
Regarding the argument that Bayer is not a fixed jaw since it is not stationary but rather must move to allow for proper operation of the forceps 20 and that the stationary nature of the fixed jaw result by the fact that the fixed jaw is an integral extension of the housing and thus, form a one-piece construction with the housing. This is not persuasive. The examiner's position is that jaw 22a move relative to jaw 22b (as shown in Fig. 1A by moving actuator 24) and jaw 22b is "fixed" relative to jaw 22a (jaw 22b is moving in and out of the housing but fixed relative to jaw 22a, meaning jaw 22b is not moving “relative” to jaw 22a if jaw 22a is not moving). The argument that the fixed jaw is an integral extension of the housing and forms a one-piece construction with the housing is not claimed.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PHONG SON DANG whose telephone number is (571)270-5809. The examiner can normally be reached Mon-Fri 8-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Elizabeth Houston can be reached at 571-272-7134. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PHONG SON H DANG/Primary Examiner, Art Unit 3771
Prosecution Insights