1DETAILED 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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 8/29/25 has been entered.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-10 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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.
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 –
(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 1 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Gordon et al US Patent Pub. 2015/0164500 A1.
Gordon et al discloses a surgical device (109) comprising a tip or first end (tip of element 111), a base or second end (149) opposite to the first end, a length between the first and second end. The length having a diameter that increases from the first end to the second end over at least a portion of the length (see Figs. 1 and 2D). Additionally, the second end including means for suturing to the proximal cut end of the flexor tendon (see elements 147a-147g).
NOTE: as disclosed in the previous Office Action, phrases having the word “configured”, have been identified as an intended use limitation because is typical of claim limitations which may not distinguish over prior art according to the principle. It has been held that the recitation that an element is “configured to” performing a function is not a positive limitation but only requires the ability to so perform.
Additionally, the “wherein” clauses have been given patentable weight, however, the Examiner just need to find a reference capable of performing those functions. The “wherein” clauses just state the result of the limitations in the claim and don’t add nothing to the patentability or substance of the claims.
Finally, language used in claims 5, 6, 9 and 10 are just functional language and the Examiner just has to find a reference that is capable of performing the claimed function. For example, the second end of the surgical device is capable of being sutured to a proximal end of the flexor tendon. Another example, the stepped increment of the diameter is capable of probing, distending and enlarging the collapsed and contracted fibro-osseous tunnel, etc...
Claims 1-10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wyland US Patent Pub. 2018/0228596 A1.
NOTE: as disclosed in the previous Office Action, phrases having the word “configured”, have been identified as an intended use limitation because is typical of claim limitations which may not distinguish over prior art according to the principle. It has been held that the recitation that an element is “configured to” performing a function is not a positive limitation but only requires the ability to so perform.
Additionally, the “wherein” clauses have been given patentable weight, however, the Examiner just need to find a reference capable of performing those functions. The “wherein” clauses just state the result of the limitations in the claim and don’t add nothing to the patentability or substance of the claims.
Finally, language used in claims 5, 6, 9 and 10 are just functional language and the Examiner just has to find a reference that is capable of performing the claimed function. For example, the second end of the surgical device is capable of being sutured to a proximal end of the flexor tendon. Another example, the stepped increment of the diameter is capable of probing, distending and enlarging the collapsed and contracted fibro-osseous tunnel, etc...
Regarding claims 1 and 6, Wyland discloses a surgical device (20) comprising a tip or first end (28), a base or second end (26) opposite to the first end, a length between the first and second end. The length having a diameter that increases from the first end to the second end over at least a portion of the length (see Fig. 1). Additionally, the second end including means for suturing to the proximal cut end of the flexor tendon (see paragraph 55).
Regarding claims 2-4, see Fig. 1 showing a constant stepped sleeve tube and see paragraph 51 disclosing a flexible and pliable sleeve.
Regarding claims 5, 6, 9 and 10, the language used in these claims are just functional language and the Examiner just has to find a reference that is capable of performing the claimed function. For example, the second end of the surgical device is capable of being sutured to a proximal end of the flexor tendon. Another example, the stepped increment of the diameter is capable of probing, distending and enlarging the collapsed and contracted fibro-osseous tunnel, etc...
Regarding claims 7 and 8, the applicants has not specifically point out what is a fish mouth or shark mouth, the Examiner has interpreted the oval/circular shape of the opening at end 26 as a mouth fish, since, fishes can perform an oval/circular mouth.
Regarding claim 10, the stepped increment is referring to the fibro-osseous tunnel of the patient, therefore, the taper configuration in Figure 2 makes the device capable of increasing the diameter of the collapsed tunnel.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALVIN J STEWART whose telephone number is (571)272-4760. The examiner can normally be reached Monday-Friday 8:30AM-6PM EST.
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/ALVIN J STEWART/Primary Examiner, Art Unit 3799 9/11/25