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 .
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 allowance or after an Office action under Ex Parte Quayle, 25 USPQ 74, 453 O.G. 213 (Comm'r Pat. 1935). 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, prosecution in this application has been reopened pursuant to 37 CFR 1.114. Applicant's submission filed on 2/27/2026 has been entered.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 2/27/2026 has been considered by the examiner. A signed copy is attached.
Formal Matters
Claims 3 and 14-22 are cancelled. Claims 1, 2, 4-13, and 23-33 are pending and under examination.
Claim Rejections - 35 USC § 112(b)
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 5 and 6 are 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 5 recites the limitation "the fixed jaw" in line 1. There is insufficient antecedent basis for this limitation in the claim. Claim 5 is dependent on claim 1. The first recitation of “a fixed jaw” appears in claim 4.
Claim 6 is dependent on claim 5 and recites “the fixed jaw” in line 3.
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.
Claims 1, 7, 11, and 23 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Magnusson, US 5,280,427 (18 January 1994).
Regarding claim 1, Magnusson teaches a guide device (FIGs 7-9, needle guide 70) for guiding a needle (112), comprising a tool-holder (FIGs 6, 7, path determiner 20) intended to be fixed to the end of a medical assistance robotic arm,
said tool-holder (20) supporting a needle guide (70), wherein the needle guide (70) comprises a first jaw (74a) and a second jaw (74b) each including a respective groove (aligned semicircular recesses 78a, 78b), said grooves (78a, 78b) extending along parallel longitudinal axes (FIGs 8A, 8B), said first jaw (74a) and said second jaw (74b) being supported by the tool-holder (20) so as to allow mobility in rotation of said first jaw (74a) and said second jaw (74b) relative to one another between a guide position in which the grooves (78a, 78b) are adjacent (FIG 8B) and define a duct (bore 78) for guiding the needle (112) and a disengaged position (FIG 8A) in which the grooves (78a, 78b) are moved away from one another and define a needle lateral disengagement zone (FIG 8A);
wherein the tool-holder (20) comprises a housing (FIGs 7) extending longitudinally between two end openings (FIG 7, tissue sampling instrument 110, bore 78) and in which the needle guide (70) is engaged, said tool-holder (20) comprising an axial through-opening (78) extending between said end openings along an axis parallel to the longitudinal axis of the housing (FIG 7), the axial through-opening facing the lateral disengagement zone (FIG 8A) when the first jaw (74a) and the second jaw (74b) are in the disengaged position (FIG 8A).
The phrase “intended to be fixed to the end of a medical assistance robotic arm” in reference to a tool-holder is broadly interpreted as an intended use recitation that the device of Magnusson is capable of performing. The recitation of an element that is “capable of” performing a function is not a positive limitation, but only requires the ability to so perform. It does not constitute a limitation in any patentable sense. See In re Hutchison, 69 USPQ 138, 33 CCPA 879 (1946). “[A]pparatus claims cover what a device is, not what a device does.” Hewlett-Packard Co.v.Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). See also, MPEP 2114.
Regarding claim 7, Magnusson teaches the guide device of claim 1, as set forth above, wherein the first jaw (74a) and the second jaw (74b) are removably fixed to one another (FIGs 8A, 8B) and are removably engaged in the housing (FIG 7, mounted to the needle guide body member 72) of the tool-holder (20).
Regarding claim 11, Magnusson teaches the guide device of claim 1, as set forth above, wherein the first jaw (74a) and the second jaw (74b) include a respective axial shoulder (FIGs 8A, 8B), the axial shoulders having complementary profiles by means of which they cooperate with one another (FIGs 8A, 8B).
Regarding claim 23, Magnusson teaches the guide device of claim 1, as set forth above, wherein the guide position (col 9, lines 62-64) is configured guiding the needle along a translation axis (col 4, lines 19-23) while inserting the needle into a target zone (col 8, lines 64-68) and wherein the disengaged position is configured to release the needle (col 3, lines 27-30). after the needle has been inserted into the target anatomical zone (col 9, lines 38-41).
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Magnusson, US 5,280,427 (18 January 1994) in view of Anderson et al., US 20060161136 (20 July 2006).
Regarding claim 2, Magnusson teaches the guide device of claim 1, as set forth above.
Magnusson does not teach wherein the first jaw or the second jaw comprises a handle (FIG 20, lever 704) for manipulating said first jaw or said second jaw by solicitation, wherein said first jaw or said second jaw is driven in movement relative to the other jaw (¶85).
Anderson teaches a needle holder comprising jaws wherein first jaw or the second jaw comprises a handle (FIG 20, lever 704) for manipulating said first jaw or said second jaw by solicitation, wherein said first jaw or said second jaw is driven in movement relative to the other jaw (¶85).
Magnusson and Anderson teach in the field of needle holders. Although, Magnusson discloses the claimed base needle guide device (needle guide, tool-holder, needle, jaws), Magnusson does not disclose a handle configured to move either the first or second jaw. Anderson specifically addresses the jaws comprising a lever handle 704 that can be used to open and close the jaws and is also capable of moving over-center to lock-in the needle between the jaws (¶85). Because Magnusson includes a spring-loaded pair of jaws and Anderson provides a set of jaws comprising a handle, a person of ordinary skill in the art, seeking to permit a user to grasp the jaws of Magnusson’s architecture would reasonably consult Anderson’s handle solution. Anderson’s handle can be can be incorporated alongside Magnusson’s jaws (same general location and interaction with the path determiner/needle guide) using known assembly methods without redesigning Mangusson’s core device. Because the references address the same engineering problem (needle-guide jaw devices) and the proposed modifications are mechanically compatible and implemented by routine engineering practices (adding a handle to the existing jaws for ease of grasping the jaws by a user), a person of ordinary skill in the art before the effective filing date of the claimed invention would have had a reasonable expectation of success in combining these teachings.
Claims 4, 12, 24, 29, and 30 are rejected under 35 U.S.C. 103 as being unpatentable over Magnusson, US 5,280,427 (18 January 1994) in view of Limon et al., US 20200015807 (16 January 2020, benefit to 16 July 2018).
Regarding claim 4, Magnusson teaches the guide device of claim 1, as set forth above.
Magnusson does not teach wherein the first jaw and the second jaw are respectively formed by a fixed jaw and a mobile jaw.
Limon teaches needle holders comprising a first jaw (2462) and second jaw (2482) where the second jaw (2482) is moveable relative to the first jaw (2462) between an open orientation and a closed orientation and the first jaw (2462) is stationary relative to the clevis (2510) (FIG 5A, ¶64).
Magnusson and Limon teach in the field of surgical needle holder devices comprising jaws. Although, Magnusson discloses the claimed base needle guide device (needle guide, tool-holder, needle, jaws), Magnusson does not disclose wherein the first jaw and the second jaw are respectively formed by a fixed jaw and a mobile jaw. Limon specifically addresses the jaws device comprising a second jaw moveable relative to the first jaw. Because Magnusson includes a spring-loaded pair of jaws and Limon provides a set of jaws comprising one that is fixed and one that is mobile that includes a clevis as the joining device, a person of ordinary skill in the art, seeking to better control the needle grasping mechanism of the jaws of Magnusson’s architecture would reasonably consult Limon’s clevis and fixed/moveable jaw solution. Limon’s jaws can be can be incorporated alongside Magnusson’s tool-holder and needle guide device (same general location and interaction with the needle guide) using known assembly methods without redesigning Mangusson’s core device. Because the references address the same engineering problem (needle guide devices comprising jaws) and the proposed modifications are mechanically compatible and implemented by routine engineering practices (improving the jaws to provide greater control over the needle-grasping function), a person of ordinary skill in the art before the effective filing date of the claimed invention would have had a reasonable expectation of success in combining these teachings.
Regarding claim 12, Magnusson teaches the guide device of claim 11, as set forth above.
Magnusson does not teach wherein the first jaw and the second jaw are removably interconnected by means of a rod extending longitudinally from either the first jaw or the second jaw through an axial housing formed in the axial shoulder of the other jaw.
Limon teaches needle holders comprising a first jaw (2462) and second jaw (2482) where the second jaw (2482) is moveable relative to the first jaw (2462) between an open orientation and a closed orientation and the first jaw (2462) is stationary relative to the clevis (2510) (FIG 5A, ¶64).
Magnusson and Limon teach in the field of surgical needle holder devices comprising jaws. Although, Magnusson discloses the claimed base needle guide device (needle guide, tool-holder, needle, jaws), Magnusson does not disclose wherein the first jaw and the second jaw are respectively formed by a fixed jaw and a mobile jaw. Limon specifically addresses the jaws device comprising a second jaw moveable relative to the first jaw via a clevis. Because Magnusson includes a spring-loaded pair of jaws and Limon provides a set of jaws comprising one that is fixed and one that is mobile that includes a clevis as the joining device, a person of ordinary skill in the art, seeking to better control the needle grasping mechanism of the jaws of Magnusson’s architecture would reasonably consult Limon’s clevis solution. Limon’s jaws can be can be incorporated alongside Magnusson’s tool-holder and needle guide device (same general location and interaction with the needle guide) using known assembly methods without redesigning Mangusson’s core device. Because the references address the same engineering problem (needle guide devices comprising jaws) and the proposed modifications are mechanically compatible and implemented by routine engineering practices (improving the jaws to provide greater control over the needle-grasping function), a person of ordinary skill in the art before the effective filing date of the claimed invention would have had a reasonable expectation of success in combining these teachings.
Regarding independent claim 24, Magnusson teaches a guide device (FIGs 7-9, needle guide 70) for guiding a needle (112), comprising a tool-holder (FIGs 6, 7, path determiner 20) intended to be fixed to the end of a medical assistance robotic arm,
said tool-holder (20) supporting a needle guide (70), wherein the needle guide (70) comprises a first jaw (74a) and a second jaw (74b) each including a respective groove (aligned semicircular recesses 78a, 78b), said grooves (78a, 78b) extending along parallel longitudinal axes (FIGs 8A, 8B), said first jaw (74a) and said second jaw (74b) being supported by the tool-holder (20) so as to allow mobility in rotation of said first jaw (74a) and said second jaw (74b) relative to one another between a guide position in which the grooves (78a, 78b) are adjacent each other (FIG 8B) and define a duct (bore 78) for guiding the needle (112) and a disengaged position (FIG 8A) in which the grooves (78a, 78b) are moved away from one another and define a needle lateral disengagement zone (FIG 8A);
wherein the needle guide (70) includes a movement transmission member (FIG 8B, spring 77) connected to the first jaw and the second jaw and synchronizing the angular movement of said first jaw and said second jaw relative to one another (FIG 8B; col 13, lines 12-14).
Magnusson does not teach wherein each first jaw and each said second jaw includes at least one tooth at the level of the grooves, said at least one tooth being adapted to interpenetrate when the needle guide is in the guiding position.
Limon teaches wherein each first jaw 5462 and each said second jaw 5482 includes at least one tooth (first jaw 2462 comprising first gripping portion 2464 and first needle alignment portion 2474, ¶62; second jaw 2482 comprising third gripping portion 2484 and second needle alignment portion 2495, ¶63) at the level of the grooves (FIG 5A), said at least one tooth being adapted to interpenetrate when the needle guide is in the guiding position (¶¶62-64).
The phrase “intended to be fixed to the end of a medical assistance robotic arm” in reference to a tool-holder is broadly interpreted as an intended use recitation that the device of Magnusson is capable of performing. The recitation of an element that is “capable of” performing a function is not a positive limitation, but only requires the ability to so perform. It does not constitute a limitation in any patentable sense. See In re Hutchison, 69 USPQ 138, 33 CCPA 879 (1946). “[A]pparatus claims cover what a device is, not what a device does.” Hewlett-Packard Co.v.Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). See also, MPEP 2114.
Magnusson and Limon teach in the field of surgical needle holder devices comprising jaws. Although, Magnusson discloses the claimed base needle guide device (needle guide, tool-holder, needle, jaws), Magnusson does not disclose wherein each first jaw and each said second jaw includes at least one tooth at the level of the grooves, said at least one tooth being adapted to interpenetrate when the needle guide is in the guiding position. Limon specifically addresses the jaws device comprising at least one tooth at the level of the grooves, said at least one tooth being adapted to interpenetrate when the needle guide is in the guiding position (FIG 5A, ¶¶62-64). A person of ordinary skill in the art, seeking to better control the needle grasping mechanism of Magnusson’s jaw architecture would reasonably consult Limon’s jaws with their multiple toothed gripping portions. Limon’s jaws can be can be incorporated alongside Magnusson’s tool-holder and needle guide device (same general location and interaction with the needle guide) using known assembly methods without redesigning Mangusson’s core device. Because the references address the same engineering problem (needle guide devices comprising jaws) and the proposed modifications are mechanically compatible and implemented by routine engineering practices (improving the jaws to provide greater control over the needle-grasping function), a person of ordinary skill in the art before the effective filing date of the claimed invention would have had a reasonable expectation of success in combining these teachings.
Regarding claim 29, Magnusson modified by Limon teaches the guide device of claim 24, as set forth above.
Limon teaches wherein the grooves have a V-shape cross-section (FIG 5A).
Regarding claim 30, Magnusson modified by Limon teaches the guide device of claim 24, as set forth above.
Magnusson teaches the device further comprising a mechanism for locking the needle guide in the guiding position (FIG 5, knurled knob 56 on mounting bolt 50) said locking mechanism being configured to immobilize the first jaw or the second jaw against rotation when the latter pivots beyond a predetermined angular position (col 6, lines 22-25).
Claim 25 is rejected under 35 U.S.C. 103 as being unpatentable over Magnusson, US 5,280,427 (18 January 1994) in view of Limon et al., US 20200015807 (16 January 2020, benefit to 16 July 2018) and further in view of Anderson et al., US 20060161136 (20 July 2006).
Regarding new claim 25, Magnusson modified by Limon teaches the guide device of claim 24, as set forth above.
Magnusson modified by Limon do not teach wherein one of the first jaw and the second jaw comprises a handle configured to manipulate the first jaw or the second jaw, wherein the movement of the first jaw or the second jaw manipulated by the handle 1s relative to a position of the other of the first jaw and the second jaw.
Anderson teaches a needle holder comprising jaws wherein first jaw or the second jaw comprises a handle (FIG 20, lever 704) for manipulating said first jaw or said second jaw by solicitation, wherein said first jaw or said second jaw is driven in movement relative to the other jaw (¶85).
Magnusson modified by Limon and Anderson teach in the field of needle holders. Although, Magnusson discloses the claimed base needle guide device (needle guide, tool-holder, needle, jaws). Limon specifically addresses the jaws device comprising at least one tooth at the level of the grooves, said at least one tooth being adapted to interpenetrate when the needle guide is in the guiding position. Neither Magnusson nor Limon disclose a handle configured to move either the first or second jaw. Anderson specifically addresses the jaws comprising a lever handle 704 that can be used to open and close the jaws and is also capable of moving over-center to lock-in the needle between the jaws (¶85). Because Magnusson and Limon both teach needle holders comprising jaws and Anderson provides a set of jaws comprising a handle, a person of ordinary skill in the art, seeking to permit a user to grasp the jaws of Magnusson’s architecture would reasonably consult Anderson’s handle solution. Anderson’s handle can be can be incorporated alongside Magnusson’s jaws (same general location and interaction with the path determiner/needle guide) using known assembly methods without redesigning Mangusson’s core device. Because the references address the same engineering problem (needle-guide jaw devices) and the proposed modifications are mechanically compatible and implemented by routine engineering practices (adding a handle to the existing jaws for ease of grasping the jaws by a user), a person of ordinary skill in the art before the effective filing date of the claimed invention would have had a reasonable expectation of success in combining these teachings.
Allowable Subject Matter
Claims 8-10, 13, 26-28, 31-33 are 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.
Conclusion
Claims 1, 2, 4-7, 11, 12, 23-25, 29, and 30 are rejected. Claims 8-10, 13, 26-28, 31-33 are objected to.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Zhang et al., US 20150128405 (14 May 2025) teaches wire clamp with piezoelectric actuator and method and apparatus for applying a preload force to the piezoelectric actuator.
Taylor et al., WO 2012018816 A2 (9 February 2012) teaches tool exchange interface and control algorithm for cooperative surgical robots.
Valpola et al., WO 201161304 A1 (29 December 2011) teaches methods for the selection of physical objects in a robot system.
Yanof et al., US 9,259,195 (16 February 2016) teaches remotely held needle guide for CT Fluoroscopy.
Glozman et al., US 20160249991 (1 September 2016) teach gripper for robotic image guided needle insertion.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHERIE M POLAND whose telephone number is (703)756-1341. The examiner can normally be reached M-W (9am-9pm CST) and R-F (9am-3pm CST).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jackie Ho can be reached at 571-272-4696. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHERIE M POLAND/Examiner, Art Unit 3771
/SHAUN L DAVID/Primary Examiner, Art Unit 3771