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 .
Election/Restrictions
Applicant's election with traverse of Group I- Claims 1-10 in the reply filed on 8/23/2024 is acknowledged. The traversal is on the ground(s) that the amendment to replace the term “a receiving part” with “a receiving cavity” is a special technical feature, thus the claims do not lack unity with respect to the teachings of Sun (CN 109674517A) (Remarks Page 7). This is found persuasive as the amended “receiving cavity” is not found in Sun, thus the claims do not lack unity a posteriori.
Therefore, the restriction requirement has been withdrawn.
In view of the withdrawal of the restriction requirement, applicant(s) are advised that if any claim presented in a divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application. Once the restriction requirement is withdrawn, the provisions of 35 U.S.C. 121 are no longer applicable. See In re Ziegler, 443 F.2d 1211, 1215, 170 USPQ 129, 131-32 (CCPA 1971). See also MPEP § 804.01.
Claim Objections
Claim 9 is objected to because of the following informalities:
Claim 9: “a through hole that extending axially” should read “a through hole [[that]] extending axially”
Appropriate correction is required.
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: “fixing member” in claim 1; “release transmission component” in claim 3; “release operating component”, “suture operating component” in claim 12; and “suture needle fixing mechanism” and “suture needle fixing operating component” in claim 13.
Claim 3 recites the limitation of a “release transmission component”. The term “component” is used as a substitute for “means” and is modified by functional language “drives the lock cylinder to move along the axial direction”. There is no corresponding structure in the claim, therefore invoking 112(f). Based on the specification, the corresponding structure for “release transmission component” “includes a transmission rod, and the transmission rod butts against the lock cylinder to push the lock cylinder to move axially” (Page 3) or equivalents thereof.
Claim 12 recites the limitation of a “release operating component”. The term “component” is used as a substitute for “means” and is modified by functional language “release operating”. There is no corresponding structure in the claim, therefore invoking 112(f). Further, there is no explicit corresponding structure in the specification, aside from the claim limitation that “the suture operating component and the release operating component are the same component” and “the suture needle fixing operating component, the suture operating component and the release operating component are the same component” (Page 3) therefore the scope of the limitation is indefinite. The specification does disclose “the operating component” (1 and 101) (Page 9, 34), however, it is unclear if the “release operating component” comprises the same structure or a different structure, since the “release operating component” itself is not labeled in the disclosure or drawings.
Claim 12 recites the limitation of a “suture operating component”. The term “component” is used as a substitute for “means” and is modified by functional language “suture operating”. There is no corresponding structure in the claim, therefore invoking 112(f). Further, there is no explicit corresponding structure in the specification, aside from the claim limitation that “the suture operating component and the release operating component are the same component” and “the suture needle fixing operating component, the suture operating component and the release operating component are the same component” (Page 3) therefore the scope of the limitation is indefinite. The specification does disclose “the operating component” (1 and 101) (Page 9, 34), however, it is unclear if the “suture operating component” comprises the same structure or a different structure, since the “suture operating component” itself is not labeled in the disclosure or drawings.
Claim 13 recites the limitation of a “suture needle fixing mechanism”. The term “mechanism” is used as a substitute for “means” and is modified by functional language “suture needle fixing”. There is no corresponding structure in the claim, therefore invoking 112(f). Based on the specification, the corresponding structure for “suture needle fixing mechanism” is “a suture needle fixing operating component” (Page 3), which is further interpreted under 112(f) below.
Claim 13 recites the limitation of a “suture needle fixing operating component”. The term “component” is used as a substitute for “means” and is modified by functional language “a suture needle fixing operating”. There is no corresponding structure in the claim, therefore invoking 112(f). Further, there is no corresponding structure in the specification, aside from the same claim limitation that “the suture needle fixing operating component, the suture operating component and the release operating component are the same component”, therefore the scope of the limitation is indefinite (Page 3). The specification does disclose “the operating component” (1 and 101) (Page 9, 34), however, it is unclear if the “suture needle fixing operating component” comprises the same structure or a different structure, since the “suture needle fixing operating component” itself is not labeled in the disclosure or drawings.
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.
Claims 1-16 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 limitation “fixing member” in claim 1 invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. Based on the specification, it is unclear how many components are required to comprise “a fixing member”, since the present disclosure defines the fixing member to include “an end plate 96 oppositely located at the near end. The near end face of the end plate 96 is provided with a first mounting part 95, which is fixed with the supporting component 5 through a first fastening pin 94, so that the fixing member 99 is fixed with the supporting component 5. Referring to Fig. 20 and Fig. 21, the fixing member 99 includes a winding part 93…. The fixing member 99 also includes an intercepting plate 102, which is connected with the far end of the 'winding part 93, and the width of the intercepting plate 102 is greater than that of the winding part 93…. The fixing member 99 is provided with an axial extending through hole 85”. Although the specification does recite corresponding structure for “fixing member”, it is unclear how much of the specification needs to be read into the claim to correctly define the scope of the limitation, i.e., if all of the disclosed structure is required to comprise a “fixing member” or if only certain features are required.
Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Due to the inability to determine proper scope of the claim, no art will be applied. Claims 2-16 are rejected due to their dependence on claim 1.
Claim 12 claims two separate structures, “suture operating component and release operating component” but then claims they are “a same component”, making the two distinct components into one component, which is contradictory and unclear.
Claim 13 further introduces “a suture needle fixing operating component” as a separate structure, but then states it is the same component as “the suture operating component and the release operating component”, making the three distinct components into one component, which is contradictory and unclear.
Claim limitations “a release operating component”, “a suture operating component”, “a suture needle fixing operating component” (Claims 12-13) invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. There is no explicit corresponding structure in the specification, aside from the claim limitation that “the suture operating component and the release operating component are the same component” and “the suture needle fixing operating component, the suture operating component and the release operating component are the same component” (Page 3) therefore the scope of the limitations is indefinite. The specification does disclose “the operating component” (1 and 101) (Page 9, 34), however, it is unclear if the claimed components comprise the same structure or a different structure, since the individual components are not labeled in the disclosure or drawings. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Claim 14 recites the limitation "the same operating component" in line 1. There is insufficient antecedent basis for this limitation in the claim, as the limitation “a same component” is positively recited in claim 12 while the present claim depends from claim 11.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US 20070213757 A1; US 20100262166 A1.
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/Z.J./Examiner, Art Unit 3771
/KATHERINE H SCHWIKER/Primary Examiner, Art Unit 3771