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 .
Response to Arguments
Regarding the previous claim objections, the amendments to claim 13 are acknowledged and the claim objection is withdrawn.
Applicant’s arguments, see pages 1-2, filed 02/26/2026, with respect to the 102 rejection of claim 1 under Mark and the 103 rejection of claim 10 under Mark in view of Bettuchi have been fully considered and are persuasive. The examiner agrees that Mark nor Mark in view of Bettuchi fails to disclose or suggest “wherein each of the wider diameter sections are threaded sections and wherein the wider diameter sections are spaced apart from each other” as required by claims 1 and 10. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made over Mark in view of Felder (US 20140081281) for claim 1 and Mark in view of Bettuchi and Felder (US 20140081281) for claim 10.
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:
“a positioning member” in claims 1 and 18. The limitation describing the positioning member in claims 1 and 18 (“wherein the positioning member extends from the distal end of the adapter body” in claim 1 and “extending distally from a distal end of the mounting piece”) fails to include sufficient structure to perform the recited function of "positioning". In the specification, the positioning member is described as comprising a body section and tip member that narrows from the body section to an adapter distal tip (para. 0051). Therefore, the positioning member is interpreted as member having a body section that narrows into a distal tip or any structural equivalents thereof that extends from the distal end of the adapter body.
“retaining member” in claims 1 and 10. The limitation describing the retaining member in claims 1 and 10 (“is configured to be positioned in the retaining channel and disposed adjacent to the reduced diameter section”) fails to include sufficient structure to perform the recited function of "retaining". In the specification, there is no specific structural language to describe the retaining member. Therefore, the retaining member is interpreted as a member that can be positioned in the retaining channel, disposed adjacent to the reduced diameter section or any structural equivalents thereof used to prevent the locking mechanism from being disengaged from the adapter (para. 0058).
“mounting piece” in claims 10 and 20. The limitation describing the mounting piece in claims 10 and 20 (“engaged with the first and second adapter casings”) fails to include sufficient structure to perform the recited function of "mounting". In the specification, the mounting piece is described as comprising a securing portion to secure to the first and second adapter casings (para. 0065). Therefore, the mounting piece is interpreted as a piece having a securing portion or any structural equivalents thereof that engages or secures to the first and second adapter casings.
“securing portion” in claim 13. The limitation describing the securing portion in claim 13 (engages with the engagement channel of the first adapter casing and the engagement channel of the second adapter casing”) fails to include sufficient structure to perform the recited function of "securing". In the specification, the securing portion is “defined by a flange member that is spaced from a proximal face such that an annular groove is formed between the flange member and the proximal face” (para. 0071). Therefore, the securing portion is interpreted as a flange member that is spaced from a proximal face such that an annular groove is formed between the flange member and the proximal face or any structural equivalents thereof that engages with the engagement channel of the first adapter casing and the engagement channel of the second adapter casing.
“one or more first cooperating members” and “one or more second cooperating members” in claim 14. The limitation describing the one or more first and second cooperating members in claim 14 (“configured to engage with the one or more first cooperating members of an inner surface of the first adapter casing to connect the first and second adapter casings together”) fails to include sufficient structure to perform the recited function of "cooperating". In the specification, the one or more first cooperating member is defined as “a detent” having a thickened end (para. 0064) and the one or more second cooperating member is defined as “an indentation” (para. 0067). Therefore, the one or more first and second cooperating members are interpreted the detent and indentation as described aboce or any structural equivalents thereof that engages each other to connect the first and second adapter casings together.
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 Objections
Claim 5 is objected to because of the following informalities:
Claim 5, line 1: “the distal end” should recite “the closed distal end”.
Appropriate correction is required.
Claim Rejections - 35 USC § 103
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1, 3-7 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Mark et al. (US 20140187922) [hereinafter Mark] in view of Felder (US 20140081281).
Regarding claim 1, Mark discloses an adapter 168, 170 for use with a surgical access assembly 100 (Figs. 2, 7, para. 0080, 0101), comprising:
an adapter body (interpreted as body of handle portion 170 and body portion 168) and a positioning member 172 (see annotated Fig. 8A below, Figs. 7A-8B, para. 0101);
wherein the adapter body is defined by a distal end and a proximal end 166 opposite the distal end (see annotated Fig. 8A below);
wherein the positioning member 172 extends from the distal end of the adapter body (see annotated Fig. 8A below, Figs. 7A-B, 8A, para. 0101-0102); and
wherein a channel 191, 198 configured for receiving a navigation element 112 extends through the adapter body, extending from the proximal end and toward the distal end (Figs. 7A, 8A, 9A, para. 0102, 0107, 0114),
the adapter body further comprising a locking mechanism which includes a receiving aperture 182 that receives a locking member 110), a retaining channel 186 (see Fig, 8A, para, 0106), and a retaining member 114 (not shown but described in para. 0081, 0106), wherein the retaining member 114 is configured to be positioned in the retaining channel 186 (Fig. 8A, para. 0106).
Mark further discloses that the receiving aperture 182 is threaded to receive a mating threaded surface of the locking member 110 (Fig. 2, para. 0095) and includes an engagement opening 184 that communicates with the retaining channel 186. The retaining member 114 extends into the retaining channel 186 to prevent the locking member 110 from being entirely withdrawn from the receiving aperture 182 by contacting the threaded surface of the locking member (para. 0095) and is disposed adjacent to the threads of locking member 110 (Fig. 9A, para. 0095).
However, Mark fails to disclose a reduced diameter section in between wider diameter sections of the locking member, wherein each of the wider diameter sections are threaded sections and wherein the wider diameter sections are spaced apart from each other, and wherein the retaining member is disposed adjacent to the reduced diameter section.
Felder in the same field of endeavor of locking mechanisms teaches that it is known in the art to configure threads as a reduced diameter section 186 in between wider diameter sections 184, 188 of a locking member 116 (Figs. 15-17, para. 0048), wherein each of the wider diameter sections 184, 188 are threaded sections (Figs. 15-17, para. 0048) and wherein the wider diameter sections 184, 188 are spaced apart from each other (Figs. 15-17, para. 0048).
The substitution of one known threaded configuration (non-threaded section between two threaded sections as shown in Felder) for another (threaded section as shown in Mark) would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention since the substitution of the non-threaded section in between two threaded sections as shown in Felder would have yielded predictable results, namely, a way to allow the locking member to transition from a position in which the locking member is axially and rotationally locked by way of the wider sections and a position in which the locking member may move axially without disengaging from the retaining aperture a transition between the reduced diameter section and the distal wider section (para. 0077, 0095 of Mark; 0048 of Felder).
The combination of Mark in view of Felder would result in a product wherein the retaining member 114 of Mark (Fig. 9A, para. 0095) is disposed adjacent to the reduced diameter section 186 of Felder (Figs. 15-17, para. 0048) since the retaining member is designed to be adjacent to the threaded section of the locking member in Mark (para. 0095 of Mark).
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Annotated Fig. 8A of Mark
Regarding claim 3, modified Mark discloses wherein the channel 191, 198 terminates in a closed distal end that defines a seating portion 199 (Figs. 9A-B, para. 0114, 0141 of Mark discloses that first channel segment 191 extends into body portion 168 to second channel segment 198 which terminates in a closed distal end that defines a seating portion).
Regarding claim 4, modified Mark discloses wherein the adapter body further includes a window 194 providing visual access to the channel 191, 198, adjacent the seating portion 199 (Fig. 7A, para. 0110 of Mark).
Regarding claim 5, modified Mark discloses wherein the distal end tapers inwardly to define the seating portion (Figs. 9A-B, para. 0114, 0141 of Mark illustrates discloses the closed distal end of the channel tapers inwardly to define the seating portion).
Regarding claim 6, modified Mark discloses wherein the adapter body further includes a grip portion 178 disposed adjacent to the proximal end of the adapter body (Fig. 8A, para. 0105 of Mark).
Regarding claim 7, modified Mark discloses wherein the positioning member 172 includes a tip member 174 that tapers from a first diameter to a second diameter (Figs. 8A-B, para. 0101 of Mark).
Regarding claim 9, modified Mark discloses wherein the adapter body includes an engagement section that includes an annular angled surface encircling the proximal end of the positioning member (see annotated Fig. 8D of Mark below).
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Annotated Fig. 8D of Mark
Claim(s) 8 is rejected under 35 U.S.C. 103 as being unpatentable over Mark et al. (US 20140187922) [hereinafter Mark] in view of Felder (US 20140081281) as applied to claim 1 above, and further in view of Kahle et al. (US 20050065543) [hereinafter Kahle].
Regarding claim 8, Mark discloses all of the limitations set forth above in claim 1. However, Mark is silent on the material forming the adapter body and therefore fails to disclose wherein at least a portion of the adapter body is made of a transparent material.
Kahle in the same field of endeavor teaches an obturator 18 comprising an adaptor body 25, 21 (interpreted as handle 25 and shaft 21 of obturator), wherein at least a portion of the adapter body is made of a transparent material (para. 0061 discloses that the shaft 21 may be formed from a transparent polycarbonate material).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the material of the body portion of the adapter in Mark to include the transparent material of Kahle since it is well within the general skill of one skilled in the art to select a known material based on its suitability for its intended use. (In re Leshin 125 USPQ 416; MPEP 2144.07).
Claim(s) 10-13, 15, and 17-18 are rejected under 35 U.S.C. 103 as being unpatentable over Mark et al. (US 20140187922) [hereinafter Mark] in view of Felder (US 20140081281) and Bettuchi et al. (US 20100094228) [hereinafter Bettuchi].
Regarding claim 10, Mark discloses an adapter 168, 170 for a surgical access assembly 100 (Fig. 2, para. 0076), comprising:
an adapter casing 170 defining a channel 191 that is configured to receive a navigation element 112 (Fig. 7A, 8A, 9A, para. 0102, 0107, 0114) and a locking mechanism which includes a receiving aperture 182 that receives a locking member 110 (Fig. 2, para. 0095), a retaining channel 186 (see Fig, 8A, para, 0106), and a retaining member 114 (not shown but described in para. 0081, 0106), wherein the retaining member 114 is configured to be positioned in the retaining channel 186 (para. 0106) and disposed adjacent to the locking member (see Fig. 8A, para. 0106), and a mounting piece 168 engaged with the adapter casing 170 (Fig. 2, para. 0090).
Mark further discloses that the receiving aperture 182 is threaded to receive a mating threaded surface of the locking member 110 (Fig. 2, para. 0095) and includes an engagement opening 184 that communicates with the retaining channel 186. The retaining member 114 extends into the retaining channel 186 to prevent the locking member 110 from being entirely withdrawn from the receiving aperture 182 by contacting the threaded surface of the locking member (para. 0095) and is disposed adjacent to the threads of locking member 110 (Fig. 9A, para. 0095).
However, Mark fails to disclose a reduced diameter section in between wider diameter sections of the locking member, wherein each of the wider diameter sections are threaded sections and wherein the wider diameter sections are spaced apart from each other, and wherein the retaining member is disposed adjacent to the reduced diameter section.
Felder in the same field of endeavor of locking mechanisms teaches that it is known in the art to configure threads as a reduced diameter section 186 in between wider diameter sections 184, 188 of a locking member 116 (Figs. 15-17, para. 0048), wherein each of the wider diameter sections 184, 188 are threaded sections (Figs. 15-17, para. 0048) and wherein the wider diameter sections 184, 188 are spaced apart from each other (Figs. 15-17, para. 0048).
The substitution of one known threaded configuration (non-threaded section between two threaded sections as shown in Felder) for another (threaded section as shown in Mark) would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention since the substitution of the non-threaded section in between two threaded sections as shown in Felder would have yielded predictable results, namely, a way to allow the locking member to transition from a position in which the locking member is axially and rotationally locked by way of the wider sections and a position in which the locking member may move axially without disengaging from the retaining aperture by way of a transition between the reduced diameter section and the distal wider section (para. 0077, 0095 of Mark; 0048 of Felder).
The combination of Mark in view of Felder would result in a product wherein the retaining member 114 of Mark (Fig. 9A, para. 0095) is disposed adjacent to the reduced diameter section 186 of Felder (Figs. 15-17, para. 0048) since the retaining member is designed to be adjacent to the threaded section of the locking member in Mark (para. 0095 of Mark).
Modified Mark further discloses that the adapter casing (interpreted as handle portion 170) is a single component connected to the mounting piece 168 (Fig. 2, para. 0090, 0094 of Mark).
However, modified Mark fails to disclose that the adapter casing comprises multiple components comprising a first adapter casing; a second adapter casing selectively engageable with the first adapter casing, and the mounting piece engaged with the first and second adapter casings.
Bettuchi in the same field of endeavor teaches an obturator assembly 100 (Fig. 1, para. 0033) comprising an adapter 102 comprising a first adapter casing (interpreted as a first half of obturator housing 102, Fig. 1, para. 0033); a second adapter casing (interpreted as a second half of obturator housing 102, Fig. 1) selectively engageable with the first adapter casing (Fig. 1, para. 0033-0034); and a mounting piece 104 engaged with the first and second adapter casings via. obturator collar 112 (Figs. 1, 13-14, para. 0033-0034).
It would have been obvious to one having ordinary skill in the art at the time the invention was made to modify the adapter in Mark to comprise multiple components such that the adapter includes the first adapter casing, the second adapter casing, and the mounting piece, since it has been held that constructing a formerly integral structure in various elements involves only routine skill in the art. Nerwin v. Erlichman, 168 USPQ 177, 179.
The combination of modified Mark and Bettuchi would result in a product wherein the first adapter casing (interpreted as a first half of handle portion 107 comprising the locking mechanism, see Figs. 2 and 7A of Mark) comprises the locking mechanism (para. 0095 of Mark) and wherein the first and second adapter casings (interpreted as the first and second halves of handle portion 107 of Mark, see Figs. 2A, 7A) cooperate to define the channel 191 configured to receive the navigation element112 (Fig. 7A, 8A, 9A, para. 0102, 0107, 0114 of Mark).
Regarding claim 11, modified Mark discloses wherein the first adapter casing includes a first navigation groove (interpreted as one half of first channel segment 191, Fig. 8A, para. 0096 of Mark) defined between a proximal end 166 of the first adapter casing (Fig. 7A, para. 0094 of Mark) and a distal end (interpreted as end comprising a first half stop member 176) of the first adapter casing (Figs. 7A-B, para. 0094 of Mark), and wherein the second adapter casing includes a second navigation groove (interpreted as the other half of the first channel segment 191, Fig. 8A, para. 0096 of Mark) defined between a proximal end 166 of the second adapter casing (Fig. 7A, para. 0094 of Mark) and a distal end (interpreted as end comprising a second half of stop member 176) of the second adapter casing (Figs. 7A-B, para. 0094 of Mark), the first and second navigation grooves collectively defining the channel 191 (Fig. 8A, para. 0096 of Mark).
Regarding claim 12, modified Mark discloses wherein a portion of the mounting piece is disposed within a portion of an inner surface of the first adapter casing (Figs. 1, 13-14, para. 0033-0034 of Bettuchi) and a portion of an inner surface of the second adapter casing to secure the mounting piece to the first and second adapter casings (Figs. 1, 13-14, para. 0033-0034 of Bettuchi).
Regarding claim 13, modified Mark discloses all of the limitations set forth above in claim 12. Modified Mark further discloses wherein the mounting piece 104 includes a securing portion 112, 116 that engages with the first and second adapter casings (Figs. 1, 15, para. 0034 of Bettuchi).
However, modified Mark fails to disclose wherein the first adapter casing includes an engagement channel adjacent to a distal end of the first adapter casing and the second adapter casing includes an engagement channel adjacent to a distal end of the second adapter casing, and that the securing portion engages with the engagement channel of the first adapter casing and the engagement channel of the second adapter casing, wherein the mounting piece includes a securing portion that engages with the first and second adapter casings.
Bettuchi further teaches wherein the first adapter casing includes an engagement channel (interpreted as channel defined by collar mounting wall 117 of the first half of adapter casing 102, Fig. 1, para. 0033 of Bettuchi) adjacent to the distal end of the first adapter casing (Fig. 13, para. 0034 of Bettuchi), the second adapter casing includes an engagement channel (interpreted as channel defined by collar mounting wall 117 of the second half of adapter casing 102, Fig. 1, para. 0033 of Bettuchi) adjacent to the distal end of the second adapter casing (Fig. 13, para. 0034 of Bettuchi), the mounting piece 104 includes a securing portion 112, 116 that engages with the engagement channel of the first adapter casing and the engagement channel of the second adapter casing (Figs. 1, 15, para. 0034 of Bettuchi), wherein the mounting piece 104 includes a securing portion 112, 116 that engages with the first and second adapter casings (Figs. 1, 15, para. 0034 of Bettuchi).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the first and second casings in modified Mark to include engagement channels, as taught by Bettuchi, and modify the mounting piece in modified Mark to include the securing portion, as taught by Bettuchi since the combination would have yielded nothing more than predictable results, namely, a way to securely connect the mounting piece to the adapter casings such that axial movement does not occur (Fig. 1, para. 0033-0034 of Bettuchi); KSR International Co. v. Teleflex Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007).
Regarding claim 15, modified Mark discloses wherein the mounting piece 168 further includes a window 190 (Fig. 7A, para. 0098 of Mark).
Regarding claim 17, modified Mark discloses wherein the mounting piece 168 includes a seating portion 199 within the mounting piece 104 (Figs. 9A-B, para. 0114, 0141 of Mark), wherein the seating portion 199 is annularly angled (Figs. 9A-B, para. 0114, 0141 of Mark).
Regarding claim 18, modified Mark discloses wherein the mounting piece 168 includes a positioning member 172 extending distally from a distal end comprising of the mounting piece 168 (Fig. 7A, para. 0090 of Mark).
Claim(s) 14 is rejected under 35 U.S.C. 103 as being unpatentable over Mark et al. (US 20140187922) [hereinafter Mark] in view of Felder (US 20140081281) and Bettuchi et al. (US 20100094228) [hereinafter Bettuchi] as applied to claim 10 above, and further in view of Moll et al. (US 20050065543) [hereinafter Moll].
Regarding claim 14, modified Mark discloses all of the limitations set forth above in claim 10. However, modified Mark fails to disclose wherein an engagement surface of the first adapter casing defines one or more first cooperating members, and wherein an engagement surface of the second adapter casing includes one or more second cooperating members configured to engage with the one or more first cooperating members of an inner surface of the first adapter casing to connect the first and second adapter casings together.
Moll in the same field of endeavor teaches trocar assembly 12 (Fig. 1, col. 2 lines 37-43) comprising a first adapter casing 15 and a second adapter casing 16 engageable with the first adapter casing 15 (Fig. 7, col. 2 lines 47-53), wherein an engagement surface (interpreted as an inner wall) of the first adapter casing 15 defines one or more first cooperating members 27 (Fig. 7, col. 2 lines 47-53), and wherein an engagement surface (interpreted as an inner wall) of the second adapter casing 16 includes one or more second cooperating members 28 configured to engage with the one or more first cooperating members 27 of an inner surface of the first adapter casing 15 to connect the first and second adapter casings together (Figs. 1-2, 7, col. 2 lines 47-53).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the first and second casings in modified Mark to include first and second cooperating members, as taught by Moll, since the combination would have yielded nothing more than predictable results, namely, a way to securely fasten the first and second adapter casings together (Figs. 1-2, 7, col. 2 lines 47-53 of Moll); KSR International Co. v. Teleflex Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007).
Claim(s) 16 is rejected under 35 U.S.C. 103 as being unpatentable over Mark et al. (US 20140187922) [hereinafter Mark] in view of Felder (US 20140081281) and Bettuchi et al. (US 20100094228) [hereinafter Bettuchi] as applied to claim 15 above, and further in view of Smith (US 20110152910) and Keating et al. (US 20160051247) [hereinafter Keating].
Regarding claim 16, modified Mark discloses all of the limitations set forth above in claim 15. However, modified Mark fails to disclose wherein the window includes a spring element that is biased inwardly toward the channel.
Smith in the same field of endeavor teaches an optical obturator 300 comprising a spring element 332 that is biased inwardly toward a channel 314 (Figs. 1, 5A-B, para. 0038, 0052) for the purpose of biasing an inner member 328 proximally when the optical obturator is not in use.
Thus, it would have been recognized by one of ordinary skill in the art that applying the known technique (a biasing spring between an outer member and an internal translating component) taught by Smith to the channel of the adapter of modified Mark would have yielded predicable results and resulted in an improved system, namely, a system that would bias the navigational element proximally, thereby providing the device with a starting position that transitions to an operative position (para. 0052-0053 of Smith). Furthermore, this modification would have been beneficial by further limiting the extension of the navigational element which would have yielded an increased control over its movement, which is desirable for surgical viewing techniques since it enhances control over the viewing area; KSR International Co. v. Teleflex Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007).
Keating teaches that it is known in the art to have a window 380 that includes a spring element 375 (Fig. 3, para. 0045).
It would have been obvious to one of ordinary skill in the art before the effective filing date of
the claimed invention to modify the window in modified Smith to include the spring element, as taught by Keating, in order to allow a user to visualize the state of the spring (para. 0045 of Keating) and thereby notify the user of the depth the navigational element.
Claim(s) 20 is rejected under 35 U.S.C. 103 as being unpatentable over Mark et al. (US 20140187922) [hereinafter Mark] in view of Felder (US 20140081281) and Bettuchi et al. (US 20100094228) [hereinafter Bettuchi] as applied to claim 10 above, and further in view of Galili et al. (US 20190223977) [hereinafter Galili].
Regarding claim 20, modified Mark discloses all of the limitations set forth above in claim 10. However, modified Mark fails to disclose wherein the first and second adapter casings are hingedly connected to the mounting piece.
Galili in the same field of endeavor teaches a first adapter casing 410, a second adapter casing 420 selectively engageable with the first adapter casing 410 (Fig. 4A, para. 0083), wherein the first and second adapter casings 410, 420 are hingedly connected to a proximal end of a needle 400 (Figs. 4A-C, para. 0083, 0086-0087; see note below).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the first and second casings in modified Mark to include a hinged connection, as taught by Galili, since the combination would have yielded nothing more than predictable results, namely, provide the first and second adapter casings with the hinged connection such that the casings can be pivoted from an open to a closed position (para. 0014); KSR International Co. v. Teleflex Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007).
Note: The examiner notes that language such as “connected to”, “coupled to” or “attached to” does not mean “directly” connected, coupled, or attached but indicates that two things can be “linked to” each other by way of their common connection to something else. The combination of modified Mark and Galili would result in a product wherein the first and second adapter casings are hingedly connected to the mounting portion because the first and second adapter casings’ hinged connection is used to close around the mounting piece (see Figs. 4A-C, para. 0014, 0083, 0086-0087 of Galili).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LAUREN DUBOSE whose telephone number is (571)272-8792. The examiner can normally be reached Monday-Friday 7:30am-5:30 pm.
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/LAUREN DUBOSE/Examiner, Art Unit 3771
/SARAH A LONG/Primary Examiner, Art Unit 3771