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 Amendment
Claims filed on January 15th, 2026 have been entered. Claims 1 and 9- 23 are pending in the application. Claims 20- 23 remain withdrawn for being drawn to an unelected species. The amendments to the claims overcome the previous claim objections for claims 12- 13, 18, and 19 and the 35 U.S.C. 112(b) rejection of claims 11-13.
Claim Objections
Claim 15- 17 are objected to because of the following informalities:
Claim 15, Line 1 states “14 wherein”, it is suggested to change this to “14, wherein”.
Claim 16, Line 1 states “15 wherein”, it is suggested to change this to “15, wherein”.
Claim 17, Line 1 states “16 wherein”, it is suggested to change this to “16, wherein”.
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 11, 12, and 13- 17 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 14, Lines 1- 2 recite the limitation “wherein the at least one filament control device includes at least one arm operably connecting the at least one filament to the proximal end of the trocar”, it is unclear if claim 14 requires the at least one filament as claim 3 sets forth that the at least one mechanism for isolating and/or dividing tissue can be at least one filament connected to the trocar, a blade within the trocar, or an endo-stapling device for selective application by the surgeon, therefore the at least one filament is not positively required for claim 14 as it is written. For purposes of examination, claim 14 is herein interpreted as wherein the at least one mechanism for isolating and/or dividing tissue is the at least one filament and wherein the at least one filament control device includes at least one arm.
Claims 15- 17 are rejected for being dependent on or from rejected claim 14.
Claim Rejections - 35 USC § 102
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
The rejection of claims 1-4, 9- 10, 13- 14, and 18- 19 under 35 U.S.C. 102(a)(1) over Bailey et al. (WO 99/34736) has been withdrawn in light of applicant’s amendments; specifically Bailey does not teach wherein at least one of the surgical ligatures is formed as a mechanical fuse, to selectively break- away at a specific point along the ligature upon application of a predetermined force, to thereby permit release and removal from the trocar of securely tied- off tissue remaining at the surgical site.
Claim(s) 1- 14, 18, and 19 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hofmann et al. (US 5,925,044).
Regarding claim 1, Hofmann (Hofmann et al.) teaches an enhanced trocar (Fig. 1) for laparoscopic surgery (abstract, Column 3, Lines 14- 21), the trocar comprising a proximal end, a distal end and a tubular trocar body (tube 11) connecting and extending between the proximal end and the distal end (see annotated Fig. 1 below), the trocar body being shaped and sized to receive inline and retain therein tissue isolated and divided during a laparoscopic surgical procedure, thereby permitting a surgeon to remove such tissue from a surgical site and dispose of the removed tissue without an additional dedicated disposal device (Column 1, Lines 52- 58; Column 3, Lines 58- 64; as this language is functional, the device solely has to be able to perform the function in order to teach the limitation, as the device has the same structure set forth in claim 1, it would be able to perform the same function, and therefore can remove and dispose of tissue without an additional dedicated disposal device) and the trocar having at least one mechanism (cutting blade 15’) for isolating and dividing the tissue within the body of the trocar (Column 1, Lines 52- 58; Column 3, Lines 58- 64). Hofmann further teaches wherein the at least one mechanism (cutting blade 15’) for isolating and/or dividing tissue within the body of the trocar comprises a blade within the trocar (see annotated Fig. 1 below)(Column 3, Lines 23- 31).
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Regarding the language of wherein one of the at least one surgical filament connected to the trocar includes a first filament connected to the proximal end of the trocar and extending toward the distal end of the trocar, wherein the at least one surgical filament for isolating and/or dividing tissue within the body of the trocar includes a first surgical ligature and a second surgical ligature, wherein at least one of the surgical ligature is formed to selectively break-away, to thereby permit release from the trocar of any tied- off tissue remaining at the surgical site, wherein the first surgical ligature and the second surgical ligature each are operably connected at the proximal end of the trocar for selective manipulation by the surgeon, wherein the first surgical ligature and the second surgical ligature each are provided with a ligature loop and a sliding ligature knot at respective distal ends of the first surgical ligature and the second surgical ligature, to thereby permit selective manipulation by the surgeon of the first surgical ligature and the second surgical ligature to separately set the tension of the respective ligature knots and cause tightening of the respective loops thereof to selectively tie- off tissue during a surgical procedure while the tissue is within the body of the enhanced trocar, claim 1 states that the at least one mechanism for isolating and/or dividing tissue can be three devices, at least one filament connected to the trocar, a blade within the trocar, or an endo-stapling device for selective application by the surgeon to the tissue, therefore if the prior art has the blade within the trocar or an endo-stapling device, then the prior art satisfies the claim language, so Hofmann satisfies the claim language. The rest of the claim language is directed to further features of at least one filament connected to the trocar, which is not positively required by the claim language if the at least one mechanism for isolating and/or dividing tissue is a blade within the trocar or and endo-stapling device.
Regarding claims 11- 14 and 18- 19, Hofmann teaches the enhanced trocar as discussed above, including wherein the at least one mechanism for isolating and/or dividing tissue is a blade within the trocar.
As claim 1 states that the at least one mechanism for isolating and/or dividing tissue can be three devices, at least one filament connected to the trocar, a blade within the trocar, or an endo-stapling device for selective application by the surgeon to the tissue. If the prior art has the blade within the trocar or an endo-stapling device, then the prior art satisfies the claim language, therefore Hofmann satisfies the claim language.
It is noted that claims 11- 14 and 18- 19 are from if the at least one mechanism for isolating and/or dividing tissue is at least one surgical filament connected to the trocar, as the other two devices do not require there to be at least one surgical filament. Furthermore, as claims 11-14 do not positively recite wherein the at least one mechanism for isolating and/or dividing tissue is the at least one filament connected to the trocar, then Hofmann satisfies the claim language through having the at least one mechanism for isolating and/or dividing tissue be a blade within the trocar.
Allowable Subject Matter
Claims 15- 17 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include 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 closest prior art of record is Bailey et al. (WO 99/34736) and Hofmann et al. (US 5,925,044).
Bailey (Bailey et al.) teaches an enhanced trocar (laparoscopic instrument 100)(Figs. 1- 6), the trocar having at least one mechanism (sutures 18 and 19, loops 14 and 15) for isolating and dividing the tissue within the body of the trocar (Page 2, Line 30- Page 3, Line 3), wherein the at least one mechanism is at least one filament (sutures 18 and 19)(Page 2, Line 30- Page 3, Line 3), which is connected to at least one filament control device (breakaway rods 36A, 36B)(Page 6, Line 31- Page 7, Line 6).
Hofmann (Hofmann et al.) teaches an enhanced trocar (Fig. 1)(Column 1, Lines 52- 58; Column 3, Lines 58- 64) and the trocar having at least one mechanism (cutting blade 15’) for isolating and dividing the tissue within the body of the trocar (Column 1, Lines 52- 58; Column 3, Lines 58- 64).
However, the prior art does not teach or suggest (claim 15) wherein the at least one filament control device includes a hub at the proximal end of the trocar, the hub having at least one track extending on the trocar, each track of the at least one track being for receipt and adjustable carriage of a corresponding arm, each arm being connected to a proximal end of a corresponding surgical filament. Furthermore, there is no motivation to have this hub.
Response to Arguments
Applicant's arguments filed January 15th, 2026 have been fully considered but they are not persuasive.
Regarding applicant’s arguments about the rejection of claims 1-4, 9- 10, 13- 14, and 18- 19 under 35 U.S.C. 102(a)(1) over Bailey et al. (WO 99/34736), these arguments have been fully considered but are moot as this rejection has been withdrawn in light of applicant’s amendments, as discussed above.
Regarding applicant’s arguments about Hofmann, as stated above, as claim 1 states that the at least one mechanism for isolating and/or dividing tissue can be three devices, at least one filament connected to the trocar, a blade within the trocar, or an endo-stapling device for selective application by the surgeon to the tissue. If the prior art has the blade within the trocar or an endo-stapling device, then the prior art satisfies the claim language, therefore Hofmann satisfies the claim language since Hofmann teaches a blade (cutting blade 15’) within the trocar (see annotated Fig. 1 below)(Column 3, Lines 23- 31).
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Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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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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/L.R.R./Examiner, Art Unit 3771 /TAN-UYEN T HO/Supervisory Patent Examiner, Art Unit 3771
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