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 .
Status of Claims
Claims 1 and 3-21 are pending, claims 10-12 and 18-20 have been withdrawn from consideration, claim 2 has been cancelled, and claims 1, 3-9, 13-17, and 21 are currently under consideration for patentability under 37 CFR 1.104. Previous claim objections are partially withdrawn in light of Applicant’s amendments.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 12/11/2025 has been entered.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1, 3-9, 13-17, and 21 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 Objections
Claim 1 is objected to because of the following informalities: on line 12, change “at least one sheath” to “the at least one sheath”. 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: “a translating member” in claim 5.
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 6-9, 13-15, and 21 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.
Regarding claim 6, the limitation “at least one sheath” lacks antecedent basis. Previous claims, such as claims 1 and 4, recite “at least one sheath portion”. Claims 7-9 and 13-15 are rejected due to their dependency on claim 6.
Regarding claim 21, the limitation “a camera slot of the at least one sheath” lacks antecedent basis. Previous claim 1 already recited a camera slot. Further, claim 1 recites “at least one sheath portion”.
Regarding claim 21, the limitation “a blade slot of the at least one sheath” is unclear. It is unclear if the blade slot is the same feature as the blade channel recited in claim 1. Further, claim 1 recites “at least one sheath portion”.
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.
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(s) 1, 3-8, 16, and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Mirza (US 2020/0121347), in view of Smith (US 2009/0093677).
Regarding claim 1, Mirza discloses a videoscopic arthroscopic system (figure 1), comprising: a release instrument (figure 1) including a blade (13, figure 1) and at least one camera sensor (endoscope…visualization…[0123]), wherein the release instrument further comprises: a handpiece (30, figure 1) with a first end and a second end (see the distal and proximal end of 30, figure 1), wherein the handpiece comprises: at least one handle portion (see 30, figure 1); at least one sheath portion (20, figure 1 | slotted…or is closed [0111]) coupled to and extending from the at least one handle portion to a first end of the release instrument (see figure 1); and a blade member (see 10, figure 1) including the blade at one end, wherein the blade member is a single monolithic piece (entire blade…single sheet of…[0107]); wherein the at least one sheath portion comprises: a blade channel (horizontal blade guidance tracks 24, figure 1; [0114]) extending through the at least one sheath portion, wherein the blade member is positioned within and translates within the blade channel (slidably engage…the blade [0113]); and a camera slot (channel 25…endoscope…below the horizontal blade guidance tracks 24 [0114]) extending through the at least one sheath portion from a first end to a second end of the at least one sheath portion (25, figure 1), wherein the at least one camera sensor is positioned within the camera slot and extends from the first end of the at least one sheath portion to the second end of the at least one sheath portion (channel 25…slidable insertion a viewing device…[0114]), and wherein the blade channel and the camera slot are spaced apart from each other within the at least one sheath portion (channel 25 is located blow the horizontal blade guidance tracks 24…[0114]); and a video unit (visually monitor…[0068]) electrically coupled to the release instrument ([0068]; interpreted there to be a connected display/monitor to allow for visualization). Mirza is silent regarding a cannula with a first end and a second end, wherein at least one sheath portion of the handpiece is slidingly received within the cannula; wherein the blade member and the at least one camera sensor positioned within the at least one sheath portion translate together as the at least one sheath portion translates within the cannula, and wherein the blade of the blade member deploys and retracts from the at least one sheath portion and the cannula.
Smith teaches a trocar assembly (10, figure 1) with an obturator assembly (12, figure 1) and a cannula assembly (14, figure 2). The trocar assembly is configured to receive an endoscope to provide observation of the body tissue being penetrated ([0035]). The cannula assembly can be any known cannula configurations capable of receiving the obturator assembly ([0035]). Endoscopic procedures can be performed through a small incision or through cannulas inserted through small entrance wounds in the skin ([0005]).
It would have been obvious to one of ordinary skill in the art before the time of filing to modify the system of Mirza to have a cannula (14, figure 2) that receives the handpiece as taught by Smith ([0035]). Doing so would provide a cannula the handpiece can be inserted through, which can then be inserted thorough an entrance wound ([0005]; Smith). The modified system would have a cannula (14, figure 2; Smith) with a first end and a second end (see the distal and proximal end of 14, figure 2; Smith), wherein at least one sheath portion of the handpiece is slidingly received within the cannula (sheath portion would be received in the cannula [0035]; Smith); wherein the blade member and the at least one camera sensor positioned within the at least one sheath portion translate together as the at least one sheath portion translates within the cannula (endoscope is fed through the opening 39 and under the blade…[0123] | the blade and the at least one camera sensor can translate together when the at least one sheath portion translates/moves), and wherein the blade of the blade member deploys and retracts from the at least one sheath portion and the cannula (the modified cannula would have an opening along the slot 21 to deploy the blade 10, figure 1; Mirza | any known cannula configurations [0035]; Smith).
Regarding claim 3, Mirza further discloses a first housing (32-33, figure 1; Mirza); and a second housing (32-33, figure 1) coupled to the first housing.
Regarding claim 4, Mirza further discloses the first housing comprises: a first handle (see 32-33, figure 1; Mirza) portion of the at least one handle portion extending from the second end of the release instrument toward the first end of the release instrument (see figure 1); and wherein the second housing comprises: a second handle portion (see 32-33, figure 1) of the at least one handle portion extending from the second end of the release instrument toward the first end of the release instrument (see figure 1). Mirza and Smith are silent regarding a first sheath portion of the at least one sheath portion coupled to and extending from the first handle portion to the first end of the release instrument; and a second sheath portion of the at least one sheath portion coupled to and extending from the second handle portion to the first end of the release instrument.
Mirza teaches the housing (30, figure 1) can comprise two halves (32, 33, figure 1) that mate together to form a single housing ([0116]). The housing may also be formed as a single piece or comprise three or more pieces ([0116]).
It would have been obvious to one of ordinary skill in the art before the time of filing to modify the at least one sheath portion to be made of two halves as taught by Mirza ([0116]). Doing so would be an alternative to a feature being formed of a single piece or three or more pieces ([0116]; Mirza). The modified system would have a first sheath portion (20, figure 1 | modified sheath would have two halves [0116]; Mirza) of the at least one sheath portion coupled to and extending from the first handle portion to the first end of the release instrument (see 20, figure 1); and a second sheath portion (20, figure 1 | modified sheath would have two halves [0116]; Mirza) of the at least one sheath portion coupled to and extending from the second handle portion to the first end of the release instrument (see 20, figure 1).
Regarding claim 5, Mirza further discloses a translating member (this element is interpreted under 35 USC 112f as a switch 760 | 40, figure 1; Mirza) moveably coupled to the first housing and the second housing.
Regarding claim 6, Mirza further discloses the translating member comprises: a base (see bottom portion of 40, like location of 42-43, figure 1; Mirza) positioned within the coupled first and second housings; a connecting member (see middle portion of 40 that connects 41 with 42-43, figure 1) with a first end and a second end (see portion of 40 that connects with 42-43 as a first end, and portion of 40 that connects with 41 as the second end, figure 1), wherein the first end is coupled to the base (see portion of 40 that connects with 42-43, figure 1); and a button (broadly interpreted as a small knob or disk; see 41, figure 1) coupled to the second end of the connecting member and positioned superior to an exterior surface of the coupled first and second housings (grip area 41 that protrudes out of the housing 30, figure 1; [0119]); wherein the translating member deploys and retracts the blade of the blade member from the at least one sheath and cannula (paddle 40…the blade 10 is slidably advanced…[0119]; Mirza | the modified system would have the blade member deploy and retract from both the at least one sheath and cannula).
Regarding claim 7, Mirza further discloses at least a portion of the connecting member (see middle portion of 40 that connects 41 with 42-43, figure 1; Mirza) is positioned in an opening (slot 35, figure 1; [0119]) extending through the first and second housings from the exterior surface to an interior surface (grip area 41 that protrudes out of the housing 30, figure 1; [0119]).
Regarding claim 8, Mirza further discloses the blade member further comprises: a base (see proximal end of 11, figure 1; Mirza); an arm (see length of 11, figure 1) coupled to and extending away from the base at a first end (see portion of 11 that connects to 14, figure 1); and the blade of the release instrument at a second end of the arm (see cutting component 12, figure 1); and wherein the handpiece further comprises: a blade support member (14, figure 1) coupling the blade member to a portion of the handpiece (14…slidably engaged with…slots 34, figure 1).
Regarding claim 16, Mirza and Smith further disclose the first sheath portion of the first housing and the second sheath of the second housing couple together (20, figure 1 | modified sheath would have two halves [0116]; Mirza) and are slidably received within a channel of the cannula (see 14, figure 2; Smith).
Regarding claim 21, Mirza further discloses the at least one camera sensor (viewing device…endoscope [0114]; Mirza | endoscope has the camera) is positioned within a camera slot (channel 25, figure 1) of the at least one sheath; wherein the blade and at least a portion of an arm of the blade member (see11, figure 1) are positioned within a blade slot (21, figure 1) of the at least one sheath, and wherein the camera slot is positioned distal to the blade slot (channel 25…located below the horizontal blade guidance tracks 24…[0114] | see distal tip 23; where channel 25 can be extend distally beyond the blade slot 21, figure 1).
Claim(s) 17 is rejected under 35 U.S.C. 103 as being unpatentable over Mirza (US 2020/0121347) and Smith (US 2009/0093677) as applied to claim 1 above, and further in view of Orbay (US 2008/0195128)
Mirza further discloses the video unit is selected from at least one of a video display (visually monitor…[0068]). Mirza and Smith are silent regarding a video processor, and wherein the video unit is coupled to the release instrument by a cable.
Orbay teaches an imaging device (10, figure 1) connected to a display (50, figure 1) via a cable (52, figure 1). The images obtained by the imaging device may be processed and displayed on the display ([0087]).
It would have been obvious to modify the system to connect the camera sensor to the video unit via a cable (52, figure 1) for processing and displaying the images ([0087]) as taught by Orbay. Doing so would provide a video unit that can receive imaging information obtained by the release instrument for processing and display ([0087]). The modified system would have a video processor (processed…[0087]), and wherein the video unit is coupled to the release instrument by a cable (52, figure 1).
Allowable Subject Matter
Claims 9 and 13-15 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
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PAMELA F WU whose telephone number is (571)272-9851. The examiner can normally be reached M-F: 8-4 PM.
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PAMELA F. WU
Examiner
Art Unit 3795
December 26, 2025
/RYAN N HENDERSON/Primary Examiner, Art Unit 3795