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
Applicant's arguments filed October 8, 2025 have been fully considered but they are not persuasive. Below is the examiner’s response, organized by issue.
Claim 13 is rejected under 35 U.S.C. 112(b). Applicant amended claim 13 to address indefiniteness. The amendment resolve the previously stated ambiguity. Accordingly, the 35 U.S.C. 112(b) rejection of claim 13 is withdrawn, contingent upon entry of the amendment.
Claims 1–6, 9, 13 are rejected 35 U.S.C. 102 over D’Amelio (US 2009/0182330 A1). Applicant contends D’Amelio does not disclose “a gusset at least partially around the [first/second] outer perimeter” of the arms as recited in claim 1, and argues that the cover members and lips in D’Amelio are conduits for wires rather than structural gussets.
Under the broadest reasonable interpretation (BRI) in light of the specification (MPEP 2111), claim 1 recites “a gusset at least partially around the [outer] perimeter” without requiring a particular cross-sectional shape, manufacturing method, taper, or functional requirement (e.g., “I beam type structure”). Applicant’s specification describes exemplary benefits of ridges/gussets, but those benefits are not expressly claimed. As written, “gusset” reasonably encompasses a reinforcement or protruding structural feature at or near a perimeter that provides material and support in the region, and the claim requires that such a gusset be present “at least partially around” the perimeter.
D’Amelio discloses arm structures encased by inner and outer cover members that include lips, seams, and U-shaped lips that run along and around perimeter portions of the arm frames (see, e.g., ¶¶ 42, 47–48; Figs. 3–4, elements 2, 4, 14, 20, 22, 24, 40, 82, 83). These features are integral parts of the arm assembly. The U-shaped lips and seams wrap at least partially around the outer edges and form protruding ridges at the periphery of the arms once assembled. Under BRI, these perimeter-wrapping structural features meet the “gusset … at least partially around the [outer] perimeter” language in claim 1.
Applicant argues the covers and lips in D’Amelio function primarily as wire conduits rather than structural reinforcement. The claim, however, does not recite any functional limitation for the “gusset” (e.g., to “increase structural integrity” or “simplify manufacturing”). Functional objectives in the specification cannot limit the scope of a structural term unless explicitly claimed. Therefore, even if D’Amelio’s covers/lips house conductor wires, that does not exclude them from meeting the claimed structural feature under BRI where they also comprise perimeter-wrapping protrusions integrated into the arm assembly.
Applicant’s reliance on their Fig. 9 and paragraph [0042] to require an “I beam type structure,” tapering ridge heights, and thickening near the pivot is noted, but those attributes are not in claim 1. If applicant intends “gusset” to be limited to those specific ridge configurations and functions, the claims should be amended to recite those structural limitations.
Accordingly, the anticipation rejection of claim 1 over D’Amelio remains proper. Claim 13’s §102 rejection is withdrawn. The remaining §102 rejections of claims 1–6 and 9 are maintained.
Claims 5–6 are rejected under 35 U.S.C. 103 over D’Amelio in view of Morales (US 2019/0343540 A1). Applicant did not present separate, substantive arguments for claims 5 and 6 under §103 beyond the arguments directed to claim 1. The combination in the Office Action identified the features in D’Amelio that satisfy the base limitations and relied on Morales for the specific tapered/edge and operational improvements, with an articulated motivation to combine (enhanced sectioning/partitioning and streamlined penetration).
Where the base §102 mapping stands and applicant has not shown teaching away, incompatibility, or a lack of reasonable expectation of success, the §103 rejections of claims 5 and 6 are maintained. See MPEP 2143 (prima facie case), 2141 (considerations for obviousness).
If applicant believes there are structural incompatibilities between D’Amelio’s arm/covers and the taper/edge configurations in Morales, or unexpected results from the claimed configuration, applicant should present those facts with specific citations or evidence (e.g., declaration under 37 CFR 1.132).
Claims 7–8, 11–12 are rejected under 35 U.S.C. 103 over D’Amelio. Applicant did not provide claim-specific arguments for these dependent claims separate from the arguments for claim 1. In the absence of separate arguments, these §103 rejections are maintained.
Applicant asserts that claims 2–9 and 11–13 are allowable because claim 1 is allowable. As explained above, the §102 rejection of claim 1 is maintained; therefore, the dependent claims are not allowable by dependency at this time.
Even if claim 1 were to be allowed, each dependent claim would still require examination of its additional limitations; dependent claims are not automatically allowable unless their additional limitations are not taught or suggested by the cited art.
For advancing prosecution, if applicant wishes “gusset” to mean a particular ridge structure with defined shape, thickness distribution, taper, and/or mechanical function, consider amending claim 1 to recite those structural attributes explicitly (e.g., protruding ridge of defined cross-section forming an I beam with the arm, tapering height away from the pivot, continuous perimeter segment coverage). Clear structural recitations will help distinguish over D’Amelio’s lips/covers/seams.
Alternatively, applicant may submit evidence that persons of ordinary skill in the art would not consider D’Amelio’s perimeter lips/seams to be “gussets” under the ordinary and customary meaning in this art, or that D’Amelio’s features are materially different in structure from what is claimed.
If applicant elects to maintain current claim breadth, please provide claim-specific arguments for each dependent claim rejected under §103, addressing the particular limitations the Office mapped and the motivation to combine, rather than relying solely on the arguments for claim 1.
The 35 U.S.C. 102 rejection of claim 1 over D’Amelio is maintained. Applicant’s arguments regarding “gusset” are not persuasive under the broadest reasonable interpretation of the claim language.
The 35 U.S.C. 103 rejections of claims 5–6 (D’Amelio + Morales) and claims 7–8, 11–12 (D’Amelio) are maintained due to lack of claim-specific rebuttal and the presence of articulated motivations to combine yielding predictable results.
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 1-6 and 9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by D’Amelio et al. (US 20090182330 A1).
Regarding to claim 1, D’Amelio et al. disclose a forceps device, comprising: a first arm having a first outer perimeter and comprising a functional end; an operational end; and a gusset (22 &24) at least partially around the first outer perimeter of said first arm (27); a second arm (7) having a second outer perimeter and comprising a functional end; [[and]] an operational end; and a gusset (14 & 2) at least partially around the second outer perimeter of said second arm; a pivot point (43) connecting said first arm to said second arm; and an engagement portion comprising a plurality of engagement features (15 and 35) on said first arm and complementary opposing features on said second arm, said complementary opposing features configured to engage with said plurality of engagement features.
Regarding to claim 2, D’Amelio et al. disclose the forceps device of claim 1, wherein said pivot point (43) enables the first arm to pivot about said pivot point in relation to the second arm.
Regarding to claim 3, D’Amelio et al. disclose the forceps device of claim 1, wherein said engagement features of said first arm comprise protruding teeth (35a) and said complementary opposing features of said second arm (7) comprise indentations (15b, Paragraph 029).
Regarding to claim 4, D’Amelio et al. disclose the forceps device of claim 3, wherein said first arm further comprises a first extending component shaped (35) to include said engagement features (35a) and said second arm (7) further comprises a second extending component shaped (15) to include said complementary opposing features (15a) to engage with said engagement features.
Regarding to claim 5, D’Amelio et al. disclose the forceps device of claim 4, wherein said complementary opposing features comprise indentations along the entire length of said second extending component (see fig. 3)
Regarding to claim 6, D’Amelio et al. disclose the forceps device of claim 4, wherein said engagement features comprise teeth along the entire length of said first extending component (see fig. 3)
Regarding to claim 9, D’Amelio et al. disclose the forceps device of claim 1, wherein said engagement features engage with said complementary opposing features in a direction orthogonal to a plane in which said first and second arms move during operation (fig. 1, 3).
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.
Claim(s) 5 and 6 is/are rejected under 35 U.S.C. 102/103 as being unpatentable over D’Amelio et al. (US 20090182330 A1) in view of MORALES (US-20190343540-A1).
Regarding to claim 5 and 6, as under 102 rejection above, although D’Amelio et al. showed in the draws (fig. 3) the wherein said complementary opposing features comprise indentations along the entire length of said second extending component (see fig. 3) and wherein said engagement features comprise teeth along the entire length of said first extending component (see fig. 3), one may argue that the fig. 3 are not clearly disclose so. Morales, in the same field of endeavor, teaches a similar forceps device (needle holder 1) comprising a first arm (leg 3a) and wherein engagement features (teeth provided on locking portion 4a) of said first arm (3a) comprise teeth (11a-11c) along an entire length of a first extending component (locking portion 4a) (figs. 1-2, 4 0065 and 0067).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention to modify modified D’Amelio to have engagement features comprising teeth along the entire length of said first extending component, as taught by Morales for the purpose of providing a higher gripping force for the functional ends [Morales: 4] 0069].
Claim(s) 7 and 8 and is/are rejected under 35 U.S.C. 103 as being unpatentable over D’Amelio et al. (US 20090182330 A1).
Regarding to Claim 7, D’Amelio et al. fail to disclose the forceps device of claim 3, wherein said protruding teeth are angled to correspond with angled inner walls of said indentations at 5° to 10° from a plane orthogonal to the plane in which said first and second arms move during operation. It is a well-known angel for indentations of the locking components.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention for the protruding teeth of the device of modified D’Amelio et al. to correspond with angled inner walls of said indentations at 5° to 10° from the plane orthogonal to the plane in which said first and second arms move during operation, since it has been held that “where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device” Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 SPQ 232 (1984). In the instant case, the device of modified D’Amelio et al. would function appropriately having the claimed angle.
Regarding Claim 8, D’Amelio et al. fail to disclose the forceps device of claim 4, wherein said first and second extending components are configured to have a thickness of 3mm to 6mm. The thickness as claimed are a workable range and a predictable results because a thickness of 3mm to 6mm would provide enough strength and allow the teeth or indentations forming on the extending components at a desired angle and depth for locking arms of the forceps together.
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to make D’Amelio et al. first and second extending components (15 and 35) to have a thickness of 3mm to 6mm in order to have enough strength and allow the teeth or indentations forming at a desired angle and depth for locking the arms of the forceps together.
Since it has been held that “where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device” Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 SPQ 232 (1984). The device of D’Amelio et al. would function appropriately having the claimed thickness.
Claim(s) 11-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over D’Amelio et al. (US 20090182330 A1) .
Regarding to claims 11, 12 and 13, D’Amelio et al. disclose all the limitation of the claim 1 (see above) and also disclose the gussets or covers being made from insulated moldable material (paragraph 28). Although, D’Amelio et al. fails to disclose the gussets being made from Polytetrafluoroethylene (PTFE) or polyacrylamide materials, these two materials are well known in the art as being moldable and insulative materials.
Therefore, it would have been obvious to one having ordinary skill in the art at the time the invention was made to use PTFE or polyacrylamide materials for the cover members of D’Amelio et al.’s forceps so that the cover can be molded and can be used for insulating the arms of D’Amelio et al.’s forceps. Doing so would meet the claimed limitations of claim 11, 12, and 13.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Cruz et al. (US 20230149036 A1) disclose a forceps with reinforcements.
Alshemari; Hasan M. Sh. Sh. (US 8382777 B1) discloses a forceps with reinforcements.
Moses; Michael C. (US 20060167452 A1) disclose a forceps with reinforcements.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TAN-UYEN THI HO whose telephone number is (571)272-4696. The examiner can normally be reached Normal Schedule M-F Between 7:00 am and 4:00 pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, TAN-UYEN T HO can be reached at 7034745263. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/TAN-UYEN T HO/Supervisory Patent Examiner, Art Unit 3771