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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 12/17/25 has been entered.
Claim Objections
Claim 1 is objected to because of the following informalities: for better claim construction and consistency throughout the claims the examiner suggests the following amendment:
Claim 1, lines 2-3: -- a housing unit including a view assembly and a dispensing opening;-- Appropriate correction is required.
Claim 11 is objected to because of the following informalities: for better claim construction and consistency throughout the claims the examiner suggests the following amendment:
Claim 11: -- The surgical sponge accounting system of claim 1, wherein the housing unit is configured to be fixedly attached to the organization attachment member . – Appropriate correction is required.
Claim 14 is objected to because of the following informalities: for better claim construction and consistency throughout the claims the examiner suggests the following amendment:
Claim 14: -- The surgical sponge accounting system of claim 13, wherein the plurality of hooks are on the first pole extension and the second pole extension.—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.
Claims 1-4, 10, and 13-14 are rejected under 35 U.S.C. 103 as being unpatentable over Koehler 10,060,571 in view of Samuels 9,198,727; and Vitale 8,020,716.
Regarding claim 1, Koehler discloses a system (Fig 11B) that is capable of being used as a surgical sponge accounting system comprising: an organization attachment member (annotated Fig 11B below) configure with sides (annotated Fig 11B below) a plurality of hooks (Fig 11B, #502) (annotated Fig 11B below) on the sides (annotated Fig 11B below) that is capable of being used to accommodate a hanging panel for use with used surgical sponges.
PNG
media_image1.png
960
779
media_image1.png
Greyscale
PNG
media_image2.png
823
811
media_image2.png
Greyscale
Koehler has been discussed above but does not explicitly teach wherein the surgical sponge accounting system comprises a housing unit, including a viewing assembly, and a dispensing opening; wherein the sides are telescoping sides; wherein the surgical sponge accounting system further includes a hanging panel that is a used sponge bag that is supported on the plurality of hooks, wherein the sponge bag includes pockets configured to receive and display surgical sponges.
Samuels discloses a first embodiment of a surgical sponge accounting system (Fig 4) comprising a housing unit (Fig 4, #14), including a viewing assembly (Fig 4, #44) or (Fig 4, #28), and a dispensing opening (opening under the lid or view assembly (Fig 4, #28)).
Samuels also discloses a second embodiment of a surgical sponge accounting system that includes a hanging panel (Fig 1, #46) that is capable of being a used sponge bag that is supported on a plurality of hooks (Fig 1, #112), wherein the sponge bag (Fig 1, #46) includes pockets (Fig 1, #56) configured to or capable of receiving and display surgical sponges.
Vitale discloses an organization attachment member (Fig 1, #18) that is configure with telescoping sides (Fig 1, #28 & #30, right & left sides) (annotated Fig 1 below) and a plurality of hooks (Fig 1, #38) on the telescoping sides (annotated Fig 1 below).
PNG
media_image3.png
842
1217
media_image3.png
Greyscale
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to place the organization attachment member (Koehler, annotated Fig 11B above) of Koehler in the same room as the housing unit (Samuels, Fig 4, #14) of Samuels because each are medical equipment that are utilized in a medical environment such as a hospital room.
It also would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the sides (Koehler, annotated Fig 11B above) of the organization attachment member (Koehler, annotated Fig 11B above) of Koehler to be telescoping sides (Vitale, annotated Fig 1 above) that are telescopically connected to the central top section of the organization attachment member (Koehler, annotated Fig 11B above) in order to enable the sides (Koehler, annotated Fig 11B above) of Koehler to retract to conserve space when the organization attachment member (Koehler, annotated Fig 11B above) is not in use.
It also would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to attach a sponge bag (Samuels, Fig 1, #46) to the hooks (Koehler, Fig 11B, #502) (Koehler, annotated Fig 11B above) of modified Koehler in order to make the surgical sponge accounting system (Koehler, Fig 11B) of modified Koehler more versatile by allowing more items to be stored on the surgical sponge accounting system (Koehler, Fig 11B) of modified Koehler via the pockets (Samuels, Fig 1, #56).
Regarding claim 2, modified Koehler discloses the surgical sponge accounting system wherein the housing unit (Samuels, Fig 4, #14) includes a plurality of walls that further includes a front wall (Samuels, Fig 4, #28) and a rear wall (Samuels, Fig 4, #16).
Regarding claim 3, modified Koehler discloses the surgical sponge accounting system further includes a lid (Samuels, Fig 4, #28) connected to the housing unit (Samuels, Fig 4, #14).
Regarding claim 4, modified Koehler discloses the surgical sponge accounting system wherein the viewing assembly (Samuels, Fig 4, #28) includes a plurality of walls (Samuels, annotated Fig 4 below) with a front wall (Samuels, annotated Fig 4 below) configured in a circular curve (Samuels, annotated Fig 4 below) to accommodate a roll of surgical sponge bags.
PNG
media_image4.png
762
1181
media_image4.png
Greyscale
Regarding claim 10, as best understood, modified Koehler discloses the surgical sponge accounting system wherein the organization attachment member (Koehler, annotated Fig 11B above) with telescoping sides (Vitale, annotated Fig 1 above) comprise a first pole extension (Vitale, Fig 1, #30, left) and a second pole extension (Vitale, Fig 1, #30, right).
Regarding claim 13, modified Koehler discloses the surgical sponge accounting system wherein the first pole extension (Vitale, Fig 1, #30, left) and the second pole extension (Vitale, Fig 1, #30, right) include a telescoping configuration where the first (Vitale, Fig 1, #30, left) and the second (Vitale, Fig 1, #30, right) pole extensions can be extended or collapsed (relative to the top sections of the organization attachment member (Koehler, annotated Fig 11B above)) to allow for holding the sponge bag.
Regarding claim 14, modified Koehler discloses the surgical sponge accounting system wherein the plurality of hooks (Koehler, Fig 11B, #502) (Koehler, annotated Fig 11B above) are on the first pole extension (Vitale, Fig 1, #30, left) (as explained in the rejection of claim 1 above) and the second pole extension (Vitale, Fig 1, #30, right) (as explained in the rejection of claim 1 above) respectively (For clarification, when the sides (Koehler, annotated Fig 11B above) are modified by Vitale to be telescopically connected to the central top section (Koehler, annotated Fig 11B above) of the organization attachment member (Koehler, annotated Fig 11B above), hooks (Koehler, Fig 11B, #502) (Koehler, annotated Fig 11B above) will be on the first and second extensions (Vitale, Fig 1, #30, left & right) of modified Koehler).
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over the combination of Koehler 10,060,571; Samuels 9,198,727; and Vitale 8,020,716; and further in view of Magner 11,044,355.
Regarding claim 5, modified Koehler has been discussed above but does not explicitly teach the surgical sponge accounting system wherein the dispensing opening further includes a flexible material that creates an overlap open slit over the dispensing opening.
Magner discloses a dispenser (Fig 3, #200) that comprises a dispensing opening (interior space) wherein the dispensing opening (interior space) further includes a flexible material (col 5, lines 41-45) that creates an overlap open slit (Fig 3, #210 or #212) over the dispensing opening (interior space).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the front wall (Samuel, annotated Fig 4 above) of the housing unit (Samuels, Fig 4, #14) of modified Koehler to have a flexible material (Magner, col 5, lines 41-45) (flexible polymer material) that creates an overlap open slit (Magner, Fig 3, #210 or #212) over the dispensing opening (interior space or opening under lid (Samuels, Fig 4, #28)) in order to more easily access the rolled material (Samuels, Fig 4, #52) within the housing unit (Samuels, Fig 4, #14).
Claims 6-9 and 11-12 are rejected under 35 U.S.C. 103 as being unpatentable over the combination of Koehler 10,060,571; Samuels 9,198,727; and Vitale 8,020,716 and further in view of Carter 5,938,646 and Tan 2022/0063871.
Regarding claims 6-9 and 12, modified Koehler has been discussed above but does not explicitly teach the surgical sponge further includes a clamp on the housing unit (claim 6); wherein the clamp is configured on the back wall of the housing unit (claim 7); wherein the clamp further includes a tightening mechanism to allow for secured connection to an IV pole (claim 8); wherein the organization attachment member is connected to the housing unit with the housing unit secured to the IV pole with the clamp (claim 9); wherein the organization attachment member is configured as removably attached to the housing unit (claim 12).
Carter discloses a surgical sponge accounting system (Fig 1) comprising a housing unit (Fig 1, #2) and a IV pole (Fig 1, #4), a clamp (Fig 1, #28) on the housing unit (Fig 1, #2) (claim 6); wherein the clamp (Fig 1, #28) is configured on the back wall of the housing unit (Fig 1, #2) (claim 7); wherein the clamp (Fig 1, #28) further includes a tightening mechanism (Fig 1, #26 & #24) to allow for secured connection to the IV pole (Fig 1, #4) (claim 8); wherein the housing unit (Fig 1, #2) is secured to the IV pole (Fig 1, #4) with the clamp (Fig 1, #28) (claim 9); wherein the housing unit (Fig 1, #2) is configured as removably attached to the IV pole and/or an organization attachment member (Fig 1, #4) (claim 12).
Tan teaches that it is old and well known for a housing unit (#10) to be able to be mounted to a pole/post (Fig 1, #50) or a wall (shown in Fig 7).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to attach the clamp (Carter, Fig 1, #28) and
the tightening mechanism (Carter, Fig 1, #26 & #24) to the back wall (Samuels, Fig 4, #16) of the housing unit (Samuels, Fig 4, #14) of modified Koehler in order to removably mount the housing unit (Samuels, Fig 4, #14) of modified Koehler to the IV pole (Koehler, annotated Fig 11B above) of modified Koehler in order to removably attach the dispenser (Samuels, Fig 4, #14) and the rolled material (Samuels, Fig 4, #52) to the organization attachment member (Koehler, annotated Fig 11B above) of modified Koehler for easier access to the dispenser (Samuels, Fig 4, #14) and the rolled material (Samuels, Fig 4, #52) in medical environments such as hospitals further Tan teaches that it is old and well known for a housing unit (Tan, #10) to be able to be mounted to a pole/post (Tan, Fig 1, #50) or a wall (Tan, shown in Fig 7).
.
Regarding claim 9, the combination of Koehler, Samuels, Vitale, and Carter explained above results in the organization attachment member (Koehler, annotated Fig 11B above) is indirectly connected to the housing unit (Samuels, Fig 4, #14) of modified Koehler with the housing unit (Samuels, Fig 4, #14) secured to the IV pole (Koehler, annotated Fig 11B above) with the clamp (Carter, Fig 1, #28).
Regarding claim 11, modified Koehler discloses the surgical sponge accounting system wherein the housing unit (Samuels, Fig 4, #14) is configured to be fixedly attached to the organization attachment member (Koehler, annotated Fig 11B above)
(For clarification, as explained above in the rejection of claim 6-8 when the clamp (Carter, Fig 1, #28) and the tightening mechanism (Carter, Fig 1, #26 & #24) are attached to the back wall (Samuels, Fig 4, #16) of the housing unit (Samuels, Fig 4, #14) of modified Koehler the housing unit (Samuels, Fig 4, #14) will be fixedly attached to the organization attachment member (Koehler, annotated Fig 11B above) when the tightening mechanism (Carter, Fig 1, #26 & #24) is tightened on the mounting rod or IV pole (Koehler, annotated Fig 11B above)).
Claims 1, 10, and 13-14 are rejected under 35 U.S.C. 103 as being unpatentable over Koehler 10,060,571 in view of Samuels 9,198,727; Malcolm D391706.
Regarding claim 1, Koehler discloses a system (Fig 11B) that is capable of being used as a surgical sponge accounting system comprising: an organization attachment member (annotated Fig 11B below) configure with sides (annotated Fig 11B below) a plurality of hooks (Fig 11B, #502) (annotated Fig 11B below) on the sides (annotated Fig 11B below) that is capable of being used to accommodate a hanging panel for use with used surgical sponges.
PNG
media_image1.png
960
779
media_image1.png
Greyscale
PNG
media_image2.png
823
811
media_image2.png
Greyscale
Koehler has been discussed above but does not explicitly teach wherein the surgical sponge accounting system comprises a housing unit, including a viewing assembly, and a dispensing opening; wherein the sides are telescoping sides; wherein the surgical sponge accounting system further includes a hanging panel that is a used sponge bag that is supported on the plurality of hooks, wherein the sponge bag includes pockets configured to receive and display surgical sponges.
Samuels discloses a first embodiment of a surgical sponge accounting system (Fig 4) comprising a housing unit (Fig 4, #14), including a viewing assembly (Fig 4, #44) or (Fig 4, #28), and a dispensing opening (opening under the lid or view assembly (Fig 4, #28)).
Samuels also discloses a second embodiment of a surgical sponge accounting system that includes a hanging panel (Fig 1, #46) that is capable of being a used sponge bag that is supported on a plurality of hooks (Fig 1, #112), wherein the sponge bag (Fig 1, #46) includes pockets (Fig 1, #56) configured to or capable of receiving and display surgical sponges.
Malcolm discloses an organization attachment member (annotated Fig 1 below) that is configure with telescoping sides (annotated Fig 1 below) and hooks (annotated Figs 1 & 3 below) are on the telescoping sides (annotated Fig 1 below).
PNG
media_image5.png
884
911
media_image5.png
Greyscale
PNG
media_image6.png
741
399
media_image6.png
Greyscale
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to place the organization attachment member (Koehler, annotated Fig 11B above) of Koehler in the same room as the housing unit (Samuels, Fig 4, #14) of Samuels because each are medical equipment that are utilized in a medical environment such as a hospital room.
It also would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the sides (Koehler, annotated Fig 11B above) of the organization attachment member (Koehler, annotated Fig 11B above) of Koehler to be telescoping sides (Malcolm, annotated Fig 1 above) that are telescopically connected to the central top section of the organization attachment member (Koehler, annotated Fig 11B above) in order to enable the sides (Koehler, annotated Fig 11B above) of Koehler to retract to conserve space when the organization attachment member (Koehler, annotated Fig 11B above) is not in use.
It also would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to attach a sponge bag (Samuels, Fig 1, #46) to the hooks (Koehler, Fig 11B, #502) (Koehler, annotated Fig 11B above) of modified Koehler in order to make the surgical sponge accounting system (Koehler, Fig 11B) of modified Koehler more versatile by allowing more items to be stored on the surgical sponge accounting system (Koehler, Fig 11B) of modified Koehler via the pockets (Samuels, Fig 1, #56).
Regarding claim 2, modified Koehler discloses the surgical sponge accounting system wherein the housing unit (Samuels, Fig 4, #14) includes a plurality of walls that further includes a front wall (Samuels, Fig 4, #28) and a rear wall (Samuels, Fig 4, #16).
Regarding claim 3, modified Koehler discloses the surgical sponge accounting system further includes a lid (Samuels, Fig 4, #28) connected to the housing unit (Samuels, Fig 4, #14).
Regarding claim 4, modified Koehler discloses the surgical sponge accounting system wherein the viewing assembly (Samuels, Fig 4, #28) includes a plurality of walls (Samuels, annotated Fig 4 below) with a front wall (Samuels, annotated Fig 4 below) configured in a circular curve (Samuels, annotated Fig 4 below) to accommodate a roll of surgical sponge bags.
PNG
media_image4.png
762
1181
media_image4.png
Greyscale
Regarding claim 10, modified Koehler discloses the surgical sponge accounting system wherein the organization attachment member (Koehler, annotated Fig 11B above) with telescoping sides (Malcolm, annotated Fig 1 above) comprise a first pole extension (Malcolm, annotated Fig 1 above) and a second pole extension (Malcolm, annotated Fig 1 above).
Regarding claim 13, modified Koehler discloses the surgical sponge accounting system wherein the first pole extension (Malcolm, annotated Fig 1 above) and the second pole extension (Malcolm, annotated Fig 1 above) include a telescoping configuration where the first (Malcolm, annotated Fig 1 above) and the second (Malcolm, annotated Fig 1 above) pole extensions can be extended or collapsed (relative to the top sections of the organization attachment member (Koehler, annotated Fig 11B above)) to allow for holding the sponge bag.
Regarding claim 14, modified Koehler discloses the surgical sponge accounting system wherein the plurality of hooks (Koehler, Fig 11B, #502) (Koehler, annotated Fig 11B above) are on the first pole extension (Malcolm, annotated Fig 1 above) (as explained in the rejection of claim 1 above) and the second pole extension (Malcolm, annotated Fig 1 above) (as explained in the rejection of claim 1 above) respectively (For clarification, when the sides (Koehler, annotated Fig 11B above) are modified by Malcolm to be telescopically connected to the central top section (Koehler, annotated Fig 11B above) of the organization attachment member (Koehler, annotated Fig 11B above), hooks (Koehler, Fig 11B, #502) (Koehler, annotated Fig 11B above) will be on the first and second extensions (Malcolm, annotated Fig 1 above) of modified Koehler).
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over the combination of Koehler 10,060,571; Samuels 9,198,727; and Malcolm D391706; and further in view of Magner 11,044,355.
Regarding claim 5, modified Koehler has been discussed above but does not explicitly teach the surgical sponge accounting system wherein the dispensing opening further includes a flexible material that creates an overlap open slit over the dispensing opening.
Magner discloses a dispenser (Fig 3, #200) that comprises a dispensing opening (interior space) wherein the dispensing opening (interior space) further includes a flexible material (col 5, lines 41-45) that creates an overlap open slit (Fig 3, #210 or #212) over the dispensing opening (interior space).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the front wall (Samuel, annotated Fig 4 above) of the housing unit (Samuels, Fig 4, #14) of modified Koehler to have a flexible material (Magner, col 5, lines 41-45) (flexible polymer material) that creates an overlap open slit (Magner, Fig 3, #210 or #212) over the dispensing opening (interior space or opening under lid (Samuels, Fig 4, #28)) in order to more easily access the rolled material (Samuels, Fig 4, #52) within the housing unit (Samuels, Fig 4, #14).
Claims 6-9 and 11-12 are rejected under 35 U.S.C. 103 as being unpatentable over the combination of Koehler 10,060,571; Samuels 9,198,727; and Malcolm D391706 and further in view of Carter 5,938,646 and Tan 2022/0063871.
Regarding claims 6-9 and 12, modified Koehler has been discussed above but does not explicitly teach the surgical sponge further includes a clamp on the housing unit (claim 6); wherein the clamp is configured on the back wall of the housing unit (claim 7); wherein the clamp further includes a tightening mechanism to allow for secured connection to an IV pole (claim 8); wherein the organization attachment member is connected to the housing unit with the housing unit secured to the IV pole with the clamp (claim 9); wherein the organization attachment member is configured as removably attached to the housing unit (claim 12).
Carter discloses a surgical sponge accounting system (Fig 1) comprising a housing unit (Fig 1, #2) and an IV pole (Fig 1, #4), a clamp (Fig 1, #28) on the housing unit (Fig 1, #2) (claim 6); wherein the clamp (Fig 1, #28) is configured on the back wall of the housing unit (Fig 1, #2) (claim 7); wherein the clamp (Fig 1, #28) further includes a tightening mechanism (Fig 1, #26 & #24) to allow for secured connection to the IV pole (Fig 1, #4) (claim 8); wherein the housing unit (Fig 1, #2) is secured to the IV pole (Fig 1, #4) with the clamp (Fig 1, #28) (claim 9); wherein the housing unit (Fig 1, #2) is configured to be removably attached to the IV pole and/or an organization attachment member (Fig 1, #4) (claim 12).
Tan teaches that it is old and well known for a housing unit (#10) to be able to be mounted to a pole/post (Fig 1, #50) or a wall (shown in Fig 7).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to attach the clamp (Carter, Fig 1, #28) and
the tightening mechanism (Carter, Fig 1, #26 & #24) to the back wall (Samuels, Fig 4, #16) of the housing unit (Samuels, Fig 4, #14) of modified Koehler in order to removably mount the housing unit (Samuels, Fig 4, #14) of modified Koehler to the IV pole (Koehler, annotated Fig 11B above) of modified Koehler in order to removably attach the dispenser (Samuels, Fig 4, #14) and the rolled material (Samuels, Fig 4, #52) to the organization attachment member (Koehler, annotated Fig 11B above) of modified Koehler for easier access to the dispenser (Samuels, Fig 4, #14) and the rolled material (Samuels, Fig 4, #52) in medical environments such as hospitals further Tan teaches that it is old and well known for a housing unit (Tan, #10) to be able to be mounted to a pole/post (Tan, Fig 1, #50) or a wall (Tan, shown in Fig 7).
.
Regarding claim 9, the combination of Koehler, Samuels, Malcolm, and Carter explained above results in the organization attachment member (Koehler, annotated Fig 11B above) is indirectly connected to the housing unit (Samuels, Fig 4, #14) of modified Koehler with the housing unit (Samuels, Fig 4, #14) secured to the IV pole (Koehler, annotated Fig 11B above) with the clamp (Carter, Fig 1, #28).
Regarding claim 11, modified Koehler discloses the surgical sponge accounting system wherein the housing unit (Samuels, Fig 4, #14) is configured to be fixedly attached to the organization attachment member (Koehler, annotated Fig 11B above)
(For clarification, as explained above in the rejection of claim 6-8 when the clamp (Carter, Fig 1, #28) and the tightening mechanism (Carter, Fig 1, #26 & #24) are attached to the back wall (Samuels, Fig 4, #16) of the housing unit (Samuels, Fig 4, #14) of modified Koehler the housing unit (Samuels, Fig 4, #14) will be fixedly attached to the organization attachment member (Koehler, annotated Fig 11B above) when the tightening mechanism (Carter, Fig 1, #26 & #24) is tightened on the mounting rod or IV pole (Koehler, annotated Fig 11B above)).
Response to Arguments
Applicant's arguments filed 06/27/25 have been fully considered but they are not persuasive.
Applicant’s arguments that “The cited art fails to teach or suggest the claimed organization attachment member "that comprises telescoping sides and a plurality of hooks on the telescoping sides to accommodate a hanging panel for use with used surgical sponges," in combination with a housing unit that includes both a viewing
assembly and a dispensing opening for a roll of surgical sponge bags” is moot in view of the new grounds of rejection. Further, the examiner maintains that the hooks (Koehler, Fig 11B, #502) and IV bags (Koehler, Fig 11B, #102) of modified Koehler can be easily removed from and/or move along the organization attachment member (Koehler, annotated Fig 11B above) of modified Koehler.
Applicant’s arguments that “Koehler discloses a hook attachment for IV stands to hang medication bags with visible labels by vertically spaced longitudinal portions; it is not a surgical sponge accounting system with a housing unit that dispenses a roll of surgical sponge bags. The Examiner acknowledges Koehler lacks a housing unit with a viewing assembly and dispensing opening” are not persuasive.
The examiner maintains that the combination of Koehler, Samuels, and Vitale is capable of being used as surgical sponge accounting system and discloses all the claim limitations of claim 1 as explained above.
Applicant’s arguments that “Samuels discloses a support member with hooks and hanging panels with pouches attachable to an IV pole; while Samuels shows a support member and hanging panels/pouches, the Examiner maps Samuels to "a housing unit, including a viewing assembly, and a dispensing opening," relying on Fig. 4 and elements #14, #44 or #28. Samuels' device is a surgical sponge organizer assembly comprising a support member, aperture, fastener, and hooks for hanging
panels; it is not a housing unit that dispenses a roll of sponge bags via a viewing assembly and slit dispensing opening as claimed. The Examiner's mapping equates Samuels' support member structure with a housing unit having a viewing assembly and dispensing opening, but Samuels teaches a clamp-on support block for hanging panels rather than a housing that stores and dispenses a roll of surgical sponge bags through an overlapping flexible slit. The Final Action asserts it would be obvious to "place the organization attachment member" of Koehler "in the same room as the housing unit" of Samuels because each is medical equipment used in a hospital room. Co-location in the same room does not yield the specific structural integration required by claim 1: the housing unit with viewing assembly and dispensing opening together with the particular organization attachment member with telescoping sides having hooks on the sides for hanging used sponge bags. Simply being in the same environment does not provide a reasoned rationale with rational underpinning to modify or combine the structures to arrive at the claimed system” are not persuasive.
The examiner maintains that Samuels discloses more than one embodiment and the embodiment shown in Fig 4 of Samuels discloses a housing unit (Fig 4, #14) including a viewing assembly (Fig 4, #44) or (Fig 4, #28) and a dispensing opening (opening under the lid or view assembly (Fig 4, #28)). That is all that is required in claim 1. Claim 1 does not even require the housing unit to be attached to the organization attachment member.
Applicant’s arguments that “The further rationales (e.g., telescoping to conserve space; adding sponge bags to be more versatile) are generic and do not bridge the structural gaps-particularly the requirement that the hooks are on telescoping sides of an organization attachment member configured to accommodate a hanging panel for used sponge bags, in conjunction with a housing unit that includes a viewing assembly and a dispensing opening for dispensing a roll of surgical sponge bags” are not not persuasive.
In determining obviousness, it is not necessary that the inventions of the references be physically combinable to render obvious the invention under review (In re Sneed, 710 F.2d 1544,1550 (Fed. Cir. 1983)). In particular, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention be expressly suggested in any one or all references (In re Keller, 642 F.2d 413, 425 (CCPA 1981)). Furthermore, a person of ordinary skill in the art is also a person of ordinary creativity, not an automation (KSR Int'l Co. v. Teleflex Inc., 127 S.Ct. 1727, 1742 (2007)). In an obviousness analysis it is not necessary to find precise teachings in the prior art directed to the specific subject matter claimed because inferences and creative steps that a person of ordinary skill in the art would employ can be taken into account (Id. at 1741). In the instant case, the examiner maintains that a person armed with Koehler, Samuels, and Vitale would have readily understood how the system (Koehler, Fig 11B) of Koehler could be place in the same hospital room as the housing unit (Samuels, Fig 4, #14) of Samuels, and how the sides (Koehler, annotated Fig 11B above) of Koehler would be modified to be telescopic as taught by Vitale, and how a sponge bag (Samuels, Fig 1, #46) could be attached to the hooks (Koehler, annotated Fig 11B above) of Koehler without benefit of impermissible hindsight since the combination only involves well known elements combined in a well known manner. Such modifications are of ordinary innovation.
Applicant’s arguments that “The present application describes the organization attachment member configured in a T-shape design with a first and second pole extension including a telescoping configuration, and a plurality of hooks on those telescoping sides for supporting a hanging panel that is a used sponge bag with pockets. The housing provides a viewing assembly for a roll of sponge bags and
a dispensing opening having a flexible overlapping slit. These features, as claimed, distinguish over Koehler (dual-row bag hooks for IV bags), Samuels (support block with hooks for hanging panels, absent a roll dispenser housing), Hess (domestic rack), and Stevens (expandable holder, no roll-dispensing housing)” are not persuasive.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e.,T-shape design, a view assembly for a roll of sponge bags, and flexible overlapping slit) are not recited in the rejected claim 1. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Applicant’s arguments that “The Examiner cites Magner for a dispenser with
flexible overlapping slit. While Magner discloses such a slit, the base combination (Koehler, Samuels, Hess, Stevens) does not render claim 1 obvious as argued above. Absent a proper base, adding Magner cannot cure the fundamental deficiencies. Moreover, the claimed overlapping slit is part of a surgical sponge accounting system housing configured for a roll of surgical sponge bags, which is not taught by Samuels. The present specification explicitly describes a flexible material that creates an overlap slit for frictional control over dispensing, a feature neither taught nor suggested in the combined medical organizers relied upon” are not persuasive.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., housing configured for a roll of surgical sponge bags, overlap slit for frictional control over dispensing) are not recited in the rejected claim 5. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
The Examiner cites Carter for a clamp with tightening mechanism mounted to a pole and Tan for mounting to a pole or wall. Even assuming clamps and generic mounting are well known, the base combination still fails to teach the integrated system as claimed. Further, claim 9 (as amended) ties the clamp and tightening mechanism to securing the housing unit to an IV pole, which is supported in the present specification, and distinguishes over the disparate arrangements of the cited references. Thus, for the reasons set forth with respect to claim 1 and in light of the clarifying amendments to claims 9, 11, and 12, these rejections should be withdrawn” are not persuasive.
The examiner maintains that, as explained in the rejection of claims 6-9 above, Carter teaches that it is old and well known in the art for a housing unit (Carter, Fig 1, #2) to be secured to an IV pole (Carter, Fig 1, #4) by a clamp (Carter, Fig 1, #28) and tightening mechanism (Carter, Fig 1, #26). The examiner maintains that the combination of modified Koehler discloses all the claim limitations of claims 6-9 as explained in the rejections above.
Applicant’s arguments that “The Final Office Action presents an alternative combination substituting Malcolm for Hess as a source of telescoping sides and hooks, and otherwise relies on the same mapping and rationales. Malcolm is a design patent; even with Malcolm's depictions of telescoping or extendable features and hooks, the combination still does not teach the claimed arrangement of "a housing unit, including a viewing assembly, and a dispensing opening" integrated with "an organization attachment member that comprises telescoping sides and a plurality of hooks on the telescoping sides to accommodate a hanging panel for use with used surgical sponges” are not persuasive for the same reasons stated above.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DEVIN K BARNETT whose telephone number is (571)270-1159. The examiner can normally be reached Monday-Friday 11am-7:30pm.
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, Jonathan Liu can be reached on 571-272-8227. 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.
/DEVIN K BARNETT/ Primary Examiner, Art Unit 3631