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 .
Election/Restrictions
Applicant's election with traverse of Group I, Species A, D and F in the reply filed on 11/12/2025 is acknowledged. The traversal is on the grounds that in restriction of the present case, “everything from mere differences in diameters of components to even different configurations of the viewing window are viewed as different species” and is therefore “unreasonable as the subject matter to be searched would be expected to be included in a typical search and no undue search burden on the Examiner would be present.” Applicant’s argument is unpersuasive where applicant’s specification and figures are directed to dozens of embodiments. The expectation that examiner should search and consider “everything from mere differences in diameters of components to even different configurations of the viewing window” does not just represent a search burden on examiner, it represents an extraordinary examination burden on examiner. To consider every embodiment in the present case would require quite literally dozens of rejections of independent Claim 1 by itself just to meet individual dependent claim sets.
The requirement is still deemed proper and is therefore made FINAL.
Claims 21 and 24-49 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected inventive group or species, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 11/12/2025.
Claim Objections
Claim 13 is objected to because of the following informalities: Line 1 reading “the second end is attachable” should read --the second end is arranged to be attachable--. Appropriate correction is required to avoid 101 rejection and to maintain consistency with Claim 1.
Claim Rejections - 35 USC § 102
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 1-5, 7-14, 16- are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Stevens et al. (USPGPub 2004/0019348).
Re Claim 1, Stevens teaches a viewer (121) comprising; a body (22, 127, 129) having a first end (Stevens Fig. 8B - end with eyepiece 129) and a second end (125) opposite the first end (Stevens ¶ 0103), the first end being closed and having a transparent viewing window (129), the second end arranged to be attached to an aorta or a pulmonary artery (Stevens ¶ 0097, 0147), wherein an outer diameter of the first end of the body is larger than an outer diameter of the second end of the body (Stevens Fig. 8B); and one or more ports (137) arranged to provide fluid access to an internal portion of the viewer (121) (Stevens ¶ 0103).
Re Claim 2, Stevens teaches wherein the body includes a tubular body (as seen in Stevens Fig. 8B).
Re Claims 3-4, Stevens teaches wherein a first outer diameter of a first portion of the body (outer diameter of eyepiece 129) is greater than a second outer diameter of a second portion of the body (outer diameter of distal end 125), the first portion of the body being closer to the first end than the second portion of the body is to the first end (as seen in Stevens Fig. 8B); and wherein the body includes a tapered portion (Stevens Fig. 8B - wherein eyepiece 129 is tapered).
Re Claim 5, Stevens teaches wherein the tapered portion is positioned in between the first portion of the body and the second portion of the body (as seen in Stevens Fig. 8B).
Re Claims 7-8, Stevens teaches wherein the body (22, 127, 129) includes a tapered portion (Stevens Fig. 8B - wherein eyepiece 129 is tapered), wherein an outer diameter of the tapered portion decreases in a direction from the first end of the body towards the second end of the body (as seen in Stevens Fig. 8B); and wherein the outer diameter of the tapered portion decreases from the first end to a portion in between the first and second ends (as seen in Stevens Fig. 8B).
Re Claims 9-10, Stevens teaches wherein the one or more ports (137) extend outwardly from a side of the body (as seen in Stevens Fig. 8B); and wherein the one or more ports (137) extends substantially perpendicular to, substantially parallel to, or angled relative to a plane of the viewing window (as seen in Stevens Fig. 8B).
Re Claim 11, Stevens teaches wherein the one or more ports (137) are located at or near the first end of the body (as seen in Stevens Fig. 8B).
Re Claim 12, Stevens teaches wherein the one or more ports (137) are fixedly attached at the first end of the body (as seen in Stevens Fig. 8B).
Re Claims 13-14, Stevens teaches wherein the second end is attachable to the aorta or the pulmonary artery via one or more securement features (Stevens ¶ 0097 - grasping instrument, 0098 - thoracoscopic cinching devices); and wherein the one or more securement feature includes barbs, elastic bands, clips, collets, or clamps (Stevens ¶ 0097 - grasping instrument, 0098 - thoracoscopic cinching devices).
Re Claims 16-17, Stevens teaches wherein the outer diameter of the second end is between about 9 mm and about 35 mm; and wherein the outer diameter of the second end is between about 9 mm and about 19 mm (Stevens ¶ 0083).
Re Claim 18, Stevens teaches one or more extensions extending outwardly from the viewing window for engaging with a camera or scope (Stevens ¶ 0104).
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 6, 19-20 and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Stevens et al. (USPGPub 2004/0019348).
Re Claim 6, Stevens teaches all of the limitations of Claim 5. Stevens teaches wherein a first outer diameter of a first end of the tapered portion is the same as the first outer diameter of the first portion of the body (as seen in Stevens Fig. 8B). Stevens further teaches a second outer diameter of a second end of the tapered portion is the same as the second outer diameter of the second portion of the body. With regard to this limitation, examiner is interpreting a second outer diameter of a second end of the tapered portion as whichever diameter of the tapered portion that has the same diameter as the second outer diameter of the second portion of the body (Stevens Fig. 8B).
Re Claim 19, Stevens teaches wherein the outer diameter of the first end is greater than the outer diameter of the second end. However, Stevens does not teach wherein the outer diameter of the first end is two times greater than the outer diameter of the second end. However, it would have been an obvious matter of design choice to modify the first and second ends such that the outer diameter of the first end is two times greater than the outer diameter of the second end since applicant has not disclosed that having the outer diameter of the first end is two times greater than the outer diameter of the second end solves any stated problem or is for any particular purpose and it appears that the device would perform equally well with either design. Furthermore, absent a teaching as to the criticality of the outer diameter of the first end is two times greater than the outer diameter of the second end, this particular arrangement is deemed to have been known by those skilled in the art since the instant specification and evidence of record fail to attribute any significance (novel or unexpected results) to a particular arrangement. In re Kuhle, 526 F.2d 553,555,188 USPQ 7, 9 (CCPA 1975).
Re Claim 20, Stevens teaches all of the limitations of Claim 1. Stevens fails to teach wherein a diameter of the viewing window is greater than the outer diameter of the second end. It would have been an obvious matter of design choice to modify the viewing window such that the viewing window is greater than the outer diameter of the second end since applicant has not disclosed that having the viewing window is greater than the outer diameter of the second end solves any stated problem or is for any particular purpose and it appears that the device would perform equally well with either design. Furthermore, absent a teaching as to the criticality of the viewing window is greater than the outer diameter of the second end, this particular arrangement is deemed to have been known by those skilled in the art since the instant specification and evidence of record fail to attribute any significance (novel or unexpected results) to a particular arrangement. In re Kuhle, 526 F.2d 553,555,188 USPQ 7, 9 (CCPA 1975).
Re Claim 22, Stevens teaches all of the limitations of Claim 1. Stevens teaches wherein an inner diameter of the first end of the body is greater than an inner diameter of the second end of the body. It would have been an obvious matter of design choice to modify the first and second body such that an inner diameter of the first end of the body is greater than an inner diameter of the second end of the body since applicant has not disclosed that having an inner diameter of the first end of the body is greater than an inner diameter of the second end of the body solves any stated problem or is for any particular purpose and it appears that the device would perform equally well with either design. Furthermore, absent a teaching as to the criticality of an inner diameter of the first end of the body is greater than an inner diameter of the second end of the body, this particular arrangement is deemed to have been known by those skilled in the art since the instant specification and evidence of record fail to attribute any significance (novel or unexpected results) to a particular arrangement. In re Kuhle, 526 F.2d 553,555,188 USPQ 7, 9 (CCPA 1975).
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Stevens et al. (USPGPub 2004/0019348) in view of Yamazaki (USPGPub 2020/0060819).
Re Claim 15, Stevens teaches all of the limitations of Claim 1. Stevens fails to teach wherein the body is attachable to the aorta or pulmonary artery via a securement ring, wherein the body is threadably attached to or press fit to the securement ring. Yamazaki teaches a securement ring (10a), wherein a catheter (20) having a body configured to be attachable to the aorta or pulmonary artery via the securement ring (10a), wherein the body is threadably attached to or press fit to the securement ring (10a) (Yamazaki ¶ 0075-0078), the securement ring for assisting in evaluation during a medical procedure (Yamazaki ¶ 0022). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have had the body of Stevens attachable to the aorta or pulmonary artery via a securement ring, wherein the body is threadably attached to or press fit to the securement ring as disclosed by Yamazaki for assisting in evaluation during a medical procedure (Yamazaki ¶ 0022).
Claim 23 is rejected under 35 U.S.C. 103 as being unpatentable over Stevens et al. (USPGPub 2004/0019348) in view of Katballe et al. (USPGPub 2019/0282072).
Re Claim 23, Stevens teaches all of the limitations of Claim 1. Stevens fails to teach wherein the body is collapsible. Katballe teaches a viewer (Katballe Fig. 7) comprising a body (128) that is collapsible, wherein the collapsible section acts as a support for the proximal end of a scope (Katballe ¶ 0091, 0121-0122). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have had the body of Stevens be collapsible as disclosed by Katballe to act as a support for the proximal end of a scope (Katballe ¶ 0091, 0121-0122).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WILLIAM R FREHE whose telephone number is (571)272-8225. The examiner can normally be reached 10:30AM-7:30PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Kevin Sirmons can be reached at 571-272-4965. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/WILLIAM R FREHE/Examiner, Art Unit 3783
/MICHAEL J TSAI/Supervisory Patent Examiner, Art Unit 3783