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 .
Notice of Amendment
The Amendment filed 12/10/2025 has been entered. Claims 1-12, 18-23 are pending in the application with claim 1 amended, claims 5, 8, 18-20 withdrawn, claims 13-17 cancelled, and claims 21-23 newly added.
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 base unit configured to be fastened to one end portion of the endoscope and further configured to be coupled to the surgical member at one side” in Claim 1
“a driving module … configured to provide driving force to the wire” in Claim 1
“a holding unit to mechanically couple the cartridge seated in the accommodating portion to the accommodating portion” in Claim 10
“a control module to input a control command for controlling operations of the surgical member or the base unit through the driving module” in Claim 11
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.
Claim 23 is 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 23 recites the limitation “the wire is provided in plurality, wherein the supporting member and the movable member are respectively in plurality to correspond to the plurality of wires, and wherein the plurality of movable members is installed in the cartridge shaped like an enclosure, and integrally coupled to the driving module” in Lines 2-5, wherein the claim language attempts to claim a plurality of wires, supporting member and movable members, however the language used in the claim creates a lot of ambiguity regarding the structure and relationships between the components. Appropriate correction is required.
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 1-3, 9-12, 22 and 23 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Prisco (US Patent Application Publication No. 2010/0082041).
In regards to claim 1, Prisco discloses a surgical member driving apparatus (200, Fig. 2A) for operating a surgical member (210) detachably mounted to an endoscope (the surgical member is capable of being detachably mounted to an endoscope), comprising:
a cartridge module (220,230) comprising:
a base unit (220) configured to be fastened to one end portion of the endoscope and further configured to be coupled to the surgical member at one side (the shaft is capable of being mounted to an endoscope or having an endoscope mounted thereto),
a wire (222) comprising a first end portion and a second end portion, the first end portion being coupled to the base unit and configured to transmit driving force to the base unit (Figs. 2A,2B), and
a cartridge (230) comprising a power transmitter (232) coupled to the second end portion of the wire (Fig. 2A); and
a driving module (via motor pack which includes motor (242), Par. 30) comprising an accommodating portion in which the cartridge is detachably accommodated (via detachable connection between the motor pack and cartridge (230), Par. 30), and configured to provide the driving force to the wire of the cartridge module coupled to the accommodating portion (Par. 30),
wherein the power transmitter comprising:
a supporting member (housing of the cartridge (230)) to which at least one side of a tube surrounding the wire is fastened (via shaft (220) surrounding the wire fastened to the supporting member); and
a movable member (232) coupled to one side of the wire to move the wire relative to the tube,
wherein the driving module is mechanically coupled to the movable member and is configured to move or rotate the movable member (Par. 30, Fig. 2B), and
wherein the movable member is detachably coupled to the driving module (Par. 30, Fig. 2B).
In regard to claim 2, Prisco teaches wherein the base unit comprises: a base portion (distal portion of the shaft (220)) to be fastened to the one end portion of the endoscope (the distal portion of the shaft is capable of being fastened to an endoscope); and a first rotary portion (via pulley mounted to the base portion for actuating jaw (212)) rotatably coupled to the base portion with respect to an extending direction of the endoscope (Fig. 2B).
In regard to claim 3, Prisco teaches wherein the wires form a pair (222,224), and the pair of wires comprises a first wire and a second wire to rotate the first rotary portion clockwise or counterclockwise with respect to the extending direction of the endoscope (Figs. 2A,2B)).
In regard to claim 9, Prisco teaches wherein the surgical member comprises one among surgical forceps, an endoscopic submucosal dissection (ESD) knife, a surgical snare, a surgical basket, a surgical net, a surgical clip, surgical micro-scissors (via forceps (212,214), Figs. 2A,2B).
In regard to claim 10, Prisco teaches wherein the driving module comprises a holding unit to mechanically couple the cartridge seated in the accommodating portion to the accommodating portion (via engagement between the motors and the capstans, Figs. 2A,2B, 3).
In regard to claim 11, Prisco teaches further comprising a control module (850, Par. 29) to input a control command for controlling operations of the surgical member or the base unit through the driving module (Par. 44).
In regard to claim 12, Prisco teaches wherein the control module comprises:
a body (850); and
a control stick or a control button pivotally provided on the body (Par. 29),
wherein the wire is actuated as the control stick is pivoted or the control button is pressed (Par. 29).
In regard to claim 22, Prisco teaches wherein the supporting member and the movable member are formed as a single body to be replaced and discarded after one or more uses (Fig. 2A,2B, via the supporting member and movable member are all portions of the backend mechanism (230) and is capable of being discarded after use).
In regard to claim 23, teaches the wire is provided in plurality, wherein the supporting member and the movable member are respectively in plurality to correspond to the plurality of wires, and wherein the plurality of movable members is installed in the cartridge shaped like an enclosure, and integrally coupled to the driving module (Figs. 2A,2B illustrates first and second sets of wires coupled to first and second movable members, wherein the movable members are integrated within the cartridge and coupled to the driving module).
Claims 1 and 21 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wang et al. (US Patent No. 7,914,521, hereinafter Wang).
In regards to claim 1, Wang discloses a surgical member driving apparatus (400, Fig. 17) for operating a surgical member (314) detachably mounted to an endoscope (the surgical member is capable of being detachably mounted to an endoscope), comprising:
a cartridge module (200) comprising:
a base unit (300,301) configured to be fastened to one end portion of the endoscope and further configured to be coupled to the surgical member at one side (the shaft is capable of being mounted to an endoscope or having an endoscope mounted thereto),
a wire (350) comprising a first end portion and a second end portion, the first end portion being coupled to the base unit and configured to transmit driving force to the base unit (Figs. 20-21), and
a cartridge (700) comprising a power transmitter (700) coupled to the second end portion of the wire (Figs. 20-21); and
a driving module (500, Fig. 17) comprising an accommodating portion in which the cartridge is detachably accommodated (Fig. 17), and configured to provide the driving force to the wire of the cartridge module coupled to the accommodating portion (actuation of motor (506) causes linear translation of the rod (516) which linearly translates the cable (350), Col. 19, Lines 1-26),
wherein the power transmitter comprising:
a supporting member (housing of the translator (700)) is attached to the shaft of instrument (300), Fig. 20) to which at least one side of a tube surrounding the wire is fastened (housing of the translator (700)) is attached to the shaft of instrument (300) through which the cable (350) extends, Fig. 20); and
a movable member (351) coupled to one side of the wire to move the wire relative to the tube (Figs. 20-21),
wherein the driving module is mechanically coupled to the movable member and is configured to move or rotate the movable member (actuation of motor (506) causes linear translation of the rod (516) which linearly translates the cable (350), Col. 19, Lines 1-26, Figs. 17, 21, 24), and
wherein the movable member is detachably coupled to the driving module (Fig. 17).
In regard to claim 21, Wang teaches wherein the driving module comprises a linear actuator (via motor (506) + load screw (512), Fig. 24) coupled to the movable member and is configured to move the movable member rectilinearly, and the wire moves relative to the tube by rectilinear movement of the movable member (Figs. 21, 24, Col. 19, Lines 1-26).
Claims 1, 2, 4, 6 and 7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Brock et al. (US Patent Application No. 2007/0088340, hereinafter Brock).
In regards to claim 1, Brock discloses a surgical member driving apparatus (S, Fig. 8E) for operating a surgical member (18) detachably mounted to an endoscope (the surgical member is capable of being detachably mounted to an endoscope), comprising:
a cartridge module (16, 301) comprising:
a base unit (301) configured to be fastened to one end portion of the endoscope and further configured to be coupled to the surgical member at one side (the shaft is capable of being mounted to an endoscope or having an endoscope mounted thereto),
a wire (606) comprising a first end portion and a second end portion, the first end portion being coupled to the base unit and configured to transmit driving force to the base unit (Fig. 8E), and
a cartridge (16) comprising a power transmitter (16) coupled to the second end portion of the wire (Fig. 8E); and
a driving module (8, 230) comprising an accommodating portion in which the cartridge is detachably accommodated (via detachable connection between the insert (16) and coupler (230)), and configured to provide the driving force to the wire of the cartridge module coupled to the accommodating portion (Fig. 8E),
wherein the power transmitter comprising:
a supporting member (housing of the coupler (230)) to which at least one side of a tube surrounding the wire is fastened (via shaft (301) surrounding the wire fastened to the supporting member); and
a movable member (334) coupled to one side of the wire to move the wire relative to the tube (Fig. 8E),
wherein the driving module is mechanically coupled to the movable member and is configured to move or rotate the movable member (Fig. 8E), and
wherein the movable member is detachably coupled to the driving module (Fig. 8E, Par. 197).
In regard to claim 2, Brock teaches wherein the base unit comprises: a base portion (see annotated Fig. 8E below) to be fastened to the one end portion of the endoscope (any portion of the shaft is capable of being fastened to an endoscope); and a first rotary portion (see annotated Fig. 8E below) rotatably coupled to the base portion with respect to an extending direction of the endoscope (see annotated Fig. 8E below, wherein the endoscope and base portion are capable of being fastened together in a substantially parallel fashion).
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In regard to claim 4, Brock teaches further comprising: an arm portion extended in the extending direction of the endoscope, and coupled to the first rotary portion pivotally with respect to a first rotary axis perpendicular to the extending direction of the endoscope, and a third wire and a fourth wire (Par. 165) to pivot the arm portion around the first rotary axis (see annotated Fig. 8E above).
In regard to claim 6, Brock teaches further comprising a second rotary portion coupled to an end portion of the arm portion pivotally with respect to a second rotary axis perpendicular to the extending direction of the arm portion (see annotated Fig. 8E above).
In regard to claim 7, Brock teaches wherein the surgical member comprises forceps provided in the second rotary portion pivotally with respect to the second rotary axis and comprising a first gripper and a second gripper (see annotated Fig. 8E above).
Response to Arguments
Applicant’s arguments with respect to claims 1-4, 6, 7, 9-12 and 21-23 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.
Examiner Comments
In order to distinguish the claimed invention from the prior art rejections, the examiner suggests amending Claim 1 with the features of Claim 2 and provide some structure to the detachable coupling between the base portion and the endoscope, such as --the base portion configured to surround and detachably couple to an outer circumference of a distal portion of an endoscope--.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RYAN N HENDERSON whose telephone number is (571)270-1430. The examiner can normally be reached Monday-Friday 6am-5pm (PST).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Anhtuan Nguyen can be reached at 571-272-4963. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RYAN N HENDERSON/Primary Examiner, Art Unit 3795 March 7, 2026