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 .
Claim Objections
Claim 29 is objected to because of the following informalities: “positive pressure area is be formed” should read --positive pressure area is configured to be formed--. Appropriate correction is required.
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 24, 32, and 33 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.
Claim 24 recites “there are two ports” while parent claim 21 recites “two or more ports”. It is unclear whether the “two ports” of claim 24 are intended to be the same or different from the ports of parent claim 21.
Claim 32 recites the limitation “the duct” in line 1. There is insufficient antecedent basis for this limitation in the claim.
Claim 33 recites the limitation “the duct” in line 1. There is insufficient antecedent basis for this limitation in the claim.
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 21, 24, 25, 27, and 30-32 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. Patent No. 5,836,311 (Borst et al.).
Regarding claim 21, Borst teaches a suction tool (abstract), comprising:
a rigid, tubular extension (23) having a proximal end, a distal end, and a channel (30) therethrough that is attachable to a vacuum source (114) (col. 7, line 57-col. 8, line 3; col. 8, lines 4-16; Figures 14-15);
a linear vacuum arm (22) having a proximal-most end attached to a distal-most end of the extension (23), the vacuum arm (22) being attached to the extension (23) at an angle, the vacuum arm (22) having an internal conduit (31) that is continuous with the channel (30), a viewing surface directed towards the proximal end of the extension (23), and a supporting surface (The “viewing surface” is construed as the top surface of the paddle 22 during use, see Figures 15-16; The “supporting surface” is construed as the bottom surface of paddle 22 during use, see Figures 15-16; col. 8, lines 4-21);
two or more ports (33) in the supporting surface connected to the internal conduit (31) such that, when a vacuum is created in the channel (30) and internal conduit (31) by the vacuum source, a negative pressure area is formed at the two or more ports (33) (col. 8, lines 4-21).
Regarding claim 24, Borst teaches there are two ports (33) with one located at about a first end of the vacuum arm (22) and another located at about a second end of the vacuum arm (col. 8, lines 4-21; Figures 15-16).
Regarding claim 25, Borst teaches the two or more ports (33) are arranged longitudinally on the supporting surface of the vacuum arm (22) (see Figures 15-16).
Regarding claim 27, Borst teaches at least two internal conduits (conduit 30 passes through lumen of arm 23, the lumen and the conduit 31 are construed as the “two internal conduits”, see Figures 15-16; col. 8, lines 4-21).
Regarding claim 30, Borst teaches each of the two or more ports (33) has one of a circular shape or an oval shape (Figures 15-16).
Regarding claim 31, Borst teaches each of the two or more ports (33) has a sidewall connected to the internal conduit, the sidewall defining a duct (32) having a substantially constant diameter from the port (33) to the internal conduit (31) (see Figures 4-5; col. 8, lines 12-16).
Regarding claim 32, Borst teaches the duct has a smaller diameter at an intersection with the internal conduit (31) that an intersection with the port (33) (The “port” is construed as the aperture in the paddle surface intended to contact tissue during use at the terminal opening of port 33, and the “duct” is construed as the sidewall of port 33. Accordingly, the “duct” has a smaller diameter at the intersection of “internal conduit” 31 than at its intersection with the “port”, as the “duct” sidewall is curved as shown in Figure 15).
Claims 21 and 25-28 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. Patent No. 4,049,000 (Williams).
Regarding claim 21, Williams teaches a suction tool, comprising:
a rigid, tubular extension (16) having a proximal end, a distal end, and a channel (17) therethrough that is attachable to a vacuum source (col. 2, lines 10-24 and lines 56-60; Figure 1);
a linear vacuum arm (14) being attached to the extension (16) at an angle, the vacuum arm (14) having an internal conduit that is continuous with the channel (17), a viewing surface, and a supporting surface (The “viewing surface” is construed as the top surface of the pipe 14 during use, see Figure 1; pipe 14 is hollow, col. 2, lines 10-30; the “supporting surface” is construed as the external surface of end 28, col. 2, lines 26-30 and lines 54-62; see Figure 1);
two or more ports (42) in the supporting surface connected to the internal conduit such that, when a vacuum is created in the channel (17) and internal conduit by the vacuum source, a negative pressure area is formed at the two or more ports (col. 2, lines 10-24 and lines 62-65; col. 4, lines 52-58; Figures 1 and 4-6).
Regarding claim 25, Williams teaches the two or more ports (42) are arranged longitudinally on the supporting surface of the vacuum arm (ports 42 extend longitudinally along arm, Figure 4).
Regarding claim 26, Williams teaches the one or more ports (42) are arranged in at least two rows longitudinally on the supporting surface of the vacuum arm (14) (see Figures 4-6).
Regarding claims 27 and 28, Williams teaches at least two internal conduits (hollow conduit within pipe 14 and conduit in hose 33, col. 2, lines 19-22 and lines 54-60); and two channels in the extension (16) (passageway 17 and passageway 25, see Figure 3; col. 2, lines 40-47).
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 22 and 23 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent No. 5,836,311 (Borst et al.).
Regarding claims 22 and 33, Borst teaches all the limitations of claim 21. Borst teaches the vacuum arm is secured to the extension at an adjustable angle (col. 8, lines 4-12), but does not quantify the angle.
Before the effective filing date of the claimed invention, it would have been an obvious matter of design choice to a person of ordinary skill in the art to modify Borst such that the angle between the vacuum arm and the extension is between 30° and less than 180°, or at an angle of 90°, because Applicant has not disclosed that an angle of between 30 and 180° or an angle of 90° between the vacuum arm and the extension provides an advantage, is used for a particular purpose, or solves a stated problem versus another angle. One of ordinary skill in the art, furthermore, would have expected applicant’s invention to perform equally well with the adjustable angle of Borst because Borst teaches such an adjustable angle results in a desirable position of the operational end of the vacuum arm relative to the extension grasped by the practitioner to facilitate engagement with a target tissue (abstract; col. 8, lines 4-12). Therefore, it would have been an obvious matter of design choice to modify Borst et al. to obtain the invention as specified in claim 22 or 23.
Claims 22 and 23 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent No. 4,049,000 (Williams).
Regarding claim 22, Williams teaches all the limitations of claim 21. Williams teaches the vacuum arm (14) is attached to the extension (16) at an angle of “preferably less than 45°”, or between 15° and less than 40° (col. 2, lines 59-62; Figure 1). Accordingly, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the angle between the vacuum arm and the extension of Williams such that the angle is between 30° and 180°, because Williams teaches an angle in such a range results in a desirable position of the operational end of the vacuum arm relative to the extension grasped by the practitioner to facilitate engagement with a suction target (abstract; col. 2, line 59-col. 3, line 8). Applicant has asserted no criticality of the claimed angle value.
Regarding claim 23, Williams as modified teaches all the limitations of claim 22. Williams teaches the vacuum arm (14) is attached to the extension (16) at an angle of “preferably less than 45°”, or between 15° and less than 40° (col. 2, lines 59-62; Figure 1). Williams fails to disclose the vacuum arm is attached to the extension at an angle of 90°. Before the effective filing date of the claimed invention, it would have been an obvious matter of design choice to a person of ordinary skill in the art to modify Williams such that the angle between the vacuum arm and the extension is 90°, because Applicant has not disclosed that an angle of 90° between the vacuum arm and the extension provides an advantage, is used for a particular purpose, or solves a stated problem versus another angle. One of ordinary skill in the art, furthermore, would have expected applicant’s invention to perform equally well with the angle of less than 45° of Williams because Williams teaches such angle results in a desirable position of the operational end of the vacuum arm relative to the extension grasped by the practitioner to facilitate engagement with a suction target (abstract; col. 2, line 59-col. 3, line 8). Therefore, it would have been an obvious matter of design choice to modify Williams to obtain the invention as specified in claim 23.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 21-29 and 34-40 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6, 9, 10, 12, 21, 23, and 24 of U.S. Patent No. 11,382,646. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 21 of the instant application is merely broader in scope than all that is recited in claims 1 and 21 of the ‘646 patent. That is, claim 21 is anticipated by claims 1 and 21 of the ‘646 patent. Similarly, instant claim 34 is anticipated by claim 1 of the ‘646 patent, and instant claim 40 is anticipated by claim 12 of the ‘646 patent. Once applicant has received a patent for a species or a more specific embodiment, applicant is not entitled to a patent for the generic or broader invention (see In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993)). Claims 22-29 and 35-39 of the instant application are anticipated by claims 2-6, 9, 10, 21, 23, and 24, of the ‘646 patent, by the same reasoning.
Claims 30-32 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11,382,646 in view of U.S. Patent No. 5,836,311 (Borst et al.).
Regarding claim 30, claim 1 of the ‘646 patent recites all the limitations of instant claim 30, except “wherein each of the two or more ports has one of a circular shape or an oval shape”.
However, Borst teaches a suction tool comprising two or more ports (33) in a supporting surface of a vacuum arm; wherein each of the two or more ports (33) has one of a circular shape or an oval shape (Figures 15-16; col. 8, lines 4-21). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the ports of claim 1 of the ‘646 patent to have either a circular or an oval shape as taught by Borst in order to reduce the chance of tissue damage during suction due to sharp corners.
Regarding claim 31, claim 1 of the ‘646 patent recites all the limitations of instant claim 31, except “each of the two or more ports has a sidewall connected to the internal conduit, the sidewall defining a duct having a substantially constant diameter from the port to the internal conduit”.
However, Borst teaches a suction tool comprising two or more ports (33); wherein each of the two or more ports (33) has a sidewall connected to an internal conduit (31), the sidewall defining a duct (32) having a substantially constant diameter from the port (33) to the internal conduit (see Figures 4-5; col. 8, lines 12-16). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the ports of claim 1 of the ‘646 patent such that each of the two or more ports has a sidewall connected to the internal conduit, the sidewall defining a duct having a substantially constant diameter from the port to the internal conduit as taught by Borst in order to fluidly couple the port to the internal conduit to achieve suction.
Regarding claim 32, claim 1 of the ‘646 patent recites all the limitations of instant claim 32, except “the duct has a smaller diameter at an intersection with the internal conduit than at an intersection with the port”.
However, Borst teaches a suction tool comprising two or more ports (33); wherein a duct has a smaller diameter at an intersection with an internal conduit (31) than at an intersection with the port (The “port” is construed as the aperture in the paddle surface intended to contact tissue during use at the terminal opening of port 33, and the “duct” is construed as the sidewall of port 33. Accordingly, the “duct” has a smaller diameter at the intersection of “internal conduit” 31 than at its intersection with the “port”, as the “duct” sidewall is curved as shown in Figure 15). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the ports of claim 1 of the ‘646 patent to include a duct having a smaller diameter at an intersection with an internal conduit than at an intersection with the port as taught by Borst in order to fluidly couple the port to the internal conduit to achieve suction.
Conclusion
The examiner notes that, though no art has been applied against claims 29 and 33-40 at this time, they are not presently allowable. The question of prior art will be revisited upon resolution of the numerous issues noted above.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Carrie R Dorna whose telephone number is (571)270-7483. The examiner can normally be reached 8am-5pm.
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, Alexander Valvis can be reached at 571-272-4233. 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.
/CARRIE R DORNA/Primary Examiner, Art Unit 3791