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 .
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.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the first edge and the fourth edge being straight in claim 23 and the second edge and the third edge being curved in claim 24 must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 23 and 24 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
The original Specification does not teach the first edge and the fourth edge being straight in claim 23 and the second edge and the third edge being curved in claim 24.
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 9, 22, and 25 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Fong (3,586,161).
Regarding claim 9, Fong teaches a surgical spoon for removing uroliths comprising:
a head 12 connected to a handle 20 by a neck;
said head having a perimeter formed by a rounded tip 26, a first curved corner and a second curved corner, and a first edge, a second edge, a third edge, and a fourth edge;
said first edge connected to said handle at a first angle and said first curved corner at a second angle;
said second edge connected to said first curved corner at a third angle and said rounded tip at a fourth angle;
said third edge connected to said rounded tip at a fifth angle; said second curved corner at a sixth angle;
said fourth edge connected to said second curved corner at a seventh angle and said handle at an eight angle;
said first edge and said fourth edge are equal in length;
said second edge and said third edge are equal in length;
said first curved corner and a second curved corner have the
same curvature and length;
said first angle and said eight angle are the same;
said second angle and said seventh angle are the same;
said third angle and said seventh angle are the same;
said fourth angle and said fifth angle are the same; and
said rounded tip located on said centerline of said handle.
See Figs. 1 and 2.
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Regarding claim 22, the first edge and the fourth edge being curved are best seen in Figs. 1-2.
Regarding claim 25, the second edge and the third edge being straight are best seen in Figs. 1-2.
Claims 9 and 23 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Stone (2019/0133357).
Regarding claim 9, Stone teaches a surgical spoon for removing uroliths comprising:
a head 20 connected to a handle 12 by a neck;
said head having a perimeter formed by a rounded tip 26, a first curved corner and a second curved corner, and a first edge, a second edge, a third edge, and a fourth edge;
said first edge connected to said handle at a first angle and said first curved corner at a second angle;
said second edge connected to said first curved corner at a third angle and said rounded tip at a fourth angle;
said third edge connected to said rounded tip at a fifth angle; said second curved corner at a sixth angle;
said fourth edge connected to said second curved corner at a seventh angle and said handle at an eight angle;
said first edge and said fourth edge are equal in length;
said second edge and said third edge are equal in length;
said first curved corner and a second curved corner have the
same curvature and length;
said first angle and said eight angle are the same;
said second angle and said seventh angle are the same;
said third angle and said seventh angle are the same;
said fourth angle and said fifth angle are the same; and
said rounded tip located on said centerline of said handle.
See Figs. 1 and 3.
Regarding claim 23, the first edge and the fourth edge being straight are best seen in Fig. 3.
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Claims 9 and 24 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Amit (2013/0192070).
Regarding claim 9, Stone teaches a surgical spoon for removing uroliths comprising:
a head 30 connected to a handle 20 by a neck;
said head having a perimeter formed by a rounded tip, a first curved corner and a second curved corner, and a first edge, a second edge, a third edge, and a fourth edge;
said first edge connected to said handle at a first angle and said first curved corner at a second angle;
said second edge connected to said first curved corner at a third angle and said rounded tip at a fourth angle;
said third edge connected to said rounded tip at a fifth angle; said second curved corner at a sixth angle;
said fourth edge connected to said second curved corner at a seventh angle and said handle at an eight angle;
said first edge and said fourth edge are equal in length;
said second edge and said third edge are equal in length;
said first curved corner and a second curved corner have the
same curvature and length;
said first angle and said eight angle are the same;
said second angle and said seventh angle are the same;
said third angle and said seventh angle are the same;
said fourth angle and said fifth angle are the same; and
said rounded tip located on said centerline of said handle.
See Fig. 1.
Regarding claim 24, the second edge and the third edge being straight are best seen in Fig. 1.
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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 21, 23, and 24 are rejected under 35 U.S.C. 103 as being unpatentable over Fong (3,586,161).
Regarding claim 21, Fong teaches the invention substantially as claimed except for the handle having a rectangular shape. The gripping section of the handle having parallel edges similar to the invention except for the ends of the handle having straight edges.
At the time the invention was made, it would have been an obvious matter of design choice to one skilled in the art to make the handle in Fong having a rectangular shape which is the ends of the handle having straight edges because the Applicant has not disclosed that such particular shape of the handle provides an advantage, is used for a particular purpose, or solves a stated problem. One of ordinary skill in the art, furthermore, would have expected Applicant’s invention to perform equally well with the handle in Fong because the gripping section of the handles in Fong and the invention has a constant width along its length.
Therefore, it would have been obvious to one skilled in the art before the effective filling date of the claimed invention to modify the handle in Fong having a rectangular shape to obtain the invention as specified in claim 21 since such modification is an obvious matter of design choice.
Regarding claims 23 and 24, Fong teaches the invention substantially as claimed except for the first edge and the second edge being straight in claim 23 and the second edge and the third edge being curved in claim 24.
At the time the invention was made, it would have been an obvious matter of design choice to one skilled in the art to make the first edge and the second edge being straight in claim 23 and the second edge and the third edge being curved in claim 24 because the Applicant has not disclosed that such particular shape of the edges provides an advantage, is used for a particular purpose, or solves a stated problem. One of ordinary skill in the art, furthermore, would have expected Applicant’s invention to perform equally well with the handle in Fong because both types of the edges define the same volume for the spoon.
Therefore, it would have been obvious to one skilled in the art before the effective filling date of the claimed invention to modify the handle in Fong such that the first edge and the second edge are straight and the second edge and the third edge are curved to obtain the invention as specified in claim 23 and 24 since such modification is an obvious matter of design choice.
Response to Arguments
Applicant’s arguments with respect to claim 9 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.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PHONG H NGUYEN whose telephone number is (571)272-4510. The examiner can normally be reached M-F: 8-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Boyer Ashley can be reached at 571-272-4502. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PHONG H NGUYEN/Examiner, Art Unit 3724