Detailed Action1
Election/Restriction
Claims 19-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to nonelected groups and species, there being no allowable generic or linking claim.
Applicant's election with traverse of Group I, claims 1-18 in the reply filed on November 24, 2025 is acknowledged.
The traversal between the groups is on the grounds that Blocher fails to anticipate claim 1 since the support structure is not internal to channel 6, and, there is no ledge that separates two portions of the channel since no channel extends above plate 7. This argument is not persuasive because the channel does not have to be interpreted as channels 6 & 8, and the ledge separates the channel in plate 7 from the channel below (as detailed more in the prior art rejections below). Even if the ledge of Blocher is interpreted as the entire top plate 7, this plate still separates a first channel within the plate to the second channel below the plate (Applicant’s originally filed disclosure teaches the first channel can comprise the opening/channel within the ledge, see e.g. claim 3). The restriction requirement between Groups I, II, and III is still deemed proper and is therefore made FINAL.
America Invents Act 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 USC 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis 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.
Specification
The abstract of the disclosure is objected to because “Figure 4” in line 15 should be removed. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
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 is: support structure in claim 1.
Because this claim limitation is being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it is being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof. Thus, support structure is interpreted as a plurality of spaced protrusions extending from the ledge and within the second portion of the channel such that the protrusions extend generally in the longitudinal direction with respect to the second channel and are angled inwards, wherein the plurality of protrusions have a circular arrangement, and each protrusion comprises an increased diameter portion configured to have the insulating sleeve secured thereto.
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 Objections
Claim 6 is objected to because of an informality: “protrusion” in line 3 should be changed to “protrusions”. Appropriate correction is required.
Rejections under 35 USC 112
The following is a quotation of 35 U.S.C. 112:
(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 1-18 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 applicant regards as the invention.
Claim 1 recites a hollow channel. It is unclear how a channel (i.e. empty space) can be hollow. For purposes of examination, this will be interpreted as the housing being hollow.
Claim 3 recites the ledge of the support structure. However, claim 1 recited: “the support structure is located on a ledge”. It is unclear how the support structure can be both “on” the ledge, and the support structure comprising the ledge. For purposes of examination, the support structure can be interpreted as either interpretation, i.e. comprises the ledge or being located on the ledge.
Claim 10 recites the internal mechanisms of the first portion and the second portion are identical. There is insufficient antecedent basis for “the internal mechanisms”. In addition, it is unclear if the first portion and the second portion are referring to the portions of the channel or of the housing.
Claim 13 recites an end effector. It is unclear if this is referring to the end effector introduced in claim 1, or is referring to a second end effector. Claim 13 also recites the first end and the second end in line 5. It is unclear if this is referring to the ends of the applicator or the ends of the housing.
Regarding claim 18, it is unclear if “the protrusions” in line 1 are referring to the first set of protrusions, second set of protrusions, or both. In addition, it is unclear if “two diametrically opposing protrusions” are referring to the first set of protrusions, second set of protrusions, or introducing other protrusions. Lastly, it is unclear how the distance between protrusions can be smaller than the shaft of the electrosurgical instrument. It appears this limitation should recite the distance between protrusions being smaller than a width or diameter of the shaft of the electrosurgical instrument.
Claims 2, 4-9, 11-12, and 14-17 are rejected for depending from at least one of claims 1, 3, and 13.
Rejections under 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-4 and 7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by USPGPub No. 2012/0079701 (“Blocher”).
Claim 1 recites a device configured to apply an insulating sleeve to an electrosurgical instrument. Blocher teaches a device to apply a sleeve onto the distal end of an elongated surgical instrument (figs. 1-3, ¶ [0002]). One of skill in the art will appreciate based on the structure of the device, and the shape of the surgical instrument used therewith, that the device can be used to apply an insulating sleeve to an electrosurgical instrument since the device is configured to hold sleeves and configured to apply them to ends of elongated surgical instruments. Blocher teaches the device comprising a housing (i.e. the box-shaped portion of body 5 above the legs), the housing comprising: a first end; a second end (see figure 1 & annotated figure 3 of Blocher below).
PNG
media_image1.png
707
935
media_image1.png
Greyscale
As illustrated in annotated figure 3 of Blocher, above, the top of the device is the first end of the housing, the bottom of the box-shaped body 5 (not including the legs) is interpreted as the second end of the housing, the bottom of plate 7 forms a ledge between a first portion of the channel (i.e. channel within plate 7—including sections 8 and/or 14) and a second portion of the channel (i.e. channel within the box-shaped body 5 from the ledge to the second end of the housing).
Blocher further teaches a hollow channel extending from the first end to the second end (fig. 3), the channel being configured to receive an electrosurgical instrument comprising an end effector connected to a shaft by a distal articulation (¶ [0043], [0045] & [0051]-[0054], wherein since the instrument in Blocher comprises jaw members at a distal end, the device is capable of receiving an end effector of a surgical instrument); a support structure (6) internal to the channel (fig. 3, ¶ [0044]-[0045] & [0048]-[0049], wherein support structure 6 is internal to the portion of the channel), wherein the proximal end of the support structure is located on a ledge that separates a first portion of the channel from a second portion of the channel (see annotated fig. 3 above, wherein support structure/protrusions 6 extend from bottom surface/ledge of plate 7 separating the two channels), the proximal end of the support structure being the end of the support structure closest to the first end of the housing (see annotated fig. 3 above), the support structure being configured to: support an insulating sleeve such that the insulating sleeve surrounds the electrosurgical instrument when the electrosurgical instrument is received by the channel (figs. 3-4); and when the electrosurgical instrument is advanced through the channel from the first end to the second end, release the insulating sleeve onto the electrosurgical instrument (¶ [0051]-[0054]).
Claim 2 recites the first portion of the channel is narrower than the second portion of the channel. As illustrated in figs. 2-3, the first portion of the channel (i.e. portion within plate 7) is narrower than the second portion of the channel (i.e. portion below the ledge) since the plate 7 extends inward from the second channel delimited by the box-shaped body.
Claim 3 recites the first portion of the channel is circular in cross section, the first portion further comprising an opening located on the ledge of the support structure. As illustrated in figs. 2A & 3, the channel within plate 7 has different portions 8 & 14 (see ¶ [0043] & [0055]), wherein the plurality of protrusions 6 are arranged in a circular shape so that they define circular channel 8 (see also ¶ [0043]-[0045]). This channel 8 reads on the first portion of the channel since this channel 8 is within plate 7, i.e. ledge, has an opening on the plate/ledge 7, and is separated from the second portion of the channel via the bottom of plate/ledge 7 (see fig. 3).
Regarding claim 4, Blocher further teaches the support structure comprises a plurality of protrusions (6) surrounding the opening (figs. 2-3), the plurality of protrusions extending distally along an axis that is parallel to an axis along which the channel extends (figs. 2-3).
Regarding claim 7, Blocher further teaches the protrusions of the support structure are uniformly positioned around the opening (fig. 2A, ¶ [0044]-[0045]).
Allowable Subject Matter
Claims 5-6 and 8-18 would be allowable if rewritten to overcome the rejections under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: the prior art fails to teach or fairly suggest the elements of claims 5, 9, and 12, respectively, in combination with the other limitations of claim 1. The other allowable claims all depend from one of claims 5, 9, and 12. The examiner notes that in accordance with its ordinary meaning in the art, “applicator” as used in claim 12 is interpreted as a device to insert the electrosurgical instrument into the channel of the housing. Thus, claim 12 is interpreted as the housing configured to receive the applicator during the insertion of the electrosurgical instrument into the channel of the housing.
Regarding claim 5, the examiner does not believe it is obvious to modify the protrusions of Blocher so that some have a length different than others. As illustrated in fig. 3 of Blocher, the increased diameter portion 10 of the protrusions are at a distal end so that the sleeve is attached to a distal end of the protrusions 6. Thus, it would not be obvious without hindsight to modify the length of some of the protrusions so that they are shorter or longer than the rest since this could interfere with securely attaching the sleeve.
Regarding claim 9, while the embodiment of Blocher illustrated in figures 7-9 teaches a pivotal two-piece design, the structure of this embodiment is significantly different from the structure of the embodiment of figures 1-6 so that it would not be obvious to modify the embodiment of figures 1-6 to form a pivotal two-piece design. The embodiment of figures 7-9 does not have a support structure internal to the channel as required by claim 1, and when in the assembled state with the channel extending between first and second ends of the housing, does not comprise a plurality of spaced protrusions. The plurality of protrusions and springs 9 of the embodiment of figures 1-6 make a pivotal two-piece design more complicated. Further, the purpose of the design of the embodiment of figures 7-9 is to allow for the removal of the device after the sleeve is installed on the tool. The embodiment of figures 1-6 already provides a mechanism to do this—i.e. channels 14 in the plate 7—thus negating the motivation to significantly alter the structure.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Kyle Cook whose telephone number is 571-272-2281. The examiner’s fax number is 571-273-3545. The examiner can normally be reached on Monday-Friday 9AM-5PM EST.
If attempts to reach the examiner by telephone are unsuccessful, please contact the examiner's supervisor Thomas Hong (571-272-0993). The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://portal.uspto.gov/external/portal. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
/KYLE A COOK/Primary Examiner, Art Unit 3726
1 The following conventions are used in this office action. All direct quotations from claims are presented in italics. All information within non-italicized parentheses and presented with claim language are from or refer to the cited prior art reference unless explicitly stated otherwise.