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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 09/15/2026 has been entered.
Response to Amendment
This Office Action is a response to applicant’s arguments and amendment filed 09/15/2026. Claim 121 is amended. Claims 1-120, 122-123, 129, 134-135, 138 and 140 are cancelled. Claims 121, 124-128, 130-133, 136-137, 139 and 141-146 are currently pending, with claim 136 withdrawn from consideration.
Response to Arguments
Applicant’s arguments, see Remarks, filed 09/15/2026, with respect to the rejection(s) of claim(s) 121. 124-128, 130-135, 137, 139 and 141-146 under 35 U.S.C. 102(a)(1) as being anticipated by Hinchliffe, have been fully considered but are not persuasive, in combination with the amendments to the claims. The rejection has been modified, necessitated by applicant’s amendments to the claims.
1) Applicant argues Hinchliffe does not disclose a proximal sealing means as claimed, because valve 644 of Hinchliffe is not located adjacent a proximal end or located proximal to gasket 618 (Remarks, pgs. 9-17).
In response to applicant’s argument, it is respectfully submitted the arguments are narrower than the claim limitations. The claim language does not specify the location of the proximal sealing means relative to the access valve. Further, the interpretation of the duckbill valve of Hinchliffe being adjacent a proximal end is consistent with the instant spec., which describes valve 12, located distally of the proximal sealing means, as being adjacent a proximal end of the trocar cannula 3 (para. [0127] of the published application), such that the duckbill valve disclosed by Hinchliffe is considered to be located adjacent a proximal end as claimed.
2) Applicant further argues Gerrone fails to teach the newly added limitations, however, Gerrone is not relied upon to teach the claimed limitations, therefore applicant’s argument is moot.
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.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 143 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Regarding claim 143, the claim recites “the detecting means is urgeable from the first state to the second state by an instrument passing distally through the instrument passageway”. Claim 143 is dependent on claim 125, which already recites the claim limitation, such that claim 143 is in improper dependent form for failing to further limit the subject matter of claim 125.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
Claim(s) 121, 124-128, 130-133, 137, 139 and 141-146 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hinchliffe (US 5657963) (all references previously of record).
Regarding claim 121, Hinchliffe discloses (see abstract; col. 7 line 12-col. 23 line 7; figs. 1-37) an attachment (includes seal assembly 610, col. 14 lines 3-19; figs. 20-21) for a trocar or a trocar cannula (attached to cannula 642), the trocar or the trocar cannula being of the type comprising an access valve (gasket 618) adjacent a proximal end thereof (fig. 21), the attachment comprising:
a housing (611, fig. 20) defining
an instrument passageway (includes 630, col. 14 lines 32-48; fig. 21) extending through the housing from a proximal end to a distal end for accommodating an instrument therethrough (depicted in fig. 21), the instrument passageway defining
a longitudinally extending main central axis (longitudinal axis of 610),
the housing being engageable with the trocar or the trocar cannula with the instrument passageway aligned with an instrument bore of the trocar or the trocar cannula (fig. 21),
a detecting means (door assembly 621, col. 14 lines 3-19; fig. 21) configured to detect an instrument entering or passing distally through the instrument passageway (door assembly 621 urged distally by pushing on it with instrument 648, considered to detect when instrument begins to pass distally through device, col. 15 line 60-col. 16 line 13), and
an operating means (includes dilator 628 and end cap 607, col. 14 lines 32-48; fig. 21) moveably mounted from a disengaged state disengaged from the access valve of the trocar or the trocar cannula (depicted in fig. 21) to an engagement state engageable with the access valve of the trocar or the trocar cannula for operating the access valve from a closed state to an open state thereof (moved into second position in contact with gasket 618 thereby spreading aperture 620, fig. 24),
the operating means being urgeable from the disengaged state to the engagement state in response to the detecting means detecting insertion of the instrument entering or passing distally through the instrument passageway (movement of door assembly 621 causes translation of dilator 628 to second position in contact with gasket 618, col. 15 line 60-col. 16 line 13; figs. 24-25),
the housing of the attachment further comprising:
a proximal sealing means (644, col. 14 lines 49-61) located in the instrument passageway adjacent the proximal end thereof (considered to be adjacent the proximal end since housing 611 is at a proximal end of the passageway of 642, note this appears to be consistent with the instant spec., describing access valve 12 as being adjacent the proximal end of trocar cannula 3, para. [0127] of the published application, fig. 21 of Hinchliffe), and being transitionable from a sealing state for sealably engaging an instrument in the instrument passageway (fig. 25) for minimising the passage of gases passing proximally through the instrument passageway (col. 14 lines 55-61), to a non-sealing state disengaged from the instrument in the instrument passageway (fig. 21),
the proximal sealing means being transitionable from the non-sealing state to the sealing state in response to the detecting means detecting insertion of the instrument into the instrument passageway or the instrument being urged distally in the instrument passageway for sealing the instrument therein (transitions to engaging the inserted instrument when sliding door 623 is moved into an open position and the instrument is inserted through duckbill 644, col. 16 lines 14-39; fig. 25), and
being transitionable from the sealing state to the non-sealing state and being retained therein in response to the operating means being urged from the engagement state to the disengaged state (considered to be transitionable to non-sealing state when instrument 648 is removed, when dilator 628 is returned to the first position spaced from gasket 618, col. 16 lines 40-56).
Regarding claim 124, Hinchliffe discloses the attachment of claim 121. Hinchliffe further discloses in which the operating means is slideably mounted in the housing (translates distally, considered to be slidable, col. 15 line 60-col. 16 line 13).
Regarding claim 125, Hinchliffe discloses the attachment of claim 121. Hinchliffe further discloses in which the detecting means is urgeable distally from a first state to a second state in response to the instrument passing distally through the instrument passageway (door assembly 621 urged distally when pushed by instrument 648, col. 15 line 60-col. 16 line 13).
Regarding claim 126, Hinchliffe discloses the attachment of claim 125. Hinchliffe further discloses in which the detecting means extends into the instrument passageway in an extended state thereof as the detecting means is being urged from the first state thereof to the second state thereof (extends along passageway as door assembly is urged distally, figs. 21 and 24-25).
Regarding claim 127, Hinchliffe discloses the attachment of claim 126. Hinchliffe further discloses in which the detecting means in the second state thereof is urgeable from the extended state extending into the instrument passageway to a third state (open position of sliding door 623, col. 16 lines 14-39; fig. 25) by an instrument in the instrument passageway to accommodate the instrument passing the detecting means when the detecting means is in the second state (instrument pushed against door until it slides open, figs. 24-25).
Regarding claim 128, Hinchliffe discloses the attachment of claim 125. Hinchliffe further discloses in which the detecting means is urgeable longitudinally along the instrument passageway from the first state to the second state (urged distally, col. 15 line 60-col. 16 line 13).
Regarding claim 130, Hinchliffe discloses the attachment of claim 121. Hinchliffe further discloses in which the operating means defines an instrument accommodating bore (630, col. 14 line 32-48) extending therethrough for accommodating an instrument therethrough through the instrument passageway (figs. 24-25), and the detecting means extends through a probe accommodating opening (609) extending through the operating means communicating with the instrument accommodating bore for engaging an instrument in the instrument accommodating bore defined by the operating means (figs. 21 and 24-25).
Regarding claim 131, Hinchliffe discloses the attachment of claim 126. Hinchliffe further discloses in which an urging means (655a and 655b, col. 14 line 62-col. 15 line 6; fig. 22a) is provided for urging the operating means from the engagement state to the disengaged state in response to the detecting means being in the extended state (returns dilator to first position spaced from gasket 618).
Regarding claim 132, Hinchliffe discloses the attachment of claim 127. Hinchliffe further discloses in which a retaining means (door latch mechanism 627, col. 14 lines 3-19) is provided for releasably retaining the detecting means in the second state while the detecting means is in the third state (retains sliding door 623 in closed position and engaged to release sliding door 623, col. 16 lines 14-39).
Regarding claim 137, Hinchliffe discloses the attachment of claim 121. Hinchliffe further discloses in which at least one collecting port (623b) is located in the instrument passageway for applying a vacuum adjacent the instrument passageway for drawing gases passing proximally through the instrument passageway therefrom (aperture considered to be capable of allowing a vacuum to be applied to the passageway, col. 16 lines 14-39).
Regarding claim 139, Hinchliffe discloses a trocar or a trocar cannula (642) and an attachment (includes 610) as claimed in claim 121 mounted on the one of the trocar or the trocar cannula adjacent the proximal end of the one of the trocar or the trocar cannula (fig. 21).
Regarding claim 141, Hinchliffe discloses the attachment of claim 121. Hinchliffe further discloses in which the operating means is located in the instrument passageway (fig. 21), and is slideable therein from the disengaged state to the engagement state (urged distally, col. 15 line 60-col. 16 line 13; figs. 24-25).
Regarding claim 142, Hinchliffe discloses the attachment of claim 125. Hinchliffe further discloses in which the operating means is urgeable from the disengaged state to the engagement state in response to the detecting means being urged from the first state to the second state (col. 15 line 60-col. 16 line 13).
Regarding claim 143, Hinchliffe discloses the attachment of claim 125. Hinchliffe further discloses in which the detecting means is urgeable from the first state to the second state by an instrument passing distally through the instrument passageway (col. 15 line 60-col. 16 line 13).
Regarding claim 144, Hinchliffe discloses the attachment of claim 127. Hinchliffe further discloses in which the detecting means is adapted to be retained in the third state by an instrument in the instrument passageway engaging the detecting means (instrument pushes sliding door 623 open, col. 16 lines 14-39), and the detecting means in the second state thereof is moveable from the third state to the extended state in response to a distal end of an instrument being withdrawn through the instrument passageway in a proximal direction past the detecting means (external force removed on sliding door when instrument is withdrawn, col. 16 lines 14-56).
Regarding claim 145, Hinchliffe discloses the attachment of claim 131. Hinchliffe further discloses in which the urging means is responsive to the distal end of an instrument passing the detecting means proximally for urging the operating means from the engagement state to the disengaged state (springs return to first position, col. 16 lines 14-56).
Regarding claim 146, Hinchliffe discloses the attachment of claim 121. Hinchliffe further discloses in which the detecting means is engageable with the operating means (considered to be engaged when sliding door 623 slides back into position depicted in fig. 24, col. 16 lines 14-56) for urging the operating means from the engagement state to the disengaged state, as the detecting means is urged from the second state to the first state (biased into first position considered to be urged into disengaged state when instrument is removed, col. 16 lines 14-39).
Regarding claim 121, Hinchliffe discloses (see abstract; col. 7 line 12-col. 23 line 7; figs. 1-37), under an alternative interpretation with respect to the seal assembly, an attachment (includes seal assembly 810, col. 18 lines 54-62; figs. 30-32b) for a trocar or a trocar cannula (attached to cannula 842), the trocar or the trocar cannula being of the type comprising an access valve (gasket 818) adjacent a proximal end thereof (fig. 30), the attachment comprising:
a housing (811, fig. 30) defining
an instrument passageway (includes 830, col. 19 line 64-col. 20-19; fig. 30) extending through the housing from a proximal end to a distal end for accommodating an instrument therethrough (depicted in fig. 30), the instrument passageway defining
a longitudinally extending main central axis (longitudinal axis of 810),
the housing being engageable with the trocar or the trocar cannula with the instrument passageway aligned with an instrument bore of the trocar or the trocar cannula (fig. 30),
a detecting means (includes sliding door 823, plate member 837 and latch release 888, fig. 31) configured to detect an instrument entering or passing distally through the instrument passageway (sliding door 823 urged distally by pushing on it with instrument 848, considered to detect when instrument begins to pass distally through device, col. 19 lines 30-44), and
an operating means (dilator 828, fig. 31) moveably mounted from a disengaged state disengaged from the access valve of the trocar or the trocar cannula (fig. 30) to an engagement state engageable with the access valve of the trocar or the trocar cannula for operating the access valve from a closed state to an open state thereof (fig. 31),
the operating means being urgeable from the disengaged state to the engagement state in response to the detecting means detecting insertion of the instrument entering or passing distally through the instrument passageway (col. 19 lines 30-44),
the housing of the attachment further comprising:
a proximal sealing means (844, col. 18 line 63-col. 19 line 20) located in the instrument passageway adjacent the proximal end thereof (considered to be adjacent the proximal end since housing 811 is at a proximal end of the passageway, note this appears to be consistent with the instant spec., describing access valve 12 as being adjacent the proximal end of trocar cannula 3, para. [0127] of the published application, fig. 30 of Hinchliffe), and being transitionable from a sealing state for sealably engaging an instrument in the instrument passageway (fig. 32b) for minimising the passage of gases passing proximally through the instrument passageway (duckbill valve provides a fluid-tight seal to prevent the escape of gases, col. 8 line 52-col. 9 line 4), to a non-sealing state disengaged from the instrument in the instrument passageway (fig. 30),
the proximal sealing means being transitionable from the non-sealing state to the sealing state in response to the detecting means detecting insertion of the instrument into the instrument passageway or the instrument being urged distally in the instrument passageway for sealing the instrument therein (transitions to engaging the inserted instrument when sliding door 823 is moved into an open position and the instrument is inserted through duckbill 844, col. 19 line 64-col. 20 line 19), and
being transitionable from the sealing state to the non-sealing state and being retained therein in response to the operating means being urged from the engagement state to the disengaged state (considered to be transitionable to non-sealing state when instrument 848 is removed, when dilator 828 is returned to the first position spaced from gasket 818, col. 19 line 64-col. 20 line 19).
Regarding claim 125, Hinchliffe discloses the attachment of claim 121. Hinchliffe further discloses in which the detecting means is urgeable distally from a first state to a second state in response to the instrument passing distally through the instrument passageway (sliding door 823 urged distally when pushed by instrument 648, col. 19 lines 30-44).
Regarding claim 133, Hinchliffe discloses the attachment of claim 125. Hinchliffe further discloses in which the detecting means comprises a detecting probe (888) terminating in a distal, instrument engaging end (see fig. 32b), the detecting means being engageable with the operating means (see fig. 31) for urging the operating means from the disengaged state to the engagement state, as the detecting means is being urged from the first state to the second state (col. 19 lines 30-44).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRIGID K BYRD whose telephone number is (571)272-7698. The examiner can normally be reached Mon-Fri 8:00-5:00.
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/BRIGID K BYRD/Examiner, Art Unit 3771
