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 .
Response to Amendment
This Office Action is a response to applicant’s arguments and amendment filed 12/09/2025. Claims 121, 124-128, 130-135, 137 and 139 are amended. Claims 1-120, 122-123, 129, 138 and 140 are cancelled. Claims 141-146 are new. Claims 121, 124-128, 130-137, 139 and 141-146 are currently pending, with claim 136 withdrawn from consideration.
The objection of claims 137 and 139 has been withdrawn due to applicant’s amendment.
The rejection of claims 122-135, 137 and 140 under 35 U.S.C. 112(b) has been withdrawn due to applicant’s amendment.
Response to Arguments
Applicant’s arguments, see Remarks, filed 12/09/2025, with respect to the rejection(s) of claim(s) 121-135 and 137-140 under 35 U.S.C. 102(a)(1) as being anticipated by Gerrone, have been fully considered and are persuasive, in combination with the amendments to the claims. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Hinchliffe as discussed below.
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 § 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, 130-135, 137, 139 and 141-146 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hinchliffe (US 5657963).
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).
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 134, Hinchliffe discloses the attachment of claim 121. Hinchliffe further discloses in which a sealing means (644, col. 14 lines 49-61) is located in the instrument passageway for sealably engaging an instrument in the instrument passageway for minimising the passage of gases passing proximally through the instrument passageway (col. 14 lines 49-61; fig. 21), the sealing means being located adjacent a proximal end of the instrument passageway (fig. 21) and being spaced apart proximally from the detecting means (considered to be spaced apart in a proximal direction as door assembly 621 is proximal of 644, fig. 21).
Regarding claim 135, Hinchliffe discloses the attachment of claim 134. Hinchliffe further discloses in which the sealing means is operable from a non-sealing state disengaged from an instrument in the instrument passageway to a sealing state sealably engaging an instrument in the instrument passageway in response to movement of the operating means from the disengaged state to the engagement state (figs. 24-25).
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).
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
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 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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Darwin Erezo can be reached at (571)-272-4695. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BRIGID K BYRD/Examiner, Art Unit 3771