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 .
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 09/19/23 has been considered by the examiner.
Amendment Entered
In response to the amendment filed on November 17, 2025, amended claims 1 and 11 have been entered. Claims 2 and 12 have been cancelled
Response to Arguments
Applicant’s arguments and amendments filed with respect to the prior art rejections raised in the previous office action were fully considered, but were not persuasive. Applicant argues Hancock does not teach new limitation “when the scissor forceps are being transitioned to the second position the proximal ends of the engagement members extend through openings in the tube and outside of the tube”. Applicant further adds that Hancock does not include any teaching related to openings in the tube through which proximal ends of engagement members can pass so they are outside the tube. Examiner disagrees and notes that as the limitation is currently written, Hancock teaches all aspects of the amended claim. Hancock teaches the proximal ends of the scissor forceps move from inside the tube in a first position to outside the tube in a second position [fig. 8A, 8B; par. 74]. Therefore, this equates to when the scissor forceps are being transitioned to the second position the proximal ends of the engagement members extend through openings in the tube and outside of the tube, when taking into consideration broadest reasonable interpretation. Examiner suggests amending the claim to better reflect the proximal ends of the forceps and the particular openings to which the Applicant is referring to in Fig. 4 of the present Application.
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.
Claims 1, 3-7, 8-11, 13-17, 19 and 20 are rejected under 35 U.S.C. 102(a)(1)
as being anticipated by Hancock (U.S. Patent Application Publication 2019/0029751 A1)
Hancock was applied in Applicant’s IDS
Regarding claim 1, Hancock teaches a method for operating a catheter [par. 12, 13], comprising: sliding a scissor actuator [fig. 8A, 8B, element 300] in a first direction within a tube [fig. 8A, 8B, element 320] of the catheter; causing pushing forces to be applied to scissor forceps [fig. 8A, 8B, element 312a, 312b] as the scissor actuator slides in the first direction [fig. 8A, 8B; par. 71, 74]; using the pushing forces to transition the scissor forceps from a first position to a second position, the scissor forceps comprising a pair of pivotally coupled engagement members at least partially disposed within the tube at a distal end of the catheter, each engagement member comprising a free distal end and a proximal end coupled to the scissor actuator [fig. 8A, 8B, element 312a, 312b; par. 71, 74]; wherein when the scissor forceps are being transitioned to the second position the proximal ends of the engagement members extend through openings in the tube and outside of the tube [fig. 8A, 8B; par. 74]; sliding the scissor actuator in a second opposing direction within the tube of the catheter [fig. 8B; par. 74]; causing pulling forces to be applied to the scissor forceps as the scissor actuator slides in a second opposing direction; and using the pulling forces to transition scissor forceps back to the first position [par. 74]
Regarding claims 3 and 13, Hancock further teaches grasping or cutting tissue using teeth of the engagement members [fig. 8A, element 316; par. 71]
Regarding claims 4 and 14, Hancock further teaches holding a tissue sample in an interior cavity of at least one said engagement member [par. 71 “The pair of jaws 312a, 312b form a shell that encloses a volume for collecting a sample of biological tissue”]
Regarding claims 5 and 15, Hancock further teaches sliding at least one of a sensor, a fluid delivery device and a fluid removal device through an interior cavity of at least one of the scissor actuator and the scissor forceps [fig. 8A, 8B, element 238; par. 79; Examiner notes the sensor slides with the forceps].
Regarding claims 6 and 16, Hancock further teaches generating sensor data by a sensor at least partially disposed in at least one of the engagement members of the scissor forceps [fig. 8A, 8B, element 238; par. 79].
Regarding claims 7 and 17, Hancock further teaches applying heat or electrical current to tissue using one or more electrodes coupled to at least one of the engagement members of the scissor forceps [par. 16, 31, 71, 78]
Regarding claims 9 and 19, Hancock further teaches using the scissor actuator additionally to supply an electric current or power to at least one electronic component of the scissor actuator [par. 71-73].
Regarding claims 10 and 20, Hancock further teaches using plates respectively disposed in the engagement members to deliver electrical current to tissue [par. 71 “the layer of thermal insulation may be moulded first and have a layer of metallisation or plating formed thereon to provide the electrically conductive shell”].
Regarding claim 11, Hancock teaches a catheter [par. 12, 13], comprising: a tube [fig. 8A, 8B, element 320]; a scissor actuator [fig. 8A, 8B, element 300] slidingly disposed in the tube [par. 71, 74]; and a scissor forceps comprising a pair of pivotally coupled engagement members [fig. 8A, 8B, element 312a, 312b] at least partially disposed within the tube at a distal end of the catheter [par. 71, 74], each engagement member comprising a free distal end and a proximal end coupled to the scissor actuator [par. 74]; wherein the scissor actuator is configured to cause pushing forces to be applied to the scissor forceps when the scissor actuator slides within the tube in a first direction, and pulling forces to be applied to the scissor forceps when the scissor actuator slides within the tube in a second opposing direction [par. 71, 74]; wherein the pushing forces cause the scissor forceps to transition from a first position to a second position, and the pulling forces cause the scissor forceps to transition back to the first position [fig. 8A, 8B; par. 74]
Claim Rejections - 35 USC § 103
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 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 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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 8 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Hancock and in further view of Nakao (U.S. Patent Application Publication 2005/0049520 A1).
Nakao was applied in Applicant’s IDS
Regarding claims 8 and 18, Hancock teaches a method and device for operating a catheter, as disclosed above.
However, Hancock does not teach using a blade provided in an internal cavity of at least one of the engagement members to cut tissue.
Nakao teaches using a blade provided in an internal cavity of at least one of the engagement members to cut tissue [fig. 2, 3a, element 11; par. 63, 64]
Therefore, it would have been prima facie obvious to person having ordinary skill in the art when the invention was filed to modify Hancock to incorporate using a blade provided in an internal cavity of at least one of the engagement members to cut tissue, for controlling contact of the sample, as evidence by Nakao [par. 63]
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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GRACE ROZANSKI whose telephone number is (571)272-7067. The examiner can normally be reached M-F 8 AM - 5 PM.
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GRACE L ROZANSKI/
Examiner, Art Unit 3791
/ALEX M VALVIS/Supervisory Patent Examiner, Art Unit 3791