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 .
Election/Restrictions
Applicant’s election without traverse of Invention I (Claims 1-11) in the reply filed on 1-22-2026 is acknowledged.
Claims 12-19 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Invention (Invention B), there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 1-22-2026.
Claims 1-11 are examined in this action.
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 structure that allows the function of “a first pressure applied to the handle applies pressure to the cradle, and wherein a second pressure greater than the first pressure applies pressure to both the cradle and the clamping device,” in Claim 2, must be shown or the feature(s) canceled from the claim(s). The Examiner notes that the claims are apparatus claims and therefore, are claiming the structure of the device. The structure that allows this function to occur is not illustrated in the figures. 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.
Claim 2 is 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.
MPEP 2163A states: “An invention described solely in terms of a method of making and/or its function may lack written descriptive support where there is no described or art-recognized correlation between the disclosed function and the structure(s) responsible for the function.” Written description issues may also arise if the knowledge and level of skill in the art would not have permitted the ordinary artisan to immediately envisage the claimed product arising from the disclosed process. See, e.g., Fujikawa v. Wattanasin, 93 F.3d 1559, 1571, 39 USPQ2d 1895, 1905 (Fed. Cir. 1996).
Claim 2 is an apparatus claim requiring structure that performs two different functions. The first is “wherein a first pressure applied to the handle applies pressure to the cradle,” and the second function is “wherein a second pressure greater than the first pressure applies pressure to both the cradle and the clamping device.” The structure that performs these functions are not detailed in Applicant’s speciation or illustrated in Applicant’s Figures. One of ordinary skill in the art would not “immediately envisage” the structure that performs these functions upon review of Applicant’s disclosure. As such, Claim 2 is 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.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(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 2 and 3-5 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 the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
In re Claim 2, “wherein a first pressure applied to the handle applies pressure to the cradle, and wherein a second pressure greater than the first pressure applies pressure to both the cradle and the clamping device,” is indefinite. It is unclear what structure performs this function, as it is not described or discussed in the specification and does not appear to be illustrated in the figures. The claims were examined as best understood. Appropriate correction is required.
In re Claim 3, “an inner surface of the channel defines a profile that mirrors an outer profile of the cathlock,” is indefinite. The claim requires the profile of a cathlock to read on the claim; however, the workpiece (a cathlock) is not affirmatively claimed. The examiner suggests limiting the claim to describing the structure of the tool in and of itself. The claims were examined as best understood. Appropriate correction is required.
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 1, 3, 5 and 7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 5,611,146 to Decret.
In re Claim 1, Decret teaches a stabilization and trimming tool (see Figs. 1-3) for coupling a catheter to an access port (the Examiner notes that the claims are apparatus claims, an do not claim the workpiece) comprising:
a handle (see Figs. 1-3, #12) operatively coupled to a cradle (see Figs. 1-3, #10) and a clamping device (see Figs. 1-3, clamping member #34), wherein the cradle is designed to hold a cathlock (the structure of Decret is capable of holding the unclaimed workpiece, including a cathlock) and wherein the clamping device is designed to grip a catheter (see Figs. 1-3, clamping member #34 grips, i.e. contacts, the workpiece to secure the workpiece in position for cutting); and
a catheter cutting mechanism coupled to the handle (see Figs. 1-3, blade #24), wherein the catheter cutting mechanism is configured to be actuated following stabilization of the cathlock and the catheter by the handle (see Figs. 13-14, illustrating in Fig. 13, the workpiece stabilized and thereafter in Fig. 14, the workpiece being cut).
In re Claim 3, Decret teaches wherein the cradle defines a channel, an inner surface of the channel defines a profile that mirrors an outer profile of the cathlock (see annotated Fig. 2, below, showing the workpiece and the cradle being curved – the claims were examined a best understood)
PNG
media_image1.png
346
394
media_image1.png
Greyscale
In re Claim 5, Decret teaches wherein the inner surface of the channel defines a stepped portion (see Fig. 3, receiving surfaces #52/54 are spaced from one another an form a stepped/slot portion) configured to abut against a stepped portion of the cathlock.
In re Claim 7, Decret teaches wherein the catheter cutting mechanism is actuated by an actuator (see Fig. 1, switch #22).
Claims 1-2 and 4 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2009/0158597 to Braga.
In re Claim 1, Braga teaches a stabilization and trimming tool (see Figs. 1-6) for coupling a catheter to an access port (the Examiner notes that the claims are apparatus claims, an do not claim the workpiece) comprising:
a handle (see Figs. 1-6, #114/112) operatively coupled to a cradle (see Figs. 1-6, #124/126) and a clamping device (see Figs. 1-6, #128/128), wherein the cradle is designed to hold a cathlock (the structure of Braga is capable of holding the unclaimed workpiece, including a cathlock) and wherein the clamping device is designed to grip a catheter (see Figs. 1-3, #128/128 contacts the workpiece to secure the workpiece in position for cutting); and
a catheter cutting mechanism coupled to the handle (see Figs. 1-3, #138/140), wherein the catheter cutting mechanism is configured to be actuated following stabilization of the cathlock and the catheter by the handle (see Para. 0055, teaching the user securing the workpiece and then cutting the workpiece).
In re Claim 2, Braga teaches wherein a first pressure applied to the handle applies pressure to the cradle (the user first moves the handles toward each other in the structure of Braga), and wherein a second pressure greater than the first pressure applies pressure to both the cradle and the clamping device (The user then applies a force or pressure to #138 – see Para. 0054-0055). The Examiner notes that the pressure to cut a medical tube is greater than the pressure to clamp it.
In re Claim 4, Braga teaches wherein the inner surface of the channel defines a tapered shape (see Para. 0051, stating : Tube support mounts 128 define recesses or indentations having semi-circular cross-sectional areas. Other configurations and cross-sections, such as oval, conical or tapered are also envisioned).
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.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over US 5,611,146 to Decret in view of US 2,340,316 to Fest.
In re Claim 6, Decret does not teach wherein the clamping device includes a pair of clamping members covered by a rubber or silicone material.
However, Fest teaches that it is known in the art of gripping objects to provide clamping structure covered in rubber (see Fest, Col. 2, ll. 1-8). In the same field of invention, structures for gripping/securing objects, it would have been obvious to one of ordinary skill in the art, at the earliest effective filing date, to add rubber to the clamping structure of Decret. Doings so provides a structure with a material which is sufficiently pliable to conform itself to objects of various shapes other than those with fiat surfaces, gripped between theme (see Fest, Col. 2, Ll. 1-8).
Claims 8-9 are rejected under 35 U.S.C. 103 as being unpatentable over US 5,611,146 to Decret in view of US 5,201,501 to Fassler.
In re Claim 8, Decret does not teach wherein the cradle includes a pair of jaws transitionable between an open position and a closed position, the jaws configured to retain the cathlock within the cradle in the closed position.
However, Fassler teaches that it is known in the art of securing circular objects to provide a clamp (see Figs. 1-4b) that includes a pair of jaws transitionable between an open position (see e.g., Fig. 4a) and a closed position (see e.g. Fig. 4b), the jaws configured to retain the cathlock within the cradle in the closed position (the jaws of Fassler are configured to retain any circular object in a closed position).
In the same field of invention, structures that secure circular objects or objects with a circular cross-section, it would have been obvious to one of ordinary skill in the art, at the earliest effective filing date, to replace the single clamping member of Decret with the clamping structure of Fassler. Doing so is the substation of one known clamping structure for another known clamping structure to secure the object in position (see MPEP 2143, I, b).
In re Claim 9, modified Decret, in re Claim 8, teaches wherein a first jaw of the pair of jaws is rotatably coupled to a first edge of the cradle (see Fassler, Figs. 1-4b, one arm is pivotally connected at #7) and a second jaw of the pair of jaws is rotatably coupled to a second edge of the cradle (see Fassler, Figs. 1-4b, the other arm is pivotally connected at the other #7).
In re Claim 10, Decret teaches wherein the cradle defines a channel; however, Decret does not teach a pair of grips transitionable between a retracted position and an extended position, the grips configured to retain the cathlock within the cradle in the extended position.
However, Fassler teaches that it is known in the gripping art to provide a pair of grips (see Fassler, Figs. 1-4b, #13a and #13b) transitionable between a retracted position (see Fassler, Fig. 1) and an extended position (see Fassler, Fig. 2), the grips configured to retain the cathlock within the cradle in the extended position (see Fassler, Figs. 1-4b).
In the same field of invention, structures that secure circular objects or objects with a circular cross-section, it would have been obvious to one of ordinary skill in the art, at the earliest effective filing date, to replace the single clamping member of Decret with the clamping structure of Fassler. Doing so is the substation of one known clamping structure for another known clamping structure to secure the object in position (see MPEP 2143, I, b).
In re Claim 11, modified Decret, in re Claim 10, teaches wherein the pair of grips are slidably engaged with the cradle along an axis extending perpendicular to an axis of the channel (see Figs. 1-4b, #13a/b, moving along the axis #16 which extends perpendicular to an axis of the workpiece/channel).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JONATHAN RILEY whose telephone number is (571)270-7786. The examiner can normally be reached Monday - Friday, 8:30 AM - 5:00 PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JONATHAN G RILEY/Primary Examiner, Art Unit 3724
Prosecution Insights