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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 02/23/2026 has been entered.
Response to Arguments
Applicant's arguments filed 02/23/2026 have been fully considered but they are not persuasive. Examiner notes that the amendments filed on 02/23/2026 are broader that the distinguishing features which were discussed in the examiners interview on 02/20/2026 are insufficient to overcome the prior art in view of Oko. Applicant argues on page 7 that the coupling means of Oko is disclosed as being coupled to the first and second jaw simultaneously and therefore does not meet the limitation of “coupling the mounting device to the first or second jaw”. It is the examiners position that “to the first or second jaw” does not necessarily exclude the condition where the mounting device is coupled to both jaws simultaneously. The language “first or second jaw” requires the mounting device to be coupled to at least one of the first or second jaws but not only to the first or second jaw as discussed in the interview. Examiner further notes that the surgical instrument is only recited in the preamble of the claim as an intended use of the device and therefore an explicit teaching of the coupling means being connected to a first or second jaw is not required in order to meet the limitation of the claim. Oko teaches a coupling means of a mounting device having a projection/flange which is at least capable of being received within an opening of a first or second jaw of at least some surgical instrument and therefore satisfies the requirements of the claim.
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) 1-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Oko et al. (US 2013/0018388).
Regarding claim 1, Oko et al. discloses a mounting device (717, FIGs 43-51, [0144-0161]) for releasably coupling a detector (715, [0147]) to a surgical instrument (719, FIG 51) of the type comprising first and second jaws (737, 739, [0155]) displaceably mounted with respect to each other ([0155]. Examiner notes that the detector and surgical instrument are not positively recited elements of the claim, but exemplary elements in the device of Oko have been pointed out in order to illustrate that the mounting device is at least configured for use in the claimed manner), each jaw comprising a grasping surface (Inner surface of the jaws) for grasping subject tissue in a grasping region defined between the jaws (Space between the jaws which receives grasped tissue. Examiner notes that instrument 719 is not the only instrument that the mounting device of Oko is capable of being used with and that other configurations of jaws attachable to the mounting device are possible), the mounting device comprising: detector mounting means (774, 776, 777) configured for releasable mounting and retention of a detector ([0148-0154], FIG 43); and coupling means (723, 725) configured for releasably coupling the mounting device to the first jaw or second jaw of the surgical instrument to position the mounting device outside the grasping region (FIG 51, [0154-0160] shows that the coupling means is capable of attaching to at least one of the jaws. However, examiner notes that securing member 725 is capable of being received in an opening of only a single jaw of at least some instrument not explicitly shown by Oko, due to the surgical instrument not being a positively recited element of the claim).
Regarding claim 2, Oko et al. discloses the detector mounting means is configured to be a releasable interference fit with the detector ([0149-0151]).
Regarding claim 3, Oko et al. discloses the detector mounting means comprises a recess (Space between 776, 777 shown in FIG 46) for receipt of the detector (FIGs 43, 44, 51, [0149-0151]).
Regarding claim 4, Oko et al. discloses the recess for receipt of the detector is elongate (Space between 776, 777 shown in FIG 46, the recess is elongate, see FIG 51. FIGs 43, 44, 51, [0149-0151]).
Regarding claim 5, Oko et al. discloses the recess is defined by two spaced apart side walls (Side walls 776, 777, FIG 46)
Regarding claim 6, Oko et al. discloses the side walls are elongate (FIGs 43, 44, 50, 51 show the side walls are elongate).
Regarding claim 7, Oko et al. discloses the side walls are substantially parallel (FIGs 43, 44, 46, 50, 51 show the side walls are substantially parallel).
Regarding claim 8, Oko et al. discloses the side walls are resiliently deformable to permit the detector to be inserted into the recess and retained in the recess by the side walls ([0151]).
Regarding claim 9, Oko et al. discloses the detector mounting means is configured to receive the detector as a press fit ([0151]).
Regarding claim 10, Oko et al. discloses the coupling means is configured for releasably coupling the mounting device to an outer surface of one of the first and second jaws of the surgical instrument (The shape of 725 is such that it can be received within an opening on an outer surface of a jaw of at least some surgical instrument).
Regarding claim 11, Oko et al. discloses a portion of the coupling means (736, 738, FIG 46) is shaped to be an interference fit with a portion of one of the first and second jaws of the surgical instrument (The projecting flanges 736, 738 are sized and shaped such that they can be received via interference fit within a cavity of at least some jaw of a surgical instrument).
Regarding claim 12, Oko et al. discloses a portion of the coupling means is shaped to fit with a complementarily-shaped portion of one of the first and second jaws of the surgical instrument (FIG 51, [0155]; 736 of 725 is shaped to fit within slots 741 of the jaws of the grasper. However, it is also possible for a portion of the coupling means to fit within an opening of a complementary shape and size on at least some other surgical instrument as well).
Regarding claim 13, Oko et al. discloses the coupling means comprises a projection (FIG 46, 736, 738 are projections) which is shaped to fit with a complementarily shaped portion of one of the first and second jaws of the surgical instrument (FIG 51, [0155]; it is also possible for a projection of the coupling means to fit within an opening of a complementary shape and size on at least some other surgical instrument as well).
Regarding claim 14, Oko et al. discloses the projection is elongate (FIG 45 and 51 show the projection is elongate).
Regarding claim 15, Oko et al. discloses the projection is located between two side walls of the detector mounting means (FIG 46 show the projection is positioned between the side walls relative to a vertical axis of the mounting device as viewed in FIG 46).
Regarding claim 16, Oko et al. discloses the surgical instrument comprises (Examiner notes that as written, the claim still does not positively recite the surgical instrument, therefore the following limitations are interpreted as further defining an intended sue of the device) a pair of forceps (FIG 51, [0155]) and a portion of the coupling means is shaped to fit with a complementarily- shaped portion of one of the first and second jaws (736, 738 of 725 is shaped to fit within slots 741, 743 of the jaws of the grasper).
Regarding claim 17, Oko et al. discloses wherein the coupling means further comprises one or more portions shaped to facilitate gripping by the surgical instrument (FIG 51, [0155]; 736, 738 of 725 is shaped to fit within slots 741, 743 of the jaws of the grasper. The projections are interpreted as being a portion shaped to facilitate gripping by the surgical instrument. Further, the recesses shown below in FIG 46 receive at least a bottom section of each jaw).
Regarding claim 18, Oko et al. discloses the surgical instrument comprises (Examiner notes that as written, the claim still does not positively recite the surgical instrument, therefore the following limitations are interpreted as further defining an intended sue of the device) a pair of forceps (FIG 51, [0155]) and the coupling means comprises one or more portions complementarily shaped with one of the first and second jaws of the pair of forceps (The projections are complementarily shaped with the slots of the jaws and are at least configured to be complementarily shaped for another pair of forceps as well).
Regarding claim 19, Oko et al. discloses the coupling means comprises one or more recesses for receipt of a portion of one of the first and second jaws of the pair of forceps (See annotated FIG 46 below which demonstrates recesses that receive at least a bottom section of each jaw).
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Regarding claim 20, Oko et al. discloses the or each shaped portion is located in a side wall of the detector mounting means (The recesses shown above in FIG 46 are made up at least partly of the top sections of the sidewalls).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BROOKE N LABRANCHE whose telephone number is (571)272-9775. The examiner can normally be reached M-F 8-5.
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, Elizabeth Houston can be reached at 5712727134. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BROOKE LABRANCHE/Primary Examiner, Art Unit 3771