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 responsive to the amendment filed on 9/15/25. As directed by the amendment: claims 1, 2, 4, 8, 9, 11, and 12 have been amended, 6, 10, and 14 have been cancelled, and no new claims have been added. Thus, claims 1-5, 7-9, and 11-13 are presently pending in this application.
Applicant’s amendments to the specification are sufficient to overcome the objections to the specification and one of the drawing objections from the prior action. The other drawing objection is in maintained (see below).
Applicant’s amendments to the claims are sufficient to overcome the rejections under 35 U.S.C. 112(b) from the prior action.
Drawings
The drawings are objected to because the drawings are faded and/or blurry and/or contain extraneous markings, and therefor there is difficulty discerning/reproducing the detailed elements of the drawings. 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.
Claims 8 and 9 are 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. The recitation that type and/or material of the flexure determines flexibility, or that diameter of the rolled tubular shape determines flexibility is not supported by the disclosure as originally filed. At best, the disclosure appears to support that material, thickness, and diameter being some properties among a plurality of properties which can be altered to influence performance of the apparatus, not necessarily linked to any single property and not providing deterministic influence on any single property like flexibility. See the paragraph at the bottom of pg. 1 and top of pg. 2, and the paragraph at the bottom of pg. 3 and top of pg. 4.
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.
Claim(s) 12 and 13 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Vale (US 20220265963).
Regarding claim 12, Vale discloses an apparatus comprising a single piece stamped flexure (structure illustrated in fig. 4, which is a single piece as illustrated and fully capable of being formed by being stamped) formed from a material or alloy (fig. 4 inherently is formed from a material) and having spaced cutouts (gaps between elements 118) and repeating segments 118 connected with hinge portions (portions of either spine 126 that form a link between rings, see fig. 4), the repeating segments formed into rings connected by the narrow hinge portions (see fig. 4) and form a tubular shape (see fig. 4) having a seam 116 between abutting portions of the repeating segments (see fig. 4) that is fully capable of being formed by a process of rolling; the tubular shape forming a lumen 119 (par. 0043); wherein some spaced rings have inward extensions 117 adapted to guide cables and/or instruments within the lumen (noting that “inward” is not recited in reference to any particular structures, and therefore elements 117 are considered to extend inward towards the seam from/relative to the elements 118, and are fully capable of performing the claimed function as a part of the structure as a whole).
Regarding claim 13, Vale discloses the cutouts are clocked in different positions and the hinge portions are in different positions around the tubular shape for providing flexibility to the flexure (see fig. 4, circumferential positioning of elements varies from ring to ring, interpreted as “clocked at different positions”)
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1-5, 7-9, and 11-13 (claims 12 and 13 in the alternative) is/are rejected under 35 U.S.C. 103 as being unpatentable over Vale in view of Just et al. (US 20190030287).
Regarding claim 1, Vale discloses a single piece stamped flexure (structure illustrated in fig. 4, which is a single piece as illustrated and fully capable of being formed by being stamped) having spaced cutouts (gaps between elements 118) forming repeating segments 118 that are rolled into a tubular shape (see fig. 4) having a seam 116 and a lumen 119 (par. 0043), except for disclosing inward extensions disposed within the lumen and adapted for guiding and centering inserted cables and/or instruments. However, Just et al. teaches forming inward extensions for guiding/centering inserted cables (par. 0046; fig. 3E). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Vale to include inward extensions, as taught by Just et al., for the purpose of guiding and holding in place inserted cables (par. 0046).
Regarding claim 2, Vale discloses wherein the repeating segments form rings (see fig. 4, elements 118 are ring shaped) and hinges (portions of either spine 126 that form a link between rings) between the spaced cutouts when the flexure is rolled into a tubular shape (see fig. 4).
Regarding claim 3, Vale discloses the spaced cutouts are clocked at different positions in the single piece stamped flexure (see fig. 4, circumferential positioning of elements varies from ring to ring, interpreted as “clocked at different positions”).
Regarding claims 4, 5, and 7, the structure illustrated in fig. 4 of Vale inherently possesses a material/alloy, a thickness, and a diameter, and inherently possesses a flexibility, which is inherently influenced by one or more of material/alloy, thickness, and diameter. Furthermore, the structure illustrated in fig. 4 of Vale is fully capable of being altered by manufacturing techniques to achieve different functionalities, as claimed. The full disclosure and figures of this reference also illustrate alterations to various parameters of the structure in different embodiments.
Regarding claim 8, the flexure illustrated in fig. 4 of Vale is inherently composed of a material, with an inherent thickness in three dimensional space, which will both inherently affect the ultimate flexibility of the structure.
Regarding claim 9, the flexure illustrated in fig. 4 of Vale possesses diameters, both inner and outer diameters present at each element 118, and delineated in general through the length of the device by those elements.
Regarding claims 11, Just et al. further teaches the inward extensions are interposed between rings formed by the repeating segments (see fig. 3A, they are interposed between rings formed on either side of the inward extensions; alternatively, each inward extension is formed on an element that is interposed between other ringed elements of the device, see fig. 3A).
Regarding claim 12, in the alternative, Vale discloses an apparatus comprising a single piece stamped flexure (structure illustrated in fig. 4, which is a single piece as illustrated and fully capable of being formed by being stamped) formed from a material or alloy (fig. 4 inherently is formed from a material) and having spaced cutouts (gaps between elements 118) and repeating segments 118 connected with hinge portions (portions of either spine 126 that form a link between rings, see fig. 4), the repeating segments formed into rings connected by the narrow hinge portions (see fig. 4) and form a tubular shape (see fig. 4) having a seam 116 between abutting portions of the repeating segments (see fig. 4) that is fully capable of being formed by a process of rolling; the tubular shape forming a lumen 119 (par. 0043); except for disclosing some rings have inward extensions adapted to guide cables and/or instruments within the lumen (where the inward extensions are disposed within the lumen). However, Just et al. teaches forming inward extensions for guiding/centering inserted cables (par. 0046; fig. 3E). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Vale to include inward extensions, as taught by Just et al., for the purpose of guiding and holding in place inserted cables (par. 0046).
Regarding claim 13, in the alternative, Vale discloses the cutouts are clocked in different positions and the hinge portions are in different positions around the tubular shape for providing flexibility to the flexure (see fig. 4, circumferential positioning of elements varies from ring to ring, interpreted as “clocked at different positions”).
Response to Arguments
Applicant’s arguments filed 9/15/25, with respect to the rejection of independent claim 1 under 35 U.S.C. 102, in light of the amendments to claim 1 altering the scope of the independent claim and all its depending claims, have been fully considered and are persuasive. However, upon consideration of the amended claim, a new ground of rejection is made in view of Just et al. See rejections as presented above. However, these arguments are not considered persuasive with regards to independent claim 12, since independent claim 12, as amended, does not recite that the inward extensions are disposed within the lumen. See the rejection of claim 12 under 35 U.S.C. 102 above for further details.
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 NATHAN R PRICE whose telephone number is (571)270-5421. The examiner can normally be reached Mon-Fri 8:00am-4:00pm Eastern time.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Tsai can be reached at 571-270-5246. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NATHAN R PRICE/Primary Examiner, Art Unit 3783