DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. 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
2. Applicant’s Amendment filed April 28, 2026 (hereinafter “04/28/26 Amendment") has been entered, and fully considered. In the 04/28/26 Amendment, claims 9, 14, 21, 22, & 23 were amended. No claims were cancelled (claims 4, 12, & 16 were previously cancelled) or newly added. Accordingly, claims 1-3, 5-11, 13-15, & 17-23 remain pending in the application.
3. The 04/28/26 Amendment has overcome the claim objections previously set forth in the Non-Final Office Action mailed 01/14/26 (“01/14/26 Action”).
4. The prior rejections under §§ 102 & 103 have been maintained.
5. Applicant's arguments are addressed in detail below in the “Response to Arguments” section.
Claim Rejections - 35 USC § 102
6. 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.
7. Claims 1-3, 5, 6, 9, 14, 15, & 18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. Patent Application Publication No. 2013/0190575 to Mast et al. (“Mast”).
8. Regarding claim 1, and with reference to FIG. 4 of Mast (provided below), Mast discloses a connection device for a surgical instrument [(100)], comprising:
a housing [core (410) - ¶[0032]; FIG. 4] having a tubular configuration [core (410) is tubular - FIG. 4], the housing tubular configuration extending to a housing distal end [the entirety of core (410) is tubular - FIG. 4];
a head part [collar (416) - ¶[0032]; FIG. 4] having a tubular configuration [collar (416) is tubular - FIG. 4];
a head part coupling, which is arranged at the housing and is configured for a mechanical coupling of the head part [(416)] to the housing [(410)] distal end, wherein the head part coupling comprises a pin element [any of pins (412) - ¶[0032]; FIG. 4], which is configured to non-displaceably fix the head part [(416)] to the housing [(410)], and a weld seam, wherein the pin element [(412)] is fixed non-detachably to the housing [(410)] via the weld seam and the fixed pin element non-displaceably fixes the tubular configuration of the head part [(416)] to the tubular configuration of the housing [(410)] [see ¶[0032] (“Collar 416 is coupled to core 410. In one embodiment, pins 412 couple collar 416 to core 410 and are welded or otherwise affixed in place”); see also FIGS. 5A-5B].
PNG
media_image1.png
302
392
media_image1.png
Greyscale
9. Regarding claim 2, Mast discloses all of the limitations of claim 1 for the reasons set forth in detail (above) in the Office Action.
Mast further discloses wherein the pin element [(412)] extends through the housing [(410)] through a hole and meshes with a formation [hole] in the head part [(416)] [see ¶[0032]; FIG. 4].
10. Regarding claim 3, Mast discloses all of the limitations of claim 1 for the reasons set forth in detail (above) in the Office Action.
Mast further discloses wherein the pin element connects the head part to the housing with a positive-locking connection [NOTE: pin (412) extends transversely to a longitudinal axis of housing (401) (FIG. 4); this configuration is consistent with Applicant’s description of the connection in the Specification - see, e.g., Applicant’s published Specification (U.S. 2023/0181249) at ¶[0031] (“According to a preferred embodiment the pin element may be oriented transversely to a longitudinal axis of the housing. A positive-locking connection is advantageously possible in this manner, since the pin element is oriented transversely to a loading direction during an insertion or a removal of the surgical instrument into or out of the body region”)].
11. Regarding claim 5, Mast discloses all of the limitations of claim 1 for the reasons set forth in detail (above) in the Office Action.
Mast further discloses wherein the head part [(416)] is configured to guide an accessory through the head part [(416)] [¶[0033] - broadly, the mechanism allowing the retractor arms to be opened and closed].
12. Regarding claim 6, Mast discloses all of the limitations of claim 1 for the reasons set forth in detail (above) in the Office Action.
Mast further discloses wherein the pin element [(412)] is oriented transversely to a longitudinal axis of the housing [(410)] [clearly shown in FIG. 4].
13. Regarding claim 9, Mast discloses a surgical instrument comprising:
a connection device comprising:
a housing [core (410) - ¶[0032]; FIG. 4] having a tubular configuration [core (410) is tubular - FIG. 4], the housing extending to a housing distal end [the distal end of core (410)];
a head part [collar (416) - ¶[0032]; FIG. 4] having a tubular configuration [collar (416) is tubular - FIG. 4];
a head part coupling, which is arranged at the housing and is configured for a mechanical coupling of the head part [(416)] to the housing [(410)] distal end, wherein the head part coupling comprises a pin element [any of pins (412) - ¶[0032]; FIG. 4], which is configured to non-displaceably fix the head part [(416) to the housing [(410)], and a weld seam, wherein the pin element [(412)] is fixed non-detachably to the housing [(410)] via the weld seam and the fixed pin element [(412)] non-displaceably fixes the tubular configuration of the head part [(416)] to the tubular configuration of the housing [(410)] [see ¶[0032] (“Collar 416 is coupled to core 410. In one embodiment, pins 412 couple collar 416 to core 410 and are welded or otherwise affixed in place”); see also FIGS. 5A-5B]; and
an accessory, which is configured to be guided through the tubular configuration of the head part [(416)] [¶[0033] - broadly, the mechanism allowing the retractor arms to be opened and closed].
14. Regarding claim 14, Mast discloses all of the limitations of claim 9 for the reasons set forth in detail (above) in the Office Action.
Mast further discloses wherein the pin element [(412)] extends through the housing [(410)] through a hole and meshes with a formation [hole] of the head part [(416)] [see ¶[0032]; FIG. 4].
15. Regarding claim 15, Mast discloses all of the limitations of claim 9 for the reasons set forth in detail (above) in the Office Action.
Mast further discloses wherein the pin element connects the head part to the housing with a positive-locking connection [NOTE: pin (412) extends transversely to a longitudinal axis of housing (401) (FIG. 4); this configuration is consistent with Applicant’s description of the connection in the Specification - see, e.g., Applicant’s published Specification (U.S. 2023/0181249) at ¶[0031] (“According to a preferred embodiment the pin element may be oriented transversely to a longitudinal axis of the housing. A positive-locking connection is advantageously possible in this manner, since the pin element is oriented transversely to a loading direction during an insertion or a removal of the surgical instrument into or out of the body region”)].
16. Regarding claim 18, Mast discloses all of the limitations of claim 9 for the reasons set forth in detail (above) in the Office Action.
Mast further discloses wherein the pin element [(412)] is oriented transversely to a longitudinal axis of the housing [(410)] [clearly shown in FIG. 4].
Claim Rejections - 35 USC § 103
17. 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.
18. The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
19. Claims 7 & 19 are rejected under 35 U.S.C. 103 as being unpatentable over Mast in view of U.S. Patent Application Publication No. 2018/0344304 to Lindenmann et al. ("Lindenmann").
20. Regarding claims 7 & 19, Mast discloses all of the limitations of claims 1 & 9, respectively, for the reasons set forth in detail (above) in the Office Action.
Mast does not, however, disclose:
[claim 7] wherein the head part contains ceramic or is made of ceramic.
[claim 19] wherein the head part comprises a ceramic.
Lindenmann, in a similar field of endeavor, relates to instrument couplings [Abstract], and teaches that ceramic was a known, art-recognized, exemplary material suitable for use in surgical applications [see ¶[0164] (“The devices disclosed herein can be constructed from any of a variety of known materials. Exemplary materials include those which are suitable for use in surgical applications, including metals such as stainless steel, titanium, nickel, cobalt-chromium, or alloys and combinations thereof, polymers such as PEEK, ceramics, carbon fiber, and so forth. The various components of the devices disclosed herein can be rigid or flexible”)].
It would have been obvious to one having ordinary skill in the art, before the effective filing date of the claimed invention, to modify Mast such that the head part contains ceramic or is made of ceramic, or comprises ceramic, since it has been held that the selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945).
21. Claims 8, 17 & 20 are rejected under 35 U.S.C. 103 as being unpatentable over Mast in view of U.S. Patent Application Publication No. 2016/0287322 to Solsberg et al. ("Solsberg”).
22. Regarding claims 8 & 20, Mast discloses all of the limitations of claims 1 & 9, respectively, for the reasons set forth in detail (above) in the Office Action.
23. Regarding claim 17, Mast discloses all of the limitations of claim 9 for the reasons set forth in detail (above) in the Office Action.
Mast does not, however, disclose:
[claims 8 & 20] wherein the connection device is configured for a resectoscope; and
[claim 17] wherein the accessory comprises a monopolarly and/or bipolarly operable accessory.
Solsberg, in a similar field of endeavor, teaches tools, kits, methods and systems to access the facet joint and to permit medical procedures to be performed in the vicinity of the facet joint [e.g., ¶[0012]]. More particularly, Solsberg teaches a multipurpose device that may function as a tissue resector, trocar, drill, access device, retractor, irrigator and/or RF ablation electrode [e.g., ¶[0082]].
It would have been obvious to one having ordinary skill in the art, before the effective filing date of the claimed invention, to modify Mast such that the device be configured for a resectoscope, and usable with RF ablation electrode, since such a modification would provide the benefit/advantage of allowing various applications to be performed by a single device during a procedure without having to stop a procedure to change devices, thereby facilitating the device for a provider, and decreasing an overall procedure time.
24. Claims 10, 11, & 13 are rejected under 35 U.S.C. 103 as being unpatentable over Mast in view of U.S. Patent Application Publication No. 2010/0198244 to Spivey et al. ("Spivey").
25. Regarding claim 10, Mast teaches a process for fixing a connection device, the process comprising the steps of:
providing the connection device, wherein the connection device comprises:
a housing [core (410) - ¶[0032]; FIG. 4] having a tubular configuration [core (410) is tubular - FIG. 4], the housing tubular configuration extending to a housing distal end [the entirety of core (410) is tubular - FIG. 4],
a head part [collar (416) - ¶[0032]; FIG. 4] having a tubular configuration [collar (416) is tubular - FIG. 4], and
a head part coupling which is arranged at the housing and is configured for a mechanical coupling of the head part [(416)] to the housing [(410)] distal end, wherein the head part coupling comprises a pin element [any of pins (412) - ¶[0032]; FIG. 4], which is configured to non-displaceably fix the housing [(410)] to the head part [(416)], and a weld seam, wherein the weld seam is configured to non-detachably fix the pin element [(412)] to the housing [(410)] via the weld seam [see ¶[0032] (“Collar 416 is coupled to core 410. In one embodiment, pins 412 couple collar 416 to core 410 and are welded or otherwise affixed in place”); see also FIGS. 5A-5B]; and
fixing the pin element [(412)] non-detachably to the housing [(410)] by the weld seam… such that the fixed pin element [(412)] non-displaceably fixes the tubular configuration of the head part [(416)] to the tubular configuration of the housing [(410) [¶[0032]].
LASER WELDING
While, as noted above, Mast teaches fixing the pin element [(412)] non-detachably to the housing [(410)] by means of welding [¶[0032]], Mast does not explicitly teach:
fixing the pin element [(412)] non-detachably to the housing [(410)] by the weld seam by a laser welding.
Spivey, in a similar field of endeavor, teaches that it was known to laser weld a fastener pin in place [see ¶[0045] (“In various embodiments, the fastener may comprise a pin welded to the blade members 108, 110 and/or clevis 112 at the pivot point. For example, the pin (not shown) may be laser welded”)].
It would have been obvious to one having ordinary skill in the art, before the effective filing date of the claimed invention, to modify Mast such that the pin element be non-detachably fixed to the housing by means of a laser welding, since such a particular known welding technique was recognized as part of the ordinary capabilities of one skilled in the art (as demonstrated by Spivey), and one of ordinary skill in the art would have been capable of applying this known welding technique to the known method of Mast (which likewise uses welding), and the results (attachment of the pin element to the housing) would have been entirely predictable to one of ordinary skill in the art. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398 (2007).
26. Regarding claim 11, the combination of Mast and Spivey teaches all of the limitations of claim 10 for the reasons set forth in detail (above) in the Office Action.
Mast further teaches configuring the pin and the head part such that the non-displaceable fixation of the housing to the head part is comprised by a positive-locking connection of the head part to the housing [NOTE: pin (412) extends transversely to a longitudinal axis of housing (401) (FIG. 4); this configuration is consistent with Applicant’s description of the connection in the Specification - see, e.g., Applicant’s published Specification (U.S. 2023/0181249) at ¶[0031] (“According to a preferred embodiment the pin element may be oriented transversely to a longitudinal axis of the housing. A positive-locking connection is advantageously possible in this manner, since the pin element is oriented transversely to a loading direction during an insertion or a removal of the surgical instrument into or out of the body region”)].
27. Regarding claim 13, the combination of Mast and Spivey teaches all of the limitations of claim 10 for the reasons set forth in detail (above) in the Office Action.
Mast further teaches wherein the tubular configuration of the head part [(416)] is configured to guide an accessory through the head part [(416)] [¶[0033] - broadly, the mechanism allowing the retractor arms to be opened and closed].
Allowable Subject Matter
28. Claims 21-23 are each objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
29. Claim 21, which depends from independent claim 1, further requires the limitations:
wherein the housing comprises a shaft of the surgical instrument,
wherein the head part contains ceramic or is made of ceramic and forms a distal head of the connection device and is configured to guide the surgical instrument through a section of a body of a patient,
wherein the tubular configuration of the housing and the tubular configuration of the head part engage with a tubular overlap, with the tubular configuration of the housing guided in the tubular configuration of the head part or the tubular configuration of the head part guided in the tubular configuration of the housing,
wherein the head part coupling is provided at the tubular overlap,
wherein with the tubular configuration of the head part guided in the tubular configuration of the housing, the housing has a through hole and the pin extends through the housing through hole to mesh with a formation in the head part or with the tubular configuration of the head part guided in the tubular configuration of the housing, the head part has a through hole and the pin extends through the head part through hole to mesh with a formation in the housing,
wherein the pin element is oriented transversely to a longitudinal axis of the housing, and
wherein the pin element connects the head part to the housing with a positive-locking connection.
Neither Mast, nor the other references of record, either alone or in combination, fairly teach or suggest the foregoing limitations, namely the head part forming a distal head of the connection device and being configured to guide the surgical instrument through a section of a body of a patient. As such, dependent claim 21 is patentable over the references of record.
30. Claim 22, which depends from independent claim 9, includes similar limitations to those of claim 21, and would therefore be allowable for the same reasons.
31. Claim 23, which depends from independent claim 10, includes similar limitations to those of claim 21, and would therefore be allowable for the same reasons.
Response to Arguments
32. As noted above, the 04/28/26 Amendment has overcome the claim objections previously set forth in the 01/14/26 Action. The prior rejections under §§ 102 & 103 have been maintained.
33. Applicant's arguments as set forth in the 04/28/26 Amendment [see “Remarks,” pgs. 10-18] have been fully considered, but they are not persuasive, as Applicant is improperly reading limitations into the claims. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
34. For example, as it concerns the “claimed” invention, Applicant argues as follows:
The claimed combination provides an improved connection device for a surgical instrument, and an improved surgical instrument and process for fixing the connection device, in which the connection between a housing and a head part is achieved by a specifically configured head part coupling including a pin element. The housing has a tubular configuration extending to a housing distal end and functions as a shaft of the surgical instrument, while the head part likewise has a tubular configuration and forms the frontal or distal element of the instrument ([0008], [0019], [0028], [0039]). … This configuration provides a stable and reliable connection between the shaft and the distal element that is not suggested by the prior art.
04/28/26 Amendment, pgs. 10-11, emphasis added.
Claim 1 requires only that the housing have a “tubular configuration.” Claim 1 does not require that the housing be (or function as) a “shaft,” as claim 1 fails to recite a “shaft” altogether. Rather, a tubular configuration simply means that a component has a hollow, cylindrical shape.
Additionally, nowhere does claim 1 require that the “head part” form a frontal or distal element of the instrument. In fact, claim 1 fails to even recite a “distal element.”
Respectfully, the terms “housing,” “head part,” “head part coupling,” and “pin element,” are quite broad, and have been interpreted accordingly herein.
35. In the Remarks, Applicant further argues:
In contrast, the claimed structure requires a housing configuration in which the pin element is fixed non-detachably to the housing via the weld seam. This may be positioned at an inner portion of the assembly, within an internal region defined by the surrounding head part. Mast does not disclose any such arrangement. Accordingly, Mast fails to disclose the claimed spatial arrangement of the weld seam relative to the housing structure.
04/28/26 Amendment, pgs. 11-12, emphasis added.
This argument is not persuasive as claim 1 requires only that the head part coupling be “configured for a mechanical coupling of the head part to the housing distal end.” Claim 1 does not, however, require that the head part be disposed within an interior of the distal end of the housing (as in Applicant’s FIG. 1). By contrast, as broadly as claimed, nothing precludes the housing distal end from being disposed within an interior of the head part, as in Mast.
As the rejection makes clear, in Mast, the housing comprises tubular core (410) which happens to be disposed within the head part [collar (416)]. While this may be opposite to the configuration disclosed by Applicant, nothing in the current claim language precludes this interpretation.
Applicant makes further characterizations of Mast that appear to disregard the current breadth of the claim language:
While Mast refers to components that may be "welded or otherwise affixed," this disclosure does not describe a weld seam specifically fixing a pin element to a housing, with this combination non-displaceably fixes the tubular configuration of the head part to the tubular configuration of the housing as recited.
04/28/26 Amendment, pg. 12, emphasis added.
Examiner disagrees with this assertion. The claimed “head part coupling” comprises a “pin element” and a “weld seam.” The claim merely requires that the head part coupling be “arranged at” the housing. The term “at” is defined as “a function word to indicate presence or occurrence in, on, or near” [see www.merriam-webster.com/dictionary/at?src=search-dict-box].
As broadly as claimed, in Mast, when pins (412) couple collar (416) to core (410), and are welded or otherwise affixed in place, the pin and weld seam are considered to be arranged “at” (“near”) the “housing” [core (410)], with the result being that the collar, core, and pins are non-displaceably fixed to one another.
For each of the foregoing reasons, which demonstrate that Applicant is improperly reading limitations into the claims, the rejections under §§ 102 & 103 have been maintained.
Conclusion
36. THIS ACTION IS MADE FINAL. 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.
37. Any inquiry concerning this communication or earlier communications from the Examiner should be directed to Bradford C. Blaise whose telephone number is (571) 272-5617. The Examiner can normally be reached on Monday - Friday, 8:30 AM - 4:30 PM MST.
If attempts to reach the Examiner by telephone are unsuccessful, the Examiner’s Supervisor, Joanne M. Rodden, can be reached at telephone number 303-297-4276. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from Patent Center. Status information for published applications may be obtained from Patent Center. Status information for unpublished applications is available through Patent Center to authorized users only. Should you have questions about access to the USPTO patent electronic filing system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/BRADFORD C. BLAISE/Primary Examiner, Art Unit 3794
Prosecution Insights