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 .
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 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 and 11-12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tulleken (US Pub No. 2014/0364882).
Regarding claim 1, Tulleken discloses (Figures 3A-3B) a clip that is fully capable in being used as an endoscopic treatment portion traction member that is gripped by forceps to be inserted into an endoscope and then inserted into a body, and is fixed to a tissue to be resected and pulls the tissue from a surrounding tissue, the clip comprising: an annular body (see annotated figure below); and, an outer tongue (see annotated figure below) provided in a peripheral portion of the annular body and adapted to be gripped by the forceps [Since Tulleken discloses all of the structural elements in the same arrangement as claimed, then Tulleken’s clip is fully capable in being used as an endoscopic treatment portion traction member that is gripped by forceps to be inserted into an endoscope and then inserted into a body, and is fixed to a tissue to be resected and also, having an outer tongue adapted to be gripped by forceps].
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Regarding claim 2, wherein the outer tongue is provided at one location in the peripheral portion of the annular body (clearly shown in the annotated figure above).
Regarding claim 3, wherein the outer tongue has a tapered portion (see annotated figure below).
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[AltContent: textbox (Tapered portion of outer tongue)][AltContent: connector]
Regarding claim 11, wherein when the endoscopic treatment portion traction member is fixed to the tissue to be resected, the endoscopic treatment portion traction member is suspended via a clip secured to the tissue to be resected [Fully capable in doing this since Tulleken’s discloses all of the structural elements in the same arrangement as claimed. The examiner wants to note that the clip is not positively recited in the claim and is only functionally recited].
Regarding claim 12, wherein the outer tongue has a tapered portion (see annotated figure below for claim 3).
Claims 1, 4 and 10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sibbitt (US Pub No. 2007/0049967).
Regarding claim 1, Sibbitt discloses (Figures 1-3B) a clip that is fully capable in being used as an endoscopic treatment portion traction member that is gripped by forceps to be inserted into an endoscope and then inserted into a body, and is fixed to a tissue to be resected and pulls the tissue from a surrounding tissue, the clip comprising: an annular body (103); and, an outer tongue (104) provided in a peripheral portion of the annular body and adapted to be gripped by the forceps [Since Sibbitt discloses all of the structural elements in the same arrangement as claimed, then Sibbitt’s clip is fully capable in being used as an endoscopic treatment portion traction member that is gripped by forceps to be inserted into an endoscope and then inserted into a body, and is fixed to a tissue to be resected and also, having an outer tongue adapted to be gripped by forceps].
Regarding claim 4, wherein a tip end of the outer tongue is chamfered in a circular arc (Paragraph 0028) (clearly shown in Figures 1a-1b).
Regarding claim 10, wherein the outer tongue is formed with a tongue pore (space inside the loop 104).
Claims 1 and 8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Raybin (US Pub No. 2014/0379004).
Regarding claim 1, Raybin discloses (Figure 9) a clip (302) that is fully capable in being used as an endoscopic treatment portion traction member that is gripped by forceps to be inserted into an endoscope and then inserted into a body, and is fixed to a tissue to be resected and pulls the tissue from a surrounding tissue, the clip comprising: an annular body (see annotated figure below); and, an outer tongue (see annotated figure below) provided in a peripheral portion of the annular body and adapted to be gripped by the forceps [Since Raybin discloses all of the structural elements in the same arrangement as claimed, then Raybin’s clip is fully capable in being used as an endoscopic treatment portion traction member that is gripped by forceps to be inserted into an endoscope and then inserted into a body, and is fixed to a tissue to be resected and also, having an outer tongue adapted to be gripped by forceps].
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Regarding claim 8, wherein an inner tongue (see annotated figure above) is provided on an inner circumferential portion of the annular body opposite the outer tongue (clearly shown in the annotated figure above).
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 of this title, 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.
Claims 5-7 are rejected under 35 U.S.C. 103 as being unpatentable over Tulleken (US Pub No. 2014/0364882) as applied to claim 1 above.
Regarding claim 5, Tulleken discloses the invention above including the annular body being circular (Figures 3A-3B) but fails to disclose a maximum length of the outer tongue is 1/10 to 6/10 of a diameter of the peripheral portion of the circular annular body.
Since Tulleken discloses in Paragraph 0091 that the clip can have different dimensions in order to fit the vessels intended to be attached, then it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have clip of Tulleken have a maximum length of the outer tongue to be 1/10 to 6/10 of a diameter of the peripheral portion of the circular annular body, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233 (MPEP 2144.05).
Regarding claim 6, Tulleken discloses the invention above except for the annular body being oval and a maximum length of the outer tongue is 1/10 to 3/10 of a minor axis length of the peripheral portion of the oval-shaped annular body.
Since Tulleken discloses in Paragraph 0091 that the annular body is circular but can have other shapes, then it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have annular body of Tulleken to be oval since such a modification would have involved a mere change in the shape of a component. A change in shape is generally recognized as being within the level of ordinary skill in the art. In re Dailey, 149 USPQ 47 (CCPA 1966).
Since Tulleken discloses in Paragraph 0091 that the clip can have different dimensions in order to fit the vessels intended to be attached, then it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have clip of Tulleken have a maximum length of the outer tongue to be 1/10 to 3/10 of a minor axis length of the peripheral portion of the oval-shaped annular body, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233 (MPEP 2144.05).
Regarding claim 7, Tulleken discloses the invention above including the annular body being circular (Figures 3A-3B) but fails to disclose a diameter of the peripheral portion of the annular body is 5 to 30 mm.
Since Tulleken discloses in Paragraph 0091 that the clip can have different dimensions in order to fit the vessels intended to be attached, then it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have clip of Tulleken have a diameter of the peripheral portion of the annular body to be 5 to 30 mm, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233 (MPEP 2144.05).
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Tulleken (US Pub No. 2014/0364882) as applied to claim 1 above, and further in view of Sato (US Pub No. 2022/0096088).
Regarding claim 9, Tulleken discloses the invention above except for wherein the endoscopic treatment portion traction member is formed from elastic resin.
Sato, in the analogous art of surgical clips, teaches (Figure 1) a clip (10) formed from elastic resin (Paragraphs 0010 and 0046). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the clip of Tulleken to have been formed from elastic resin as taught by Sato since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MAJID JAMIALAHMADI whose telephone number is (571) 270-0172. The examiner can normally be reached on Monday-Friday 7am-5pm EST.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Darwin Erezo can be reached on (571) 272-4695. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MAJID JAMIALAHMADI/ Primary Examiner, Art Unit 3771