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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 February 1st 2026 has been entered.
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 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. Claim 2 recites the limitation "said linkage shaft" in line 2. There is insufficient antecedent basis for this limitation in the claim. Claim 3 is rejected due to its dependence from claim 2.
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.
The factual inquiries 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 non-obviousness.
Claims 1, 4, 5 and 7-10 are rejected under 35 U.S.C. 103 as being unpatentable over Bayer et al. (US 2008/0033450; hereinafter “Bayer”) in view of McKinley et al. (US 2014/0107417; hereinafter “McKinley”) and Chang et al. (US 6,527,704; hereinafter “Chang”).
Regarding claim 1, Bayer discloses a trocar assembly (Figures 1, 3 and 19) comprising: a shaft (18) which extends from a housing (20) and which comprises a distal tip (116); an imaging device manipulator (“externally controlled mechanism” - ¶[0094]) coupled to, and operative to move, an imaging device (70) located at a distal portion of said shaft (noting that Applicant’s imaging device is on a separate shaft movable within the claimed shaft and not fixedly coupled to the claimed shaft; as with Bayer et al., Applicant’s imaging device is “at” a distal portion of the claimed shaft by being next to or adjacent to the distal end of the claimed shaft); and an illumination source (¶[0092]) configured to generate light through a light guide, wherein the shaft defines the light guide (fiber optic bundles, ¶[0092], carry light through the shaft or light guide) towards said imaging device (the assembly can have imaging devices on both the shaft 18 and the trocar 14 - Abstract; light from the shaft's imaging device could be directed toward the imaging device of the trocar).
Bayer fails to specifically disclose that the imaging device manipulator is disposed in the housing. Bayer discloses that the externally controlled mechanism should used to cause the imaging device to pivot.
McKinley discloses an imaging device manipulator (701/702) for pivoting a similar imaging device (204/304) and which is disposed in a housing (108; Figures 1, 2 and 7A).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have provided the imaging device manipulator of McKinley on/in the housing of Bayer et al. as a suitable prior art mechanism for controlling the pivoting motion of the imaging device.
Bayer fails to disclose that the shaft is made from an optically transparent material.
Chang teaches that it is well-known in the art to make shafts (25; Figure 2B) very similar to the shaft Bayer from optically transparent material (col. 3, lines 39-42).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention and in view of Chang to have made the shaft of Bayer from an optically transparent material in order to take advantage of this well-known property used for similar shafts. One skilled in the art would also realize that the optically transparent shaft would provide additional benefits such as allowing inspection of its internal contents (e.g. contamination, position of the trocar, etc.) during a procedure.
Regarding claim 4, Bayer discloses that the imaging device is pivotable with respect to the longitudinal axis (¶[0094]) of the shaft but fails to specifically disclose that the imaging device is rotatable about a longitudinal axis of the shaft. Bayer intends to image a surgical site from multiple views (¶[0088], [0094]).
McKinley discloses making a similar trocar shaft (110) rotatable about its longitudinal axis in order to provide additional fields of view (¶[0049]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention and in view of McKinley to have made the trocar shaft (46) of Bayer rotatable about its axis and therefore the longitudinal axis of the shaft in order to allow additional fields of view and/or viewing angles of the surgical site.
Regarding claim 5, the pivoting motion of the imaging device discloses by Bayer can be regarded as a translational movement.
Regarding claim 7, a distal end of the light guide is beveled (Figures 3 and 17 of Bayer).
Regarding claim 8, the imaging device has a side looking field of view (¶[0094] of Bayer).
Regarding claim 9, the imaging device has a forward-looking field of view (¶[0094] of Bayer).
Regarding claim 10, the trocar assembly further comprises communication components (74 or
80; ¶[0068] of Bayer et al.).
Response to Arguments
Applicant’s arguments with respect to the pending claims have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Thomas McEvoy whose telephone number is (571) 270-5034 and direct fax number is (571) 270-6034. The examiner can normally be reached on Monday-Friday, 9:00 am – 6:00 pm.
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/THOMAS MCEVOY/Primary Examiner, Art Unit 3771