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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 10/24/2025 has been entered.
Response to Amendment
As of the reply filed 10/24/2025, claims 1-6 are pending. Claims 1-2 have been amended.
Response to Arguments
Applicant's arguments filed 10/24/2025 have been fully considered but they are not persuasive.
With respect to Applicant’s argument that “Oren neither discloses nor fairly suggests any positive configuration for forming a spatial gap between the grasping surfaces of the upper and lower jaw units in the closed state, nor a configuration for forming a parallel gap between them” (see pages 5-8 of Remarks), the Examiner argues that the grasping jaws would be parallel when in the closed position (which is not explicitly shown in the figures), rather than suggesting that Fig. 2 plainly showed this feature of the device. Since the jaw 26 rotates relative to pins 30 and 28 to reach a closed position relative to jaw 24, and since at least a portion of the inner edge of 26 would be parallel to jaw 24 upon closure, the Oren et al. reference reads on these limitations. Additionally, the curved edge of 26 (see Fig. 2 and top jaw in Fig. 6) would create a gap relative to jaw 24 when the grasping jaws are in a closed position. Additionally, the amended language does not positively recite a spatial gap as referenced in the Applicant’s arguments, but only recites “a rotational position where a grasping surface of the upper jaw portion faces and is parallel to a grasping surface of the lower grasping portion in the counterclockwise direction,” which is much broader and does not implicitly require a spatial gap as argued. The “predetermined gap” as mentioned by the Applicant additionally was part of a limitation that was cancelled in the most recent reply, and is not positively recited.
Applicant further argues that “Oren lacks a link mechanism or other structure that produces the predetermined, parallel, non-zero gap as set forth in claim 1” (see Remarks page 7), however the Examiner argues that the specific structure of the link mechanism is not specified by the claim in such a way as to overcome the Oren reference.
Claim Objections
Claim 1 is objected to because of the following informalities:
Claim 1, line 22: “including second pins” is objected to because it appears to contain a mistake and should recite “including a second pin” instead.
Claim 1, lines 21, 24, 28, 35, and 39: limitations such as “in the clockwise” or “in the counterclockwise” are repeated throughout these lines, it is recommended that these limitations be amended to be grammatically correct and recite “in the clockwise direction”, “in the counterclockwise direction”, or “in both the clockwise and counterclockwise directions” instead.
Appropriate correction is required.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-3 and 5-6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Oren et al. (US Patent No. 5,906,629).
With respect to claim 1, Oren et al. discloses grasping forceps (see Fig. 1) comprising:
a cylindrical sheath (20);
a shaft (see operating rod 22 in Fig. 2) furnished inside the cylindrical sheath (20);
an operation unit (10 and 12 in Fig. 1) provided near a base end of the cylindrical sheath (20) and configured to slide the shaft (22) by converting rotating operation force applied to a handle (10) into an axial translation of the shaft (22) through a first pin (col. 3, lines 42-45: “an opening movement of handle 10 with relation to handle 12 results in a shift of operating rod 22 within shaft member 20 towards tip member 21”, see first pin 16); and
a grasping unit (21) including a lower grasping unit (24, 28, and end of 22) provided near a front end of the cylindrical sheath (20) and an upper grasping unit (26 and 30) disposed to face the lower grasping unit (24, 28, and end of 22), wherein:
the lower grasping unit (24, 28, and end of 22) has a planar shape (see Fig. 2, 24, 28, and the end of 22 all extend along a plane therefore they have a planar shape) extending toward a front end of the grasping unit (21 in Fig. 1) and includes a lower jaw portion (24 in Fig. 2) having, on a side facing the upper grasping unit (26 and 30), a grasping surface formed thereon (see grasping surface between 24 and 26);
the upper grasping unit (21) includes a rotation portion (body of 26 closer to 30) having a predetermined size and an upper jaw portion (remainder of 26 which grasps tissue);
the rotation portion (body of 26 closer to 30) is rotatably supported about an axis provided in a left-right direction perpendicular to a front-end direction of the lower grasping portion (the axis through 30 is perpendicular to 24) so as to be rotatable in both clockwise and counterclockwise (see Fig. 2, 26 actuates around 30 to rotate in these directions), and is connected to a front end of the shaft (20) through a link unit (see Fig. 2, the link unit includes 30, the proximal end of 26, and the distal end of 20, this link unit connects 26 to 20 via its connection to 24 and 22) including second pins (see pin 30);
the link unit (the link unit includes 30, the proximal end of 26, and the distal end of 20) restricts a range of rotation of the rotation portion (body of 26 closer to 30) in the clockwise and counterclockwise in accordance with a sliding movement of the shaft (22, the rotation range of the body of 26 is restricted via the surrounding components, see MPEP 2112.01);
the upper jaw portion (26) has a shape corresponding to that of the lower jaw portion (24, “corresponding to” is broad, 26 and 24 function to work together to grasp therefore their shapes correspond to one another), extends from a peripheral surface of the rotation portion (body of 26 closer to 30, the remainder of 26 extends from the body of 26) in the counterclockwise (26 extends in a counterclockwise direction when rotated), and has a grasping surface formed on an inner circumferential surface thereof (see inner curved surface of 26 which grasps); and
the range of rotation is between a closed state and an open state (col. 3, lines 42-46: “an opening movement of handle 10 with relation to handle 12 results in a shift of operating rod 22 within shaft member 20 towards tip member 21, which in turn results in opening movement of movable jaw 26 with relation to stationary jaw 24”),
wherein:
the closed state is a rotational position in which the grasping surface of the upper jaw portion faces and is parallel to the grasping surface of the lower jaw portion in the counterclockwise (see Fig. 2, 26 and 24 would be parallel when closed), and
the open state (demonstrated in Fig. 2) is a rotational position in which the grasping surface of the upper jaw portion is at a larger angle than the parallel position in the clockwise (see Fig. 2, the angle of 26 is larger than it would be in the closed position).
Regarding claim 2, Oren et al. further discloses wherein the first pin (16 in Fig. 1) in the closed state and in which the rotating operation force exceeds a predetermined force, regulates transmission of the rotating operation force (col. 4, lines 1-4: “Shear pin 16 is preferably designed to yield at about 60% of the stress which would damage the components of tip 21, and thus protects against overloading of tip 21”, see MPEP 2112.01, the pin 16 has this functionality regardless of) to the shaft (22).
Regarding claim 3, Oren et al. further discloses wherein:
the first pin (16 in Fig. 1) has a lower strength than the second pin (col. 4, lines 1-4: “Shear pin 16 is preferably designed to yield at about 60% of the stress which would damage the components of tip 21, and thus protects against overloading of tip 21”, since the first pin is designed to fail it has a lower strength than pin 28).
Regarding claim 5, Oren et al. further discloses wherein the link unit (28 and 30 in Fig. 2) openably and closably swings one of the upper and lower jaw units (24 and 26) to another (col. 3, lines 32-35: “movable jaw member 26 is preferably connected to stationary jaw member 24 by means of a first pivot 30, and to operating rod 22 by means of a second pivot 28”).
Regarding claim 6, Oren et al. further discloses wherein the grasping unit (21 in Fig. 1) is bent by a predetermined angle in an axial direction of the shaft (see Fig. 7 which shows various contemplated shaft bends).
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 nonobviousness.
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 4 is rejected under 35 U.S.C. 103 as being unpatentable over Oren et al. (US Patent No. 5,906,629) as applied to claims 1-3 above, which claim 4 depends from.
Regarding claim 4, Oren et al. fails to explicitly disclose wherein the first pin has a smaller diameter than the second pin.
It would have been prima facie obvious for one of ordinary skill in the art before the effective filing date to have modified the device of Oren et al. such that the first pin (16 in Fig. 1) has a smaller diameter than the second pin (28 in Fig. 2) because doing so would have been obvious to try. One of ordinary skill in the art could have pursued the finite number of known solutions (the pins are the same diameter, the first pin has a larger diameter, or the second pin has a larger diameter) with a reasonable expectation of success, particularly since Oren et al. already discloses that the first pin (16) is configured to break apart when placed under a predetermined amount of force (col. 4, lines 1-4: “Shear pin 16 is preferably designed to yield at about 60% of the stress which would damage the components of tip 21, and thus protects against overloading of tip 21”). One of ordinary skill in the art would have therefore recognized that a reduction in diameter would yield a lower breaking point as described by the disclosure, rendering it obvious to try a first pin with a reduced diameter.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Bridget E. Rabaglia whose telephone number is (571)272-2908. The examiner can normally be reached Monday - Thursday, 7am - 5pm.
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/BRIDGET E. RABAGLIA/Examiner, Art Unit 3771
/TAN-UYEN T HO/Supervisory Patent Examiner, Art Unit 3771