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
The amendments filed on 12/10/2025 have been entered. Claims 1 and 3-20 remain pending in the application. The amendments overcome every rejection under 35 USC 112(b) set forth in the previous rejection dated 09/11/2025.
Allowable Subject Matter
Claim 15 would be allowable if rewritten to include all of the limitations of the base claim and any intervening claims. The prior art fails to teach a subsurface tag holders that is pushable or insertable into the cut-out or open section from inside of the first ring-shaped handle in an outward direction, so that the protruding latch-behind hemispheres engage in milled recesses in the first ring shaped handle.
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.
Claim(s) 1, 3, 7-14, and 16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Bovet et al. (US 2016/0128798).
Regarding claim 1, Bovet et al. discloses a medical hand-held instrument (Instrument 5, FIG 6 and 7 show the instrument can be for example tweezers or surgical forceps), comprising an instrument body having at least one gripping portion (The finger loops of the forceps in FIG 7 are interpreted as the gripping portions), at least one effector portion (Although not shown, one of ordinary skill in the art would understand that forceps instrument 5 has a effector portion), an RFID tag (9, FIG 1, 4 5A-5B, [0066-0069, 0096-0105]), and a cut-out or open section in the instrument body (Plinth 3 is interpreted as a part of the instrument body because it is fixed to instrument 5, [0064]. The open section in the middle space of the plinth is interpreted as the “cut-out or an open section in the instrument body”, seen in FIGs 1 and 3a) in a region which is substantially force-free during operative activation of the medical hand-held instrument (FIG 7 shows the placement of capsule 1, which includes the plinth 3, is on the exterior of the finger loop. During operation, a force would be applied to the interior surfaces of the finger loop to operate the instrument, therefore the cut out is located in a substantially force free region), wherein in the cut-out or open section, a subsurface tag holder in the form of a bridge or strip is inserted (Housing 7 is interpreted as the tag holder, FIG 4 shows 7 is inserted into the space of the cutout and it contains tag 9. The structure shown in FIGs 1-2 is interpreted as a bridge because the spans the gap between two sides of the cut out), which fills the cut-out or open section in a form-adapted manner with respect to the medical hand-held instrument ([0064 and 0068], FIG 4), wherein the subsurface tag holder in the form of a bridge or a strip (7) is configured to connect a first shoulder of the cut-out or open section with a second shoulder of the cut-out or open section (See annotated FIG 2 below), wherein the at least one effector portion has two branches (FIG 7 shows two branches at the distal end of the device which are understood to continue to form the forcep gripping ends), the at least one gripping portion has a first ring-shaped handle and a second ring-shaped handle (See two finger loops of FIG 7), and the cut-out or open section is arranged on a side of the first ring-shaped handle facing away from the second ring-shaped handle (FIG 7 shows the arrangement of the RFID capsule on the side of one ring shaped handle member facing away from the opposing handle member).
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Regarding claim 3, Bovet et al. discloses the subsurface tag holder is configured to receive the RFID tag in a positionally fixed manner (Via fixing means 11, FIG 4, [0066-0068]) such that the RFID tag is recessed with respect to a surface of the first ring-shaped handle toward the interior of the subsurface tag holder (FIGs 4 and 7 show that tag 9 is recessed away from the handle and towards the interior of housing 7).
Regarding claim 7, Bovet et al. discloses upper sides of the subsurface tag holder have protruding anchor points (Ends of walls 19 that form edge 23 and recess 25, FIG 2) that are configured, in order to insert and/or push the subsurface tag holder into the cut-out or the open section from and underside of the first ring-shaped handle towards an upper side of the first ring-shaped handle, so that the protruding anchor points are pushable and/or insertable into corresponding recesses of the first ring-shaped handle an (Undersides and upper sides of the handle members are relative to the orientation of the device. The subsurface tag holder and anchor points are at least configured to be inserted in what would be considered an underside of the handle if the pieces were assembled while the device was held upside down).
Regarding claim 8, Bovet et al. discloses an attachable cover configured to cover the subsurface tag holder inserted into the first ring-shaped handle a (base 31, FIG 8 or 9, [0071] is interpreted as an attachable cover).
Regarding claim 9, Bovet et al. discloses the subsurface tag holder is a plastic injection-molded part ([0064-0065, 0075, 0094] discloses the use of injection molded plastic to form the housing component) configured to be adapted to an inside of an annular shape of the first ring shaped handle (They are shaped to conform to an annular shape, as shown in FIGs 7-8 and 11).
Regarding claim 10, Bovet et al. discloses a system comprising: a medical hand-held instrument according claim 1 (see claim 1 above); and comprising a reading device that is signal-coupleable with the RFID tag and configured with or as an instrument holder which is provided and adapted to hold or temporarily fix the medical hand-held instrument in a predetermined position and/or orientation relative to the reading device, in which signal transmission between the RFID tag and the reading device is enabled (Taking readings of the RFID tag is disclosed in [0097-0112], it is understood that a reading device is being used to collect the ‘readings’ and provide identification of the collection of objects as disclosed by Bovet).
Regarding claim 11, Bovet et al. discloses the RFID tag comprises a plurality of RFID tags that are simultaneously and securely readable ([0001, 0009, 0041, 0099], “bulk identification” refers to the collection and storing of information pertaining to a plurality of RFID tags).
Regarding claim 12, Bovet et al. discloses the medical hand-held instrument is one of forceps and scissors (FIGs 6 and 7 show use with either forceps or scissors is possible).
Regarding claim 13, Bovet et al. discloses the RFID tag is inserted as a glass/ceramic tag in the instrument body ([0104, 0105, 0109] discloses the RFID as a glass tag).
Regarding claim 14, Bovet et al. discloses the subsurface tag holder is inserted into the cut-out or open section in a force-fitting or a form-fitting manner ([0068] “The housing 7 furthermore includes an edge 23 at the end of the wall 19 including a recess 25. The plinth 3 comprises a setback 27 (FIG. 3) configured to cooperate with the recess 25 making it possible to secure the housing 7 to the plinth 3. The recess 25 allows optimal mechanical binding to the plinth of the encapsulating material of the housing 7”. This is interpreted as being form fitting).
Regarding claim 16, Bovet et al. discloses the attachable cover is connected to the subsurface tag holder via adhesive bonding or ultrasonic welding ([0071] the base 31 is welded to the surface 15 by way of a laser or glued to the surface 15).
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 (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 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.
Claim(s) 4-6 are rejected under 35 U.S.C. 103 as being unpatentable over Bovet et al. (US 2016/0128798) in view of Blair (US 2008/0238677).
Regarding claim 4, Bovet discloses the invention substantially as claimed, as set forth above for claim 2.
Bovet fails to discloses the subsurface tag holder is configured such that the RFID tag is exposed on an inside of the first ring shaped handle.
However, Blair teaches a subsurface tag holder (Transponder housing 30a, FIG 2-3, [0056]) housing an RFID tag (38, FIG 3, [0052]) such that the RFID tag is exposed on an inside of a first a ring shaped handle (14e, FIG 2-3, [0055-0058], wherein the tag holder surrounds the ring shaped handle such that the RFID tag is exposed to at least some portion of the inside of the ring shaped handle).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to modify the location of the tag holder of Bovet to be at least partially inside of the ring shaped handle member, as taught by Blair, such that the RFID tag is exposed on an inside of a first ring shaped handle, for the purpose of utilizing a tag holder positioning commonly known in the art and achieving the predictable result of placing the holder at a location of the handle which will not impede is operation.
Regarding claims 5-6, Bovet discloses the invention substantially as claimed, as set forth above for claim 2. Bovet further discloses the subsurface tag holder is form-fitted to the first ring shaped handle ([0068, FIG 2, the form fit connection between 7 and 3 via various indents and surfaces) via anchor points (Ends of walls 19 that form edge 23 and recess 25, FIG 2) on a short side (FIGs 1-2, the location of the anchor points is interpreted as a short side relative to the elongate surface 17) and wherein the short side of the subsurface tag holder is configured at an acute angle to each other in order to insert and/or push the subsurface tag holder into the cut-out or the open section (The ends of walls 19 having edge 23 are able to angle inward towards each other in order to allow for insertion into the cutout of 3).
Bovet is silent regarding the anchor points comprising latch-behind hemispheres.
However, Blair teaches a subsurface tag holder (Transponder housing 30a, FIG 2-3, [0056]) housing an RFID tag (38, FIG 3, [0052]) wherein the tag holder is secured in place using latch behind hemispheres (FIGS 4A-4B show the used of snaps 42 and holes 32 arranged in a “latch behind” manner, [0059] further discloses alternative coupling structures such as detents. A detent is interpreted as a hemisphere structure).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to add latch behind hemispheres to the anchor points of Bovet, as taught by Blair, for the purpose of enhancing the releasable engagement between the subsurface tag holder and the first ring shaped handle.
Claim(s) 17-18 are rejected under 35 U.S.C. 103 as being unpatentable over Bovet et al. (US 2016/0128798) in view of Weisshaupt (US 2014/0131454).
Regarding claim 17-18, Bovet et al. discloses the invention substantially as claimed, as set forth above for claim 1.
Bovet et al. is silent regarding an additional cut-out or open section arranged in the second ring-shaped handle, and an additional subsurface tag holder arranged in the additional cut-out or open section, and an additional RFID tag received in the additional subsurface tag holder, wherein the additional cut-out or open section is arranged on a side of the second ring-shaped handle facing away from the first ring-shaped handle, and the additional subsurface tag holder is in the form of a bridge or a strip configured to connect a first shoulder of the additional cut-out or open section with a second shoulder of the additional cut-out or open section.
However, Weisshaupt teaches a medical hand held instrument (160, FIG 9) in the form of forceps having a first ring shaped handle (one of 166) and a second ring shaped handle (other of 166, FIG 9), wherein each ring shaped handle receives its own RFID tag (80’ and 80’’, [0081]), wherein having a tag on both handle members provides the additional benefit that reading out the RFID tags is possible in any position or location of the instrument [0081].
Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to modify the second ring shape handle of Bovet to also comprise a second RFID tag, as taught by Weisshaupt, for the purpose of increasing the readability of the tag regardless of the orientation of the instrument. The device as modified therefore comprises “an additional cut-out or open section arranged in the second ring-shaped handle, and an additional subsurface tag holder arranged in the additional cut-out or open section, and an additional RFID tag received in the additional subsurface tag holder, wherein the additional cut-out or open section is arranged on a side of the second ring-shaped handle facing away from the first ring-shaped handle, and the additional subsurface tag holder is in the form of a bridge or a strip configured to connect a first shoulder of the additional cut-out or open section with a second shoulder of the additional cut-out or open section” as required by the claim because it contains all of the elements as set forth above in claim 1 but duplicated on the second ring shaped handle.
Claim(s) 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over Bovet et al. (US 2016/0128798) in view of Sergeant (US 2014/0088570).
Regarding claim 19-20, Bovet et al. discloses the invention substantially as claimed, as set forth above for claim 1.
Bovet et al. is silent regarding the cut- out or open section is formed within a continuous ring-shaped surface contour of the first ring- shaped handle and the subsurface tag holder or a cover on the subsurface tag holder forms a portion of the continuous ring- shaped surface contour of the first ring-shaped handle when secured to the first ring-shaped handle.
However, Sergeant teaches a medical hand held instrument (201, FIG 2A) in the form of forceps having a first ring shaped handle (one ring of 204) and a second ring shaped handle (other of 204, FIG 2A), wherein and RFID tag (202) is housed within a tag holder (203, [0071-0077]), wherein the tag holder is formed within a continuous ring-shaped surface contour of the first ring- shaped handle (FIG 2A, [0077] disclose “that the protuberance 203, 303 is arranged in the continuity of the instrument to be marked such that the junction between the protuberance 203, 303 and the instrument to be marked does not have any uncoupling (flaw), such a junction precluding the deposition (the nesting) of bacteria between the protuberance 203, 303 and the instrument to be marked”. This continuity between the holder and the instrument handle is interpreted a being formed within a continuous contour of the ring shape) and the subsurface tag holder or a cover on the subsurface tag holder forms a portion of the continuous ring- shaped surface contour of the first ring-shaped handle when secured to the first ring-shaped handle (FIG 2A further shows wherein the tag holder forms a portion of the outer contour surface.
Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to modify the tag holder of Bovet such that is mates with the ring shaped handle in a continuous, uninterrupted manner with the ring shape surface contour, as taught by Sergeant, for the purpose of housing the RFID tag on the handle manner in a manner which “perturbs as little as possible the grip of the instrument by the surgeon and makes it possible to hug the shape of the instrument and the tag in order to limit the size of the protuberance, but also to limit its weight” (Sergeant [0076] disclosing the benefits of the particular shape).
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 BROOKE N LABRANCHE whose telephone number is (571)272-9775. The examiner can normally be reached M-F 8-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Elizabeth Houston can be reached at 5712727134. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BROOKE LABRANCHE/ Primary Examiner, Art Unit 3771