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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 12/19/2025 has been entered.
Claim Rejections - 35 USC § 112(a)
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claims 1-5 and 7-9 are rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement. The claims contain subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, at the time the application was filed, had possession of the claimed invention.
Firstly, the limitation “the wire is fixed to the intermediate part” (last line of claim 1) constitutes new matter since the application as originally filed did not claim, describe or depict such limitation. Paragraph [0056] of the written description stated only that “the axial dimension of the intermediate part 13 may be the minimum size that allows the wire for operating the second bendable part 11 to be fixed” without expressly stating what element the wire is fixed to, much less expressly stating that the wire is fixed to the intermediate part as is now claimed. To the contrary, applicant’s original figure 3 clearly/originally shows left and right wires 15 to have a much smaller diameter than the openings in the intermediate part 13 through which they pass and thus are free to slide.
Secondly, even if the limitation had been present in the original claims (it wasn’t), the limitation would still have failed to comply with the written description since applicant written description and drawings fail to set forth descriptions/depictions of a sufficient number of species to support the full broad scope of the “fixed” genus (e.g., rotatably fixed by ball joint, fixed by welding, fixed by soldering, fixed by glue, fixed by bolting, etc.) Again, applicant’s original figure 3 clearly/originally shows left and right wires 15 to have a much smaller diameter than the openings in the intermediate part 13 through which they pass and thus are free to slide, which could be interpreted as a type of slidable fixation (similar to how keys are fixed to a key ring but are free to slide thereon). However, applicant’s remarks filed on 10/1/2025 and on 12/19/2025 each argue that a slideable manner of fixation in the prior art doesn’t read on the claim such that it would appear that applicant did not intend disclose any particular manner of fixation (if slideable fixation is forbidden as argued by applicant) much less a sufficient number of species of fixation to establish possession of the broadly claimed genus. Accordingly, applicant did not appear to have had possession of the full broad scope of the claimed genus. See MPEP 2163(II)(A)(3)(a)(ii), which states in various parts:
“The written description requirement for a claimed genus may be satisfied through sufficient description of a representative number of species by actual reduction to practice… reduction to drawings… or by disclosure of relevant, identifying characteristics… sufficient to show the inventor was in possession of the claimed genus…”
“[T]he written description must lead a person of ordinary skill in the art to understand that the inventor possessed the entire scope of the claimed invention…”
“[T]he purpose of the written description requirement is to ensure that the scope of the right to exclude, as set forth in the claims, does not overreach the scope of the inventor's contribution to the field of art as described in the patent specification…”
“A ‘representative number of species’ means that the species which are adequately described are representative of the entire genus. Thus, when there is substantial variation within the genus, one must describe a sufficient variety of species to reflect the variation within the genus…”
“A patentee will not be deemed to have invented species sufficient to constitute the genus by virtue of having disclosed a single species… Claims directed to PTFE dental floss with a friction-enhancing coating were not supported by a disclosure of a microcrystalline wax coating where there was no evidence in the disclosure or anywhere else in the record showing applicant conveyed that any other coating was suitable for a PTFE dental floss…”
“The Federal Circuit has explained that a specification cannot always support expansive claim language and satisfy the requirements of 35 U.S.C. 112 merely by clearly describing one embodiment of the thing claimed… The issue is whether a person skilled in the art would understand inventor to have invented, and been in possession of, the invention as broadly claimed…”
Claims 2-5 and 7-9 depend from claim 1 and are thus similarly non-possessed and rejected.
Claim Rejections - 35 USC § 112(b)
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.
Claims 1-5 and 7-9 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Regarding claim 1, the limitation “the wire is fixed to the intermediate part” (lines 6 and 13 of claim 1) is contrary to the disclosure and thus unclear. See MPEP 2173.03 which states that a claim may be "indefinite when a conflict or inconsistency between the claimed subject matter and the specification disclosure renders the scope of the claim uncertain as inconsistency with the specification disclosure or prior art teachings may make an otherwise definite claim take on an unreasonable degree of uncertainty." More particularly, applicant’s 10/1/2025 remarks and 12/19/2025 remarks allege that the slidingly attached wire and intermediate part fail to meet the “fixed” claim limitation, thereby implying that applicant intends for “fixed” to be prohibitive of relative sliding. However, such a narrow interpretation would fail to read on applicants’ own invention. See applicants’ figure 3, which clearly shows left and right wires 15 to have a much smaller diameter than the openings in the intermediate part 13 through which they pass and thus are free to slide. As best understood, applicant seeks protection for an infinite number of fixations while disclosing none. For purposes of applying the prior art elsewhere below the examiner interprets the term “fixed” to broadly/reasonably describe parts that are not separable from one another but not necessarily being prohibiting relative movements such as relative sliding/telescoping/rotating, etc. (e.g., keys that are fixed on a key ring but slidingly so).
Claims 2-5 and 7-9 depend from claim 1 and are thus similarly unclear/rejected.
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 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.
Claim 1-5 and 7-9 are rejected under 35 U.S.C. 103 as being unpatentable over Hirata WO 2020036085 and Tadano US9814480.
Modification: Hirata discloses a forceps manipulator (fig.12) having a rigid intermediate part (31) connected to a bendable part (35) having a flexible member (double coil spring 1) extending therethrough. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to duplicate the Hirata bendable part to be two, one on either side of the Hirata intermediate part, and having the Hirata flexible member extending through all three resulting parts, since one would have easily recognized and predicted that two bendable parts would inherently give greater articulation than only one, and further since Tadano teaches such duplicated arrangement to have been well known to be desirable in the forceps manipulator art, i.e., see Tadano two bendable parts (18 and 22) on either side of intermediate part (18ff and/or 22mf) with flexible member (34) extending through all three parts. The structure resulting from the preceding modifications would map to applicant’s claims as follows:
Claim 1. A bending structure body, comprising: a plurality of bendable parts (two Hirata bendable parts 25 resulting from the above modification) that are elastically bendable with respect to an axial direction; an intermediate part (Hirata part 31) positioned between adjacent bendable parts (as modified above); and a wire (Hirata, 29), wherein the plurality of bendable parts comprise a flexible member (Hirata 1 which extends through all three parts as modified above ) that is integral in the axial direction, the flexible member (1) comprises an inner coil part (Hirata 7) and an outer coil part (Hirata 5), and corresponding winding parts (Hirata coils of 7) of the inner coil part are fitted into gaps (Hirata gaps between 5) between adjacent winding parts (Hirata coils of 5) of the outer coil part, the intermediate part suppresses bending (function/property presumed inherent to prior art structure thereby shifting burden to applicant to obtain/test the art to prove otherwise in accordance with MPEP 2112.01) of the flexible member with respect to the axial direction by inserting the flexible member through the intermediate part to attach an inner circumference of the intermediate part to the flexible member between the adjacent bendable parts (see flexible member 1 inserted/attached in/to the inner circumference of intermediate part 31, as seen in fig.12 of Hirata); and the wire is fixed to the intermediate part (as best understood, see 35 USC 112 rejection, Hirata, see wire 29 fixed to 31 in fig.12, albeit slidingly so).
Claim 2. The bending structure body according to claim 1, wherein the intermediate part is an annular member (Hirata 31) for inserting the flexible member in the axial direction, and has an inner circumference (as best understood, see 35 USC 112 rejection, see inner circumference of Hirata 31) attached to the flexible member (see fig.12 of Hirata).
Claim 3 and 7. The bending structure body according to claim 1, wherein the intermediate part is fixed to the flexible member (see fig.12 of Hirata).
Claim 4, 8 and 9. The bending structure body according to claim 1, wherein each of the plurality of bendable parts comprises an outer member (Hirata 35, see translation description “flexible tube 35 may be a coil spring”) that surrounds the flexible member and has elasticity.
Claim 5. The bending structure body according to claim 4, wherein the outer members of the plurality of bendable parts have ends (ends of duplicated 35 as necessarily resulting from the modification above) that face each other across the intermediate part in the axial direction, and the ends are respectively attached to both sides of the intermediate part in the axial direction (as results from the above modification).
Response to Arguments
Applicant argues that the claims have been amended to overcome the 35 USC 103 obviousness rejections. This is not persuasive. The claims remain obvious over the prior art as is detailed in the reworded rejections above, e.g., wire (Hirata, 29) is fixed (as best understood, see 35 USC 112 rejection) to the intermediate part (Hirata, see wire 29 fixed to 31 in fig.12, albeit slidingly so). Applicants’ claims do not expressly forbid sliding types of fixation, nor does applicant depict or describe any fixation structure that prohibits sliding, rotating, etc. See the example prior art references in the conclusion section below that demonstrate that “fixed” does not necessarily forbid sliding types of fixation.
Conclusion
The prior art made of record on the attached PTO-892 demonstrates that the term “fixed” does not necessarily prevent sliding types of fixation:
US5181600 “slidingly fixed” (claim 12)
US5219259 “slidingly fixed” (Background/Summary)
US5269641 “slidingly fixed” (Background/Summary and Claim 10)
US5271250 “slidingly fixed” (Background/Summary)
US5685215 “slidingly fixed” (Claim 15)
US5782342 “slidingly fixed” (Background/Summary)
US5995345 “slidingly fixed” (claim 8 and multiple recitations throughout disclosure)
US6004151 “vertical groove 38 and flange 39 slidingly fixed to each other as shown in figs.7 and 8 and thereby slidingly and relatively move in the direction A…” (written description)
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VICTOR L MACARTHUR whose telephone number is (571)272-7085.
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/VICTOR L MACARTHUR/Primary Examiner, Art Unit 3618