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 § 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.
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.
Claims 11-12, 14-18, 21, and 25-27 are rejected under 35 U.S.C. 103 as being unpatentable over Beck (US 5191881 A).
Regarding claim 11, Beck discloses an apparatus (Figs. 1-7) for switching between fluid sources during a bronchoscopy, the apparatus comprising:
a base (11) having a first end (19) and a second end (20);
a first tube (15) coupled to the base and extending from a first end (15a) that protrudes a first distance (Fig. 4, Col 3, lines 3-6) from the first end of the base to a second end (15b) that protrudes a second distance from the second end of the base (Fig. 4, Col 3, lines 8-15);
a second tube (16) coupled to the base and extending from a first end (16a) that protrudes a third distance (Fig. 4, Col 3, lines 3-6) from the first end of the base to a second end (16b) that protrudes a fourth distance from the second end of the base (Fig. 4, Col 3, lines 8-15);
an actuator apparatus (12) alterable between: (1) a first state in which the first tube is open and the second tube is closed (Fig. 6); and (2) a second state in which the first tube is closed and the second tube is open (Fig. 5).
Beck is silent regarding
wherein each of the first, second, third, and fourth distances is five feet or less.
However, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to cause the device of Beck to have each of the first, second, third, and fourth distances being five feet or less since it has been held that “where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device” Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 SPQ 232 (1984). In the instant case, the device of Beck would not operate differently with the claimed distances.
Regarding claim 12, Beck discloses the apparatus according to claim 11 further comprising a first channel (Space between 18 and 36) formed through the base (Fig. 1) and a second channel (Space between 17 and 37) formed through the base (Fig. 1), at least a portion of the first tube positioned in the first channel and at least a portion of the second tube positioned in the second channel (Col 3, lines 20-25).
Regarding claim 14, Beck discloses the apparatus according to claim 11 but is silent regarding wherein each of the first, second, third, and fourth distances is three feet or less.
However, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to cause the device of Beck to have each of the first, second, third, and fourth distances being three feet or less since it has been held that “where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device” Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 SPQ 232 (1984). In the instant case, the device of Beck would not operate differently with the claimed distances.
Regarding claim 15, Beck discloses the apparatus according to claim 14 but is silent regarding wherein each of the first, second, third, and fourth distances is two feet or less.
However, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to cause the device of Beck to have each of the first, second, third, and fourth distances being two feet or less since it has been held that “where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device” Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 SPQ 232 (1984). In the instant case, the device of Beck would not operate differently with the claimed distances.
Regarding claim 16, Beck discloses the apparatus according to claim 15 but is silent regarding wherein each of the first, second, third, and fourth distances is one foot or less.
However, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to cause the device of Beck to have each of the first, second, third, and fourth distances being one foot or less since it has been held that “where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device” Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 SPQ 232 (1984). In the instant case, the device of Beck would not operate differently with the claimed distances.
Regarding claim 17, Beck discloses the apparatus according to claim 11 wherein each of the first and second tubes is a compressible tube (Figs. 5-6, Col 2, lines 1-8).
Regarding claim 18, Beck discloses the apparatus according to claim 11 wherein the first tube extends along a first tube axis and the second tube extends along a second tube axis (Image 1), the first and second tube axes being parallel (Fig. 4), and wherein each of the first and second tubes is radially compressible (Figs. 5-6, Col 2, lines 1-8).
Image 1:
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Regarding claim 21, Beck discloses the apparatus according to claim 11 wherein the first and second tubes are non-detachably fixed to the base (Col 3, lines 1-15) and wherein the apparatus is one- time use disposable (One of ordinary skill in the art would recognize that after use of the apparatus, the user may dispose of the apparatus).
Regarding claim 25, Beck discloses the apparatus according to claim 11 wherein at least one of the first and second ends of each of the first and second tubes comprises a coupler (26, 27, 31, 32).
Regarding claim 26, Beck discloses the apparatus according to claim 25 wherein each of the first and second ends of each of the first and second tubes comprises a coupler (26, 27, 31, 32).
Regarding claim 27, Beck discloses the apparatus according to claim 11 further comprising a third tube (29) configured to be fluidly coupled to a working channel of a bronchoscope (The language “configured to be fluidly coupled to a working channel of a bronchoscope” constitutes functional claim language. The Office submits that the device of Beck meets the structural limitations of the claim), and wherein the first ends of each of the first and second tubes is fluidly coupled to the third tube (Fig. 4).
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Beck (US 5191881 A) in view of Wright et al. (US 4702733 A).
Regarding claim 13, Beck discloses the apparatus according to claim 12 but is silent regarding wherein the first and second channels extend from the first end of the base to the second end of the base.
In analogous art, Wright teaches wherein first and second channels (35, 37) extend from a first end of a base (25) to the second end of the base (Fig. 2).
It would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to have modified the first and second channels of Beck to incorporate the teachings of Wright to incorporate extending from the first end of the base to the second end of the base in order to contain and secure the tubes during operation (Col 5, lines 41-50).
Allowable Subject Matter
Claims 19-20 and 22-24 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
As to claim 19, although Beck teaches the limitations of claim 18 as described above, Beck is silent to wherein the actuator apparatus comprises a pedal that is pivotably coupled to the base about a pivot axis that is parallel to the first and second axes in combination with the limitations of claims 11 and 18.
As to claim 20, although Beck teaches the limitations of claim 18 as described above, Beck is silent to wherein the actuator apparatus comprises a pedal that is pivotably coupled to the base about a pivot axis that is perpendicular to the first and second axes in combination with the limitations of claims 11 and 18.
As to claim 22, although Beck teaches the limitations of claim 11 as described above, Beck is silent to wherein the actuator apparatus comprises: a pedal pivotably coupled to the base; a first contact portion; and a second contact portion; wherein in the first state the second contact portion compresses the second tube into occlusion and in the second state the first contact portion compresses the first tube into occlusion; and wherein the actuator apparatus transitions between the first and second states by pivoting the pedal relative to the base in combination with the limitations of claim 11. Dependent claims 23-24 also contain allowable subject matter for the same reasons above.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Jinotti (US 4193406 A) teaches a dual purpose catheter with a valve means for alternately connecting the proper tube to suction or oxygen.
Weightman et al. (US 4680026 A) teaches a valve assembly connecting one or the other of the bores to a single outlet port so that the outlet port can be used to apply suction or irrigating fluid.
Deane et al. (US 4708717 A) teaches a valve operation having a normal position with both irrigation conduits closed, a fully operated position with only the first such conduit open, and a partially operated intermediate position with only the second such conduit open.
Boehringer et al. (US 5120305 A) teaches a valve for opening or closing desired conduits.
Clement et al. (US 5203769 A) teaches a rotor having at least one transaxial passageway which opens the at least one fluid passageway through the valve body when the rotor is in its valve opening position and which closes the at least one fluid passageway when the rotor is in its valve closing position.
Fox et al. (US 5273524 A) teaches means to flush and vacuum a surgical site.
Flom et al. (US 5830214 A) teaches a suction/irrigation switch.
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/HONG-VAN N TRINH/Examiner, Art Unit 3783 /James D Ponton/Primary Examiner, Art Unit 3783
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