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 Arguments
Applicant’s arguments with respect to claims 1-5, 7-9, and 11-12 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 in light of the amended claims filed 12/29/2025. New grounds of rejection detailed below.
Election/Restrictions
Applicant’s election without traverse of Group I, Species A in the reply filed on 09/04/2025 is acknowledged. Claims 6 and 13-20 withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Group II and/or Species B through J, there being no allowable generic or linking claim.
Newly submitted claims 25 and 26 are directed to an invention that is independent or distinct from the invention originally claimed elected on 09/04/2025 for the following reasons: they are directed to a previously unelected species which claims divergent structural elements that may be mutually exclusive from one another and are not obvious variants based on the current record.
Claims 25 and 26 are therefore withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Species B through J, and there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 09/04/2025.
Information Disclosure Statement
The Information Disclosure Statements (IDS) filed 05/26/2023 and 02/11/2025 have been considered by the Examiner.
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 27 and 28 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.
Claims 27 and 28 recites the limitation “the one or more ribs”. There is insufficient antecedent basis for this limitation in the claim as the claims as written now are dependent on claim 21 which depends from claim 1.
Examiner is interpreting claims 27 and 28 to instead depend from new independent claim 22.
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, 2, 4, 5, 8, 12, and 21 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Benson et al (US 20140171946 A1).
Regarding claim 1, Benson teaches a cannula reducer comprising:
a sleeve (50) having a proximal end (84) and a distal end (88), the sleeve comprising:
an outer diameter configured to fit within an inner diameter of a shaft of a cannula (34, see [0037-0038]; sleeve 50 is movably disposable within passageway 38 of cannula 34),
an interior passage (76) configured to receive (see [0038]; sleeve 50 includes an inner surface 74 defining a passageway 76) a shaft of a surgical instrument (72),
such that the sleeve is configured to be interposed between the shaft of the surgical instrument and the shaft of the cannula (see Fig. 3, [0037-0040]; sleeve 50 is disposed inside of passageway 38 of cannula 34; sleeve 50 having passageway 76 configured for disposal of tap 72), and
a proximal end (84) including a securing mechanism (86) configured to attach to the surgical instrument (72) and thereby secure the sleeve to the surgical instrument (see [0055]; lock 86 of sleeve 50 is engageable with tap 72 in a locking orientation to prevent axial translation of tap 72 relative to sleeve 50).
Regarding claim 2, Benson teaches the cannula reducer of claim 1, wherein the proximal end (84) of the sleeve is configured to attach to the surgical instrument (see [0055]; lock 86 of sleeve 50 is engageable with tap 72 in a locking orientation to prevent axial translation of tap 72 relative to sleeve 50) along a shaft of the surgical instrument (see [0050]; tap 72 having a shaft extending between first end 178 and second end 180).
Regarding claim 4, Benson teaches the cannula reducer of claim 1, wherein the securing mechanism (86) comprises a latch member (140) configured to engage with a housing of the surgical instrument,
wherein the latch member (140) is coupled to the sleeve (50) via a flexural portion (162),
wherein the latch member is integrally formed with the sleeve (see [0048]; pins 170 configured for disposal in openings 164 of arms 162 of tab 140, where pins 170 are fixed into place within portion 98, [0030]; the components of system 30 may be monolithically formed, integrally connected, or include fastening elements),
wherein the sleeve further comprises an actuation portion (126) coupled to the latch member (140), and wherein,
movement of the actuation portion moves the latch member and disengages the sleeve from the surgical instrument (see [0058]; to move lock 86 from the locking orientation to the non-locking orientation, tab 126 is translated within channel 118 until the projections of section 192 disengage, [0049]; arms 162 of tab 140 having sections 192).
Regarding claim 5, Benson teaches the cannula reducer of claim 1, wherein the sleeve (50) further comprises a tubular body (see [0038]; inner surface 74 defining a passage 76) extending from the proximal end (84) to the distal end (88),
wherein the interior passage is a lumen extending through the tubular body (see [0040]; sleeve 50 includes a passageway 76 from a first opening 94 at proximal end 84 to a second opening 96 at the distal end 88).
Regarding claim 8, Benson teaches a cannula reducer comprising:
a hollow body (50) having a proximal end (84) configured to releasably couple with an engagement feature of a surgical instrument (see [0055-0056]; lock 86 of sleeve 50 is engageable with tap 72 between a locking orientation and a non-locking orientation, [0049]; where part of arms 162 of lock 86 are configured for disposal in a groove 186 of tap 72, which is considered to be the engagement feature),
wherein the proximal end (84) comprises a latch member (tab 140 of lock 86) configured to engage with the engagement feature (186) of the surgical instrument (72),
wherein the latch member (140) is coupled to the hollow body via a flexural portion (arms 162),
wherein the flexural portion includes a release portion (174 and 176) and a latch portion (planar locking section 190, [0049], Fig. 12),
wherein the flexural portion is biased to urge the latch member into engagement with the surgical instrument (see [0047]; lock 86 to be resiliently biased to a locking orientation such that tab 140 protrudes from surface 100 and relative movement of tap 72 is prevented),
wherein the cannula reducer (50) and the surgical instrument (72) are configured to be inserted into a cannula (34) as an assembled unit (see [0060]; instrument 32 is delivered through the passageway adjacent surgical site, lock 42 of cannula 34 may be disposed in the locking orientation or non-locking orientation, and lock 86 of sleeve 50 is disposed in the locking orientation; it can be appreciated that in the locking orientation lock 86 engages with tap 72 and since lock 42 may be in a locked or non-locking position, that tap 72 is engaged via lock 86 when sleeve 50 is introduced to cannula 34).
Regarding claim 12, Benson teaches the cannula reducer of claim 8, the hollow body further defining a lumen configured to receive the surgical instrument (see [0040]; sleeve 50 includes a passageway 76 from a first opening 94 at proximal end 84 to a second opening 96 at the distal end 88), wherein the hollow body is tubular (see [0038]; inner surface 74 defining a passage 76).
Regarding claim 21, Benson teaches the cannula reducer of claim 1, the proximal end of the sleeve (84) including a latch member (86),
the latch member including an inwardly facing protrusion biased inwardly to couple with an outer surface of the surgical instrument (see [0047-0049]; tab 140 of lock 86 has arms 162 which extend inward through top 98 of sleeve 50 and have locking sections 190 which are configured for disposal in a groove 186 of tap 72 to secure the tap and sleeve together).
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.
Claims 3, 9, and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Benson et al (US 20140171946 A1) in view of Smith (US 20060253077 A1).
Regarding claims 3 and 9, Benson teaches the cannula reducer of claims 1 and 8, wherein, in a docked configuration where the sleeve and the surgical instrument are docked to the cannula, the proximal end of the sleeve is configured to attach to the surgical instrument (see Benson [0055]; lock 86 of sleeve 50 is engageable with tap 72 in a locking orientation to prevent axial translation of tap 72 relative to sleeve 50).
Benson is silent regarding wherein the proximal end of the sleeve is configured to attach to the surgical instrument at a location distal to a sealing layer coupled to the cannula.
Smith teaches a cannula system (100) having a seal assembly (300) coupled to the cannula (see Smith Figs. 25-27, [0052]; tether 304 of seal assembly 300 is coupled to the outer surface of the sleeve 102 of cannula 100) wherein the seal assembly is configured so that the proximal end of the sleeve may attach to the surgical instrument at a location distal to the sealing layer (see Smith Fig. 27, where seal 204 having securing seal 218 is considered to be the attachment between the proximal end of the sleeve and the surgical instrument and the seal assembly 300 is located proximally to seal 204).
It would have been obvious for one of ordinary skill in the art prior to the effective filing date of the claimed invention to modify Benson’s cannula reducer with the tethered cannula seal located proximally to the reducer sleeve. It can be appreciated that it is well understood by one of ordinary skill in the art that it is advantageous to have a sealing layer in order to ensure that gasses do not enter or exit the body through an incision or port in minimally invasive surgeries which may involve insufflation of the surgical region (Smith [0005]). Therefore, it can be appreciated that one of ordinary skill in the art would have been motivated to make this modification in order to ensure a fluid tight seal for instruments inserted into the surgical region, without interfering with the locking mechanisms as taught by Benson by utilizing the tethered sealing layer taught by Smith.
Regarding claim 11, Benson and Smith teach the cannula reducer of Claim 9. Benson further teaches an actuation portion (126) coupled to the latch member (140), wherein movement of the actuation portion moves the latch member (see [0058]; to move lock 86 from the locking orientation to the non-locking orientation, tab 126 is translated within channel 118 until the projections of section 192 disengage, [0049]; arms 162 of tab 140 having sections 192).
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Benson et al (US 20140171946 A1) in view of Morrissette (US 20180132890 A1).
Regarding claim 7, Benson teaches the cannula reducer of claim 1. Benson is silent regarding wherein the distal end of the sleeve comprises one or more radial extensions configured to engage with an inner surface of the cannula, and
one or more radial gaps angularly offset from the one or more radial extensions and configured to permit fluid flow between an outer surface of the sleeve and the inner surface of the cannula.
Morrissette teaches a cannula reducer (1000) wherein the distal end of the sleeve comprises one or more radial extension (1076) configured to engage with an inner surface of the cannula (see [0063]; constant contact between one or more of the longitudinal ribs 1076 and the interior of the cannula in which reducer 1000 is positioned), and
one or more radial gaps (1077) angularly offset from the one or more radial extensions and configured to permit fluid flow between an outer surface of the sleeve and the inner surface of the cannula (see [0063]; spaces 1077 between the longitudinal ribs 1076 enable passage of insufflation gasses or evacuation of smoke between the reducer 1000 and the cannula).
It would have been obvious for one of ordinary skill in the art prior to the effective filing date of the claimed invention to modify Benson’s cannula reducer with the radial extensions taught by Morrissette. One of ordinary skill in the art would have been motivated to make this modification in order to ensure and maintain the desired coaxial relationship between the cannula reducer and the cannula (Morrissette [0063]).
Claim 22 is rejected under 35 U.S.C. 102(a)(1) as anticipated by Morrissette (US 20180132890 A1) or, in the alternative, under 35 U.S.C. 103 as obvious over Morrissette (US 20180132890 A1) in view of Benson et al (US 20140171946 A1).
Regarding claim 22, Morrissette teaches a cannula reducer (see Abstract; reducer device for a surgical cannula) comprising:
a sleeve (1000) having a proximal end (see Morrissette Fig. 10; proximal end of reducer 1000) and a distal end (see Morrissette Fig. 10; distal end of reducer 1000), the sleeve being configured to be inserted into a cannula and having an interior passage configured to receive a surgical instrument (see [0063]; conductive instrument shaft positioned within the main tube 1002 of reducer 1000),
wherein the proximal end of the sleeve is configured to attach to the surgical instrument (see [0030], Fig. 1 having seal 116 located at proximal end 112 configured to secure surgical instrument),
wherein the distal end of the sleeve comprises one or more ribs (1076) configured to engage with an inner surface of the cannula (see [0063]; constant contact between one or more of the longitudinal ribs 1076 and the interior of the cannula in which reducer 1000 is positioned), and
one or more radial gaps (1077) angularly offset from the one or more ribs and configured to permit fluid flow between an outer surface of the sleeve and the inner surface of the cannula (see [0063]; spaces 1077 between the longitudinal ribs 1076 enable passage of insufflation gasses or evacuation of smoke between the reducer 1000 and the cannula).
Alternatively, if the seal 116 at the proximal end of a reducer sleeve is not considered to be configured to attach to a surgical instrument, Benson teaches a cannula reducer comprising a sleeve (50) having a proximal end (84) and a distal end (88) wherein the proximal end of the sleeve is configured to attach to the surgical instrument (72, see Benson [0055]; lock 86 of sleeve 50 is engageable with tap 72 in a locking orientation to prevent axial translation of tap 72 relative to sleeve 50).
It would have been obvious for one of ordinary skill in the art prior to the effective filing date of the claimed invention to modify Morrissette’s cannula reducer with a locking mechanism for ensuring attachment between the cannula reducer and the instrument as taught by Benson. One of ordinary skill in the art would have been motivated to make this modification in order to prevent unwanted relative movement of the instrument within the cannula reducer sleeve (Benson [0044]).
Claims 23 and 27-28 are rejected under 35 U.S.C. 103 as being unpatentable over Morrissette (US 20180132890 A1) in view of Benson et al (US 20140171946 A1).
Regarding claim 23, Morrissette and/or Morrissette in view of Benson teach the cannula reducer of claim 22. Benson further teaches wherein the proximal end (84) of the sleeve is configured to attach to the surgical instrument (see [0055]; lock 86 of sleeve 50 is engageable with tap 72 in a locking orientation to prevent axial translation of tap 72 relative to sleeve 50) along a shaft of the surgical instrument (see [0050]; tap 72 having a shaft extending between first end 178 and second end 180).
It would have been obvious for one of ordinary skill in the art prior to the effective filing date of the claimed invention to modify Morrissette’s cannula reducer with a locking mechanism for ensuring attachment between the cannula reducer and the instrument as taught by Benson. One of ordinary skill in the art would have been motivated to make this modification in order to prevent unwanted relative movement of the instrument within the cannula reducer sleeve (Benson [0044]).
Regarding claim 27, Morrissette and/or Morrissette in view of Benson teach the cannula reducer of claim 22. Morrissette further teaches wherein the one or more ribs (1076) is integral to the sleeve (see Morrissette [0062]; the longitudinal ribs 1076 are molded integrally with the main tube 1002).
Regarding claim 28, Morrissette and/or Morrissette in view of Benson teach the cannula reducer of claim 22. Morrissette further teaches wherein the one or more ribs are pliable (see Morrissette [0062]; the reducer 1000 includes a main tube 1002 made from a molded polymer; the longitudinal ribs 1076 are molded integrally with the main tube 1002, [0032]; polymer material such as polycarbonate, polypropylene, polyethylene, acrylonitrile butadiene styrene (ABS), or other polymers).
Claim 24 is rejected under 35 U.S.C. 103 as being unpatentable over Morrissette (US 20180132890 A1) in view of Benson et al (US 20140171946 A1) and Smith (US 20060253077 A1).
Regarding claim 24, Morrissette and Benson teach the cannula reducer of claim 22. Morrissette is silent regarding wherein, in a docked configuration where the sleeve and the surgical instrument are docked to the cannula, the proximal end of the sleeve is configured to attach to the surgical instrument at a location distal to a sealing layer coupled to the cannula.
Benson further teaches wherein, in a docked configuration where the sleeve and the surgical instrument are docked to the cannula, the proximal end of the sleeve is configured to attach to the surgical instrument (see [0055]; lock 86 of sleeve 50 is engageable with tap 72 in a locking orientation to prevent axial translation of tap 72 relative to sleeve 50).
It would have been obvious for one of ordinary skill in the art prior to the effective filing date of the claimed invention to modify Morrissette’s cannula reducer with a locking mechanism for ensuring attachment between the cannula reducer and the instrument as taught by Benson. One of ordinary skill in the art would have been motivated to make this modification in order to prevent unwanted relative movement of the instrument within the cannula reducer sleeve (Benson [0044]).
Benson is silent regarding wherein the proximal end of the sleeve is configured to attach to the surgical instrument at a location distal to a sealing layer coupled to the cannula.
Smith teaches a cannula system (100) having a seal assembly (300) coupled to the cannula (see Smith Figs. 25-27, [0052]; tether 304 of seal assembly 300 is coupled to the outer surface of the sleeve 102 of cannula 100) wherein the seal assembly is configured so that the proximal end of the sleeve may attach to the surgical instrument at a location distal to the sealing layer (see Smith Fig. 27, where seal 204 having securing seal 218 is considered to be the attachment between the proximal end of the sleeve and the surgical instrument and the seal assembly 300 is located proximally to seal 204).
It would have been obvious for one of ordinary skill in the art prior to the effective filing date of the claimed invention to modify Morrissette and Benson’s cannula reducer with the tethered cannula seal located proximally to the reducer sleeve. It can be appreciated that it is well understood by one of ordinary skill in the art that it is advantageous to have a sealing layer in order to ensure that gasses do not enter or exit the body through an incision or port in minimally invasive surgeries which may involve insufflation of the surgical region (Smith [0005]). Therefore, it can be appreciated that one of ordinary skill in the art would have been motivated to make this modification in order to ensure a fluid tight seal for instruments inserted into the surgical region, without interfering with the locking mechanisms as taught by Benson by utilizing the tethered sealing layer taught by Smith.
Conclusion
THIS ACTION IS MADE FINAL. 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 ALISHA J SIRCAR whose telephone number is (571)272-0450. The examiner can normally be reached Monday - Thursday 9-6:30, Friday 9-5:30 CT.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Benjamin Klein can be reached at 571-270-5213. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/A.J.S./Examiner, Art Unit 3792
/Benjamin J Klein/Supervisory Patent Examiner, Art Unit 3792