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
This office action is responsive to the amendment filed on 11/24/2025. As directed by the amendment: claims 1, 14, and 15 have been amended and claims 5, 9, 12, and 17-21 remain withdrawn. Thus, claims 1-21 are presently pending in this application.
Response to Arguments
Applicant's arguments, see pages 9-12, filed 11/24/2025, with respect to the rejection of claims 14-15 under 35 U.S.C. 102(a)(1) as being anticipated by Ishikawa et al (US 20210106375 A1), herein referenced to as “Ishikawa” and claim1 under 35 U.S.C. 103 as being unpatentable over Ishikawa in view of Motai et al (US 20200038043 A1), herein referenced to as “Motai” have been fully considered but they are not persuasive.
The applicant has amended claims 1, 14, and 15 to further recite “wherein a distal end fitting portion of the operation member is inserted into an internal space of the accommodating member, and the accommodating member is configured to be slidable along the distal end fitting portion of the operation member toward the distal end side and the proximal end side, and the endoscopic treatment tool is configured such that: the treatment tool main body is protruded from the first opening when the accommodating member is slid on the distal end fitting portion of the operation member toward the proximal end side, and at least a part of the protrusion range of the treatment tool main body is retracted from the first opening when the accommodating member is slid on the distal end fitting portion of the operation member toward the proximal end side”.
The applicant asserts that Ishikawa does not disclose the amended claim language.
The examiner respectfully disagrees.
Firstly, Ishikawa teaches that a distal end fitting portion 42 (see Fig. 4, [0069], can be inserted into 18 and that 18 can be slidable along 42 via rotation, the definition of slide according to the online Merriam Webster dictionary being “the move smoothly along a surface” which proximal and distal rotation of 18 to connect onto 22 is occurring smoothly) of the operation member 22, specifically within an internal space 24 (see Fig. 4, [0045]) of the accommodating member 18.
The language, "the endoscopic treatment tool is configured such that: the treatment tool main body is protruded from the first opening when the accommodating member is slid on the distal end fitting portion of the operation member toward the proximal end side, and at least a part of the protrusion range of the treatment tool main body is retracted from the first opening when the accommodating member is slid on the distal end fitting portion of the operation member toward the proximal end side," constitutes functional claim language, indicating that the claimed device need only be capable of being used in such a manner. The claim, however, is an apparatus claim, and is to be limited by structural limitations. The Office submits that the device of Ishikawa meets the structural limitations of the claim, and is capable of the protrusion range the protruding part of 16 of the treatment tool 14 of being protruded while the accommodating member 18 is towards the proximal side towards 22 as when the length of 16 is held and 18 is retracted proximally (which is attached to the tube 12) this will cause more of 16 to come out from 26, and the reverse is held true when 18 is advanced distally away from 22, thus pushing 12 distally as well to cover 16.
As such the rejections will be maintained.
Claim Rejections - 35 USC § 102
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) 14-15 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ishikawa et al (US 20210106375 A1), herein referenced to as “Ishikawa”.
Claim 14
Ishikawa discloses: An endoscopic treatment tool 10 (see Figs. 1-6 and 8, [0041]-[0042]) comprising: a treatment tool main body 14 (see Figs. 1 and 4, [0043]) that extends in a first direction the distal direction (see Figs. 1 and 4, 14 extends in a distal direction); an operation member 22 (see Figs. 1-5, [0043]) that is provided on a proximal end side proximal side of 14 (see Fig. 4, [0045]) of the treatment tool main body 14 and is used for operating (see [0057]) the treatment tool main body 14; and an accommodating member 18 + 12 (see Figs. 1-6 and 8, [0043] and [0046]) that has a tubular shape (see Figs. 1-6 and 8, 18 has a generally tubular shape as it is cylindrical and has at least two openings on the distal and proximal sides) and that accommodates the treatment tool main body 14 inside (see Figs. 1 and 4, [0045], 14 is inserted into an internal space 24 of 18) and has a through-hole 20 (see Figs. 1-6 and 8, [0043]) allowing fluid (see [0043], 20 is a water injection connector, hence water, a fluid, can be supplied inside) to be supplied inside, wherein a position the relative position of 14 of the treatment tool main body 14 with respect to the operation member 22 is fixed (see [0057], when 22 is actuated this then moves 14, hence the position of 14 is fixed relative to 22), and the accommodating member 18 is configured to move in the first direction distal direction (see Fig. 4, [0051], 18 can be moved distally via rotation off of 42), a first state (see [0057], when 16 projects from distal end 26 of 12) in which the treatment tool main body 14 protrudes from a first opening the opening of 12 at 26 (see Fig. 1, [0057]) of the accommodating member 18 on a distal end side 26 (see Fig. 1, [0057]) and a second state (see [0057], when 16 is retracted from the distal end 26 of 12) in which at least a part of a protrusion range the protruding part of 16 which is part of 14 (see Fig. 1, [0057]) of the treatment tool main body 14 in the first state (see [0057]) is retracted toward the proximal end side proximal side of 14 with respect to the first opening the opening of 12 at 26 are formed by movement of the accommodating member, wherein a distal end fitting portion 42 (see Fig. 4, [0051]) of the operation member 22 is inserted into an internal space 24 (see Fig. 4, [0046]) of the accommodating member 18, and the accommodating member 18 is configured to be slidable (see Fig. 4, [0069], can be inserted into 18 and that 18 can be slidable along 42 via rotation, the definition of slide according to the online Merriam Webster dictionary being “the move smoothly along a surface” which proximal and distal rotation of 18 to connect onto 22 is occurring smoothly) along the distal end fitting portion 42 of the operation member 22 toward the distal end side 26 and the proximal end side proximal side of 14, and the endoscopic treatment tool is configured such that: the treatment tool main body is protruded from the first opening when the accommodating member is slid on the distal end fitting portion of the operation member toward the proximal end side, and at least a part of the protrusion range of the treatment tool main body is retracted from the first opening when the accommodating member is slid on the distal end fitting portion of the operation member toward the proximal end side
The language, " are formed by movement of the accommodating member," constitutes functional claim language, indicating that the claimed device need only be capable of being used in such a manner. The claim, however, is an apparatus claim, and is to be limited by structural limitations. The Office submits that the device of Ishikawa meets the structural limitations of the claim, and is capable of having the accommodating member 18 which is connected to the outer sheath 12 to control whether or not 16 is protruding from 12, by distally moving 18, this covers 16 and prevents it from being exposed, but while 18 is moved proximally and attached onto 42, 16 can be exposed as shown in Fig. 1.
The language, "the endoscopic treatment tool is configured such that: the treatment tool main body is protruded from the first opening when the accommodating member is slid on the distal end fitting portion of the operation member toward the proximal end side, and at least a part of the protrusion range of the treatment tool main body is retracted from the first opening when the accommodating member is slid on the distal end fitting portion of the operation member toward the proximal end side," constitutes functional claim language, indicating that the claimed device need only be capable of being used in such a manner. The claim, however, is an apparatus claim, and is to be limited by structural limitations. The Office submits that the device of Ishikawa meets the structural limitations of the claim, and is capable of the protrusion range the protruding part of 16 of the treatment tool 14 of being protruded while the accommodating member 18 is towards the proximal side towards 22 as when the length of 16 is held and 18 is retracted proximally (which is attached to the tube 12) this will cause more of 16 to come out from 26, and the reverse is held true when 18 is advanced distally away from 22, thus pushing 12 distally as well to cover 16.
Claim 15
Ishikawa discloses: An endoscopic treatment tool 10 (see Figs. 1-6 and 8, [0041]-[0042]) comprising: a treatment tool main body 14 (see Figs. 1 and 4, [0043]) that extends in a first direction the distal direction (see Figs. 1 and 4, 14 extends in a distal direction); an operation member 22 (see Figs. 1-5, [0043]) that is provided on a proximal end side proximal side of 14 (see Fig. 4, [0045]) of the treatment tool main body 14 and is used for operating (see [0057]) the treatment tool main body 14; and an accommodating member 18 + 12 (see Figs. 1-6 and 8, [0043] and [0046]) that has a tubular shape (see Figs. 1-6 and 8, 18 has a generally tubular shape as it is cylindrical and has at least two openings on the distal and proximal sides) and that accommodates the treatment tool main body 14 inside (see Figs. 1 and 4, [0045], 14 is inserted into an internal space 24 of 18) and has a through-hole 20 (see Figs. 1-6 and 8, [0043]) allowing fluid (see [0043], 20 is a water injection connector, hence water, a fluid, can be supplied inside) to be supplied inside, wherein the accommodating member 18 + 12 and the treatment tool main body 14 are configured to move relative to each other (see [0057], 16 can project and retract from the distal end 26 of 12, which with 18 forms the accommodating member) in the first direction distal direction so as to form a first state (see [0057], when 16 projects from distal end 26 of 12) in which the treatment tool main body 14 protrudes from a first opening the opening of 12 at 26 (see Fig. 1, [0057]) provided on a distal end side 26 (see Fig. 1, [0057]) of the accommodating member 18 + 12 or a second state (see [0057], when 16 is retracted from the distal end 26 of 12) in which at least a part of a protrusion range the protruding part of 16 (see Fig. 1, [0057]) of the treatment tool main body 14 in the first state (see [0057]) is retracted toward the proximal end side proximal side of 14 with respect to the first opening the opening of 12 at 26 and the endoscopic treatment tool 10 further comprises a first restricting portion 62 (see Figs. 1-6, [0059]) that restricts a distal end the distal end of 14 (see Figs. 1-6) of the treatment tool main body 14 from moving a predetermined distance or more (while 62 is preventing the rotation of 18, 18 is connected to 22, hence, 52 which controls how far 14 retracts proximally, is limited, unless 18 is disengaged and removed off, which then 14 can be taken out of 12, hence moving further proximally) toward the proximal end side the proximal side of 14 with respect to an opening edge the opening edge of 12 at 26 (see Fig. 1) of the first opening the opening of 12 at 26, wherein a distal end fitting portion 42 (see Fig. 4, [0051]) of the operation member 22 is inserted into an internal space 24 (see Fig. 4, [0046]) of the accommodating member 18, and the accommodating member 18 is configured to be slidable (see Fig. 4, [0069], can be inserted into 18 and that 18 can be slidable along 42 via rotation, the definition of slide according to the online Merriam Webster dictionary being “the move smoothly along a surface” which proximal and distal rotation of 18 to connect onto 22 is occurring smoothly) along the distal end fitting portion 42 of the operation member 22 toward the distal end side 26 and the proximal end side proximal side of 14, and the endoscopic treatment tool is configured such that: the treatment tool main body is protruded from the first opening when the accommodating member is slid on the distal end fitting portion of the operation member toward the proximal end side, and at least a part of the protrusion range of the treatment tool main body is retracted from the first opening when the accommodating member is slid on the distal end fitting portion of the operation member toward the proximal end side
The language, " are formed by movement of the accommodating member," constitutes functional claim language, indicating that the claimed device need only be capable of being used in such a manner. The claim, however, is an apparatus claim, and is to be limited by structural limitations. The Office submits that the device of Ishikawa meets the structural limitations of the claim, and is capable of having the accommodating member 18 which is connected to the outer sheath 12 to control whether or not 16 is protruding from 12, by distally moving 18, this covers 16 and prevents it from being exposed, but while 18 is moved proximally and attached onto 42, 16 can be exposed as shown in Fig. 1.
The language, "the endoscopic treatment tool is configured such that: the treatment tool main body is protruded from the first opening when the accommodating member is slid on the distal end fitting portion of the operation member toward the proximal end side, and at least a part of the protrusion range of the treatment tool main body is retracted from the first opening when the accommodating member is slid on the distal end fitting portion of the operation member toward the proximal end side," constitutes functional claim language, indicating that the claimed device need only be capable of being used in such a manner. The claim, however, is an apparatus claim, and is to be limited by structural limitations. The Office submits that the device of Ishikawa meets the structural limitations of the claim, and is capable of the protrusion range the protruding part of 16 of the treatment tool 14 of being protruded while the accommodating member 18 is towards the proximal side towards 22 as when the length of 16 is held and 18 is retracted proximally (which is attached to the tube 12) this will cause more of 16 to come out from 26, and the reverse is held true when 18 is advanced distally away from 22, thus pushing 12 distally as well to cover 16.
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.
Claim(s) 1-4, 6-8, 10-11, and 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ishikawa in view of Motai et al (US 20200038043 A1), herein referenced to as “Motai”.
Claim 1
Ishikawa discloses: An endoscopic treatment tool 10 (see Figs. 1-6 and 8, [0041]-[0042]) comprising: a treatment tool main body 14 (see Figs. 1 and 4, [0043]) of which a distal end part 16 (see Figs. 1-6, and 8, [0043]) which extends in a first direction the distal direction (see Figs. 1 and 4, 16 extends in the distal direction from 14); an operation member 22 (see Figs. 1-5, [0043]) that is provided on a proximal end side proximal side of 14 (see Fig. 4, [0045]) of the treatment tool main body 14; and an accommodating member 18 + 12 (see Figs. 1-6 and 8, [0043] and [0046]) that has a tubular shape (see Figs. 1-6 and 8, 18 has a generally tubular shape as it is cylindrical and has at least two openings on the distal and proximal sides) and that accommodates the treatment tool main body 14 inside (see Figs. 1 and 4, [0045], 14 is inserted into an internal space 24 of 18) and has a through-hole 20 (see Figs. 1-6 and 8, [0043]) allowing fluid (see [0043], 20 is a water injection connector, hence water, a fluid, can be supplied inside) to be supplied inside, wherein the accommodating member 18 + 12 and the treatment tool main body 14 are configured to move relative to each other (see [0057], 16 can project and retract from the distal end 26 of 12, which with 18 forms the accommodating member) in the first direction distal direction so as to form a first state (see [0057], when 16 projects from distal end 26 of 12) in which the treatment tool main body 14 protrudes from a first opening the opening of 12 at 26 (see Fig. 1, [0057]) provided on a distal end side 26 (see Fig. 1, [0057]) of the accommodating member 18 + 12 or a second state (see [0057], when 16 is retracted from the distal end 26 of 12) in which at least a part of a protrusion range the protruding part of 16 (see Fig. 1, [0057]) of the treatment tool main body 14 in the first state (see [0057]) is retracted toward the proximal end side proximal side of 14 with respect to the first opening the opening of 12 at 26, wherein a distal end fitting portion 42 (see Fig. 4, [0051]) of the operation member 22 is inserted into an internal space 24 (see Fig. 4, [0046]) of the accommodating member 18, and the accommodating member 18 is configured to be slidable (see Fig. 4, [0069], can be inserted into 18 and that 18 can be slidable along 42 via rotation, the definition of slide according to the online Merriam Webster dictionary being “the move smoothly along a surface” which proximal and distal rotation of 18 to connect onto 22 is occurring smoothly) along the distal end fitting portion 42 of the operation member 22 toward the distal end side 26 and the proximal end side proximal side of 14, and the endoscopic treatment tool is configured such that: the treatment tool main body is protruded from the first opening when the accommodating member is slid on the distal end fitting portion of the operation member toward the proximal end side, and at least a part of the protrusion range of the treatment tool main body is retracted from the first opening when the accommodating member is slid on the distal end fitting portion of the operation member toward the proximal end side
The language, " are formed by movement of the accommodating member," constitutes functional claim language, indicating that the claimed device need only be capable of being used in such a manner. The claim, however, is an apparatus claim, and is to be limited by structural limitations. The Office submits that the device of Ishikawa meets the structural limitations of the claim, and is capable of having the accommodating member 18 which is connected to the outer sheath 12 to control whether or not 16 is protruding from 12, by distally moving 18, this covers 16 and prevents it from being exposed, but while 18 is moved proximally and attached onto 42, 16 can be exposed as shown in Fig. 1.
The language, "the endoscopic treatment tool is configured such that: the treatment tool main body is protruded from the first opening when the accommodating member is slid on the distal end fitting portion of the operation member toward the proximal end side, and at least a part of the protrusion range of the treatment tool main body is retracted from the first opening when the accommodating member is slid on the distal end fitting portion of the operation member toward the proximal end side," constitutes functional claim language, indicating that the claimed device need only be capable of being used in such a manner. The claim, however, is an apparatus claim, and is to be limited by structural limitations. The Office submits that the device of Ishikawa meets the structural limitations of the claim, and is capable of the protrusion range the protruding part of 16 of the treatment tool 14 of being protruded while the accommodating member 18 is towards the proximal side towards 22 as when the length of 16 is held and 18 is retracted proximally (which is attached to the tube 12) this will cause more of 16 to come out from 26, and the reverse is held true when 18 is advanced distally away from 22, thus pushing 12 distally as well to cover 16.
Ishikawa does not explicitly disclose: the distal end part is configured to be opened and closed and the operation member is used for an opening and closing operation of the distal end part.
However, Motai in a similar field of invention teaches an endoscopic treatment tool 1 (see Figs. 1 and 12-13) with an operation member 65 (see Fig. 1); a treatment tool 60 (see Figs. 1 and 12-13) with a treatment tool main body 61 (see Fig. 1) and a distal end part 170 (see Figs. 1 and 12-13). Motai further teaches: the distal end part 170 is configured to be opened and closed (see Figs. 12-13, [0066]-[0067], the pair of jaws 171, 172 which comprise 170 open and close) and the operation member 65 is used for an opening and closing operation of the distal end part 170 (see [0067], the operation wire 175 which is connected to the operation member 65 is used to open and close 171 and 172).
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Ishikawa to incorporate the teachings of Motai and teach an endoscopic treatment tool with the distal end part of the treatment tool main body is configured to be opened and closed and the operation member is used for an opening and closing operation of the distal end part. Motivation for such can be found in Motai as this tool can be used to grasp and retrieve necrotic tissue (see [0069]).
Claim 2
The combination of Ishikawa and Motai teaches: The endoscopic treatment tool according to claim 1, see 103 rejection above. Ishikawa further discloses: wherein a position the relative position of 14 of the treatment tool main body 14 with respect to the operation member 22 is fixed (see [0057], when 22 is actuated this then moves 14, hence the position of 14 is fixed relative to 22), and the accommodating member 18 is configured to move in the first direction distal direction (see Fig. 4, [0051], 18 can be moved distally via rotation off of 42) with respect to the operation member 22.
Claim 3
The combination of Ishikawa and Motai teaches: The endoscopic treatment tool according to claim 2, see 103 rejection above. Ishikawa further discloses: wherein the accommodating member 18 is slidably coupled (see [0070], there is slidable contact between 62, which is part of 18, and 64, which is part of 22 via 42 and this sliding action is part of the coupling between 18 and 22) to the operation member 22.
Claim 4
The combination of Ishikawa and Motai teaches: The endoscopic treatment tool according to claim 3, see 103 rejection above. Ishikawa further discloses: wherein the accommodating member 18 is attachable to and detachable (see Fig. 4, [0051] and [0070], 18 can be disengaged from 22 via off of 42 with rotating and sliding action) from the operation member 22.
Claim 6
The combination of Ishikawa and Motai teaches: The endoscopic treatment tool according to claim 1, see 103 rejection above. Ishikawa further discloses: further comprising: a first restricting portion 62 (see Figs. 1-6, [0059]) that restricts a distal end the distal end of 14 (see Figs. 1-6) of the treatment tool main body 14 from moving a predetermined distance or more (while 62 is preventing the rotation of 18, 18 is connected to 22, hence, 52 which controls how far 14 retracts proximally, is limited, unless 18 is disengaged and removed off, which then 14 can be taken out of 12, hence moving further proximally) toward the proximal end side the proximal side of 14 with respect to an opening edge the opening edge of 12 at 26 (see Fig. 1) of the first opening the opening of 12 at 26.
Claim 7
The combination of Ishikawa and Motai teaches: The endoscopic treatment tool according to claim 6, see 103 rejection above. Ishikawa further discloses: wherein the first restricting portion 62 is provided at the accommodating member 18 (see Fig. 4, 62 is on 18).
Claim 8
The combination of Ishikawa and Motai teaches: The endoscopic treatment tool according to claim 7, see 103 rejection above. Ishikawa further discloses: wherein the first restricting portion 62 is provided at a proximal end part 18a (see Fig. 4, [0052], 62 is on the proximal end part of 18) of the accommodating member 18.
Claim 10
The combination of Ishikawa and Motai teaches: The endoscopic treatment tool according to claim 1, see 103 rejection above. Ishikawa further discloses: further comprising: a sealing member 44 (see Fig. 4, [0051]) provided between an inner peripheral surface inner surface of 24 (see Fig. 4, [0045]) of the accommodating member 18 on the proximal end side 18a (see Fig. 4, [0052]) and an outer peripheral surface the outer surface of 14 (see Fig. 4, 44 fits between the inner surface of 18 defined by 24 and the 14) of the treatment tool main body 14.
Claim 11
The combination of Ishikawa and Motai teaches: The endoscopic treatment tool according to claim 10, see 103 rejection above. Ishikawa further discloses: wherein the sealing member 44 is provided on the proximal end side 18a with respect to the through-hole 20 (see Fig. 4, 44 is proximal compared to 20).
Claim 13
The combination of Ishikawa and Motai teaches: The endoscopic treatment tool according to claim 1, see 103 rejection above. Motai further teaches: wherein the operation member 65 includes a main body part 66 (see Fig. 1, [0042]) and an operation element 67 (see Fig. 1, [0042]) supported by the main body part 66 so as to be movable in the first direction (see [0042], 67 is slidable on 66 distally), and the distal end part 170 of the treatment tool main body 61 is openable and closable in response to movement of the operation element 67 (see [0067], the operation wire 175 which is connected to the operation member 65 is used to open and close 171 and 172).
Conclusion
Applicant's amendment necessitated the 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 RAIHAN R KHANDKER whose telephone number is (571)272-6174. The examiner can normally be reached Monday - Friday 7:00 PM - 3:00 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Darwin Erezo can be reached at 571-272-4695. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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RAIHAN R. KHANDKER
Examiner
Art Unit 3771
/RAIHAN R KHANDKER/Examiner, Art Unit 3771
/DARWIN P EREZO/Supervisory Patent Examiner, Art Unit 3771