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
The previous objection of claims 1 and 3-23 due to minor informalities has been withdrawn in light of applicant’s amendments made 12/16/2025.
The objection to the drawings is withdrawn in light of the amendments made to the specification submitted 12/16/2025.
With respect to the claim rejections under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite, applicant argues the pair of clip struts are only recited to give context to the structural configuration of the device as being configured to engage the recited configuration of the device. While some of the claim amendments have overcome the rejections due to “configured to” language, others remain due to positively claiming the clip struts, as discussed below.
Applicant’s arguments, see pages 10-11, filed 12/16/2025, with respect to Hughett, SR. et al. (US 2013/0131649 A1) have been fully considered and are persuasive. Specifically, Hughett does not disclose an initial opening action from a jaw closed position, in which the respective distal jaw ends of the pair of jaws are in mutual contact. The rejection of claims 1-23 has been withdrawn.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed application, Application Nos. 62/622,751, 62/650,766, and 62/727,850, fail to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application. For example, the above applications fail to provide support for a surgical clip delivery device end effector comprising a clevis wherein a movement of the jaws in an initial opening action separates the proximal ends of the clip struts before separating the distal ends of the clip struts as required by independent claims 1 and 22-23. Accordingly, claims 1-23 have an effective filing date of 10/10/2018.
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 4, 6-7, 9-10, 12-16 and 18 are 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.
Claim 4 recites “a connector pivot” and “a second of the two angular degrees of freedom” in lines 7-8. Claim 4 depends from claim 3 which recites “a connector pivot” and “a second of the two angular degrees of freedom” in lines 9-10. It is unclear if the two limitation of claim 4 are intended to be the same or in addition to that of claim 3.
Claim 6 recites “after separating the pair of clip struts with respect to one another no further than the pair of clip struts being parallel and with an interior space between the pair of clip struts being unobstructed” in lines 1-3 in which the pair of clip struts are positively claimed. However, claim 1 from which claim 6 depends only functionally recites the pair of clip struts. Therefore, it is unclear whether the applicant has intended to claim the combination of the delivery device and the clip including the clip struts having or the function of the sub-combination, the delivery device.
Claim 7 recites “after separating the pair of clip struts with respect to one another and with an interior space between the pair of clip struts being unobstructed” in lines 1-2 in which the pair of clip struts are positively claimed. However, claim 1 from which claim 6 depends only functionally recites the pair of clip struts. Therefore, it is unclear whether the applicant has intended to claim the combination of the delivery device and the clip including the clip struts having or the function of the sub-combination, the delivery device.
Claim 9 recites the limitation “each clip-connecting end of the pair of clip-connecting ends is a strut pin having a given exterior shape corresponding to an interior shape of a port of the proximal end surface of each clip strut” thereby positively claiming the shape of the clip struts. Claim 3, from which claim 9 depends, does not positively recite the “clip struts”. Instead, the clip struts are functionally recited as part of a clip which the device is “configured to implant” (see claim 1). Therefore, it is unclear whether the applicant has intended to claim the combination of the device and the clip including the clip struts having the claimed shape or the function of the sub-combination, device.
Claims 12 and 15-16 only further define the clip struts. Claims 12 and 15-16 depend from claim 1 in which the clip struts are only functionally claimed. Therefore, it is unclear whether the applicant has intended to claim the combination of the delivery device and the clip including the clip struts having or the sub-combination, the delivery device.
Claim 13 recites “a movement of the pair of jaws in a first opening direction separates the proximal ends of the pair of clip struts at least to the given width before separating the distal ends of the pair of clip struts” in lines 3-6 in which the pair of clip struts are positively claimed. However, claims 1 and 12 from which claim 13 depends only functionally recites the pair of clip struts. Therefore, it is unclear whether the applicant has intended to claim the combination of the delivery device and the clip including the clip struts having or the function of the sub-combination, the delivery device.
Claim 14 recites “each clip strut of the pair of clip struts has a width no greater than 4.95 mm; and a movement of the pair of jaws in a first opening direction separates the proximal ends of the pair of clip struts by at least 4.95 mm before separating the distal ends of the pair of clip struts” in which the pair of clip struts are positively claimed. However, claims 1 and 12 from which claim 14 depends only functionally recites the pair of clip struts. Therefore, it is unclear whether the applicant has intended to claim the combination of the delivery device and the clip including the clip struts having or the function of the sub-combination, the delivery device.
Claim 18 recites the limitation “an initial opening action” in line 2. However, claim 1, from which claim 18 depends, recites “an initial opening action” in line 11. Therefore, it is unclear whether the initial opening action of claim 18 is the same or in addition to that of claim 1.
Claim 10 is dependent upon rejected claim 9; therefore, is also rejected.
Allowable Subject Matter
Claims 1-3, 5, 8, 11, 17 and 19-23 are allowed.
Claims 4, 6-7, 9-10, 12-16 and 18 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include 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: The closest prior art of record, Hughett, SR. et al. (US 2013/0131649 A1), does not disclose or fairly suggest, either singly or in combination of any of the prior art of record, the claimed invention of independent claim 1, which recites, inter alia “a movement of the pair of jaws in an initial opening action from a jaw closed position, in which the respective distal jaw ends of the pair of jaws are in mutual contact, is configured to separate the proximal ends of the pair of clip struts before separating the distal ends of the pair of clip struts” and/or the claimed invention of independent claim 22, which recites, inter alia “a movement of the pair of jaws in an initial opening action from a jaw closed position, in which respective distal jaw ends of the pair of jaws are in mutual contact, is configured to separate the proximal ends of the pair of clip struts before separating the distal ends of the pair of clip struts” and/or the claimed invention of independent claim 23, which recites, inter alia “a first opening movement of the pair of jaws from a jaw closed position, in which respective distal jaw ends of the pair of jaws are in mutual contact with each other, is configured to separate the proximal ends of the pair of clip struts apart greater than the distal ends of the pair of clip struts and a later opening action is configured to separate the distal ends apart greater than the proximal ends”.
Hughett discloses the pair of jaws (link clips 780, 782; Fig. 49) are spaced from one another in the jaw closed position (Fig. 60) rather than in mutual contact. It would not have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the pair of jaws of Hughett to be in mutual contact with one another when in the jaw closed position because the pull link 764 is disposed between the pair of jaws (Fig. 60). Thereby, such a modification would require a substantial reconstruction and redesign of the elements shown in Hughett and how the jaws open and close to first separate the proximal ends of the clip struts while the distal ends of the clip struts move closer to one another (Fig. 62).
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 SARAH A LONG whose telephone number is (571)270-3865. The examiner can normally be reached Monday-Friday 9am-5pm.
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/SARAH A LONG/Primary Examiner, Art Unit 3771