DETAILED ACTION
This action is in response to applicant's amendments filed 09/28/23.
The examiner acknowledges the amendments to the claims and specification.
Claims 2-22 are pending in this application.
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 Objections
Claim 22 is objected to because of the following informalities: line 1 recites “The closure assembly of claim 39”. However, the limitation should instead read as --The closure assembly of claim 20--. Appropriate correction is required.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
“a biasing member” in claim 13
“an engagement member” in claim 14.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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.
Claims 2-5, 10-17, 19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Lamser et al., hereinafter “Lamser” (U.S. Pub. No. 2015/0331443).
Regarding claim 2, Lamser discloses a closure assembly for a surgical device (see abstract) comprising:
a movement unit including a bar 275 (Figure 26, [0187]) that moves in a direction of a prescribed motion ([0188]; since the lever 30 may be pulled toward or away from palm grip 115 of handle 25, the bar 275 on the lever is movable in a proximal or distal direction, such as proximally towards the palm grip or distally away from the palm grip; it is noted that “a direction of a prescribed motion” is interpreted as a general predetermined way in which an element can move [e.g. proximally, distally] due to the structure of the closure assembly, and not necessarily an exact movement path or movement between a lockable state and unlockable state); and
a latch unit including a hook latch 255 (Figure 26, [0186]) that selectively receives the bar 275 ([0188]), the hook latch being movable between a first state (latched; Figure 31) and a second state (unlatched; Figures 28, 35).
Regarding claim 3, Lamser discloses the hook latch 255 is movable in the
direction of the prescribed motion ([0173], Figure 7; since the lever 30 is rotatably pinned at 105 to handle 25 [which holds latch plate 210 and hook latch 255 in palm grip 115 of the handle], if the lever is held stationary the handle/hook latch may move towards the lever in a distal direction or away from the lever in a proximal direction; it is noted that “a direction of a prescribed motion” is interpreted as a general predetermined way in which an element can move [e.g. proximally, distally] due to the structure of the closure assembly, and not necessarily an exact movement path or movement between a lockable state and unlockable state).
Regarding claim 4, Lamser discloses the latch unit further includes a latch
plate 210 (Figure 23).
Regarding claim 5, Lamser discloses the hook latch 255 extends from a surface
of the latch plate 210 (Id.).
Regarding claim 10, Lamser discloses the first state is a lockable state (latched; Figure 31) where the hook latch 255 is engageable by the bar 275 of the movement unit ([0188]).
Regarding claim 11, Lamser discloses the second state is an unlockable state (unlatched; Figures 28, 35) where the bar 275 does not reach the hook latch 255 ([0188]) or the hook latch is moved out of alignment with the prescribed motion so that the hook latch is not engaged by the bar (Id.).
Regarding claim 12, Lamser discloses an adjustment switch (thumb button 215 of selector plate 205; Figures 18-22, 24) that is operable to move the hook latch between the first state and the second state ([0189]).
Regarding claim 13, Lamser discloses a biasing member (spring 240; Figures 21, 23-24, [0188]) positioned between the hook latch and the adjustment switch (Id.).
Regarding claim 14, Lamser discloses a closure assembly (see abstract) for a surgical device comprising:
a movement unit including an engagement member 275 (Figure 26, [0187]) that moves in a direction of a prescribed motion ([0188]; since the lever 30 may be pulled toward or away from palm grip 115 of handle 25, the engagement member 275 on the lever is movable in a proximal or distal direction, such as proximally towards the palm grip or distally away from the palm grip; it is noted that “a direction of a prescribed motion” is interpreted as a general predetermined way in which an element can move [e.g. proximally, distally] due to the structure of the closure assembly, and not necessarily an exact movement path or movement between a lockable state and unlockable state); and
a latch unit including a latch plate 210 (Figure 23) including a hook latch 255 ([0186]) that selectively receives the engagement member 275 ([0188]), the latch plate being movable between a first state (latched; Figure 31) and a second state (unlatched; Figures 28, 35).
Regarding claim 15, Lamser discloses the latch plate 210 is movable in the
direction of the prescribed motion ([0173], Figure 7; since the lever 30 is rotatably pinned at 105 to handle 25 [which holds latch plate 210 and hook latch 255 in palm grip 115 of the handle], if the lever is held stationary the handle/hook latch may move towards the lever in a distal direction or away from the lever in a proximal direction; it is noted that “a direction of a prescribed motion” is interpreted as a general predetermined way in which an element can move [e.g. proximally, distally] due to the structure of the closure assembly, and not necessarily an exact movement path or movement between a lockable state and unlockable state).
Regarding claim 16, Lamser discloses the latch plate 210 includes a bias member comprising a deformable body (spring 240; Figures 21, 23-24, [0188]).
Regarding claim 17, Lamser discloses the latch plate 210 includes a guide
aperture 245 (Figure 24; [0185]) that receives a connection pin 250 of the surgical device (Id.).
Regarding claim 19, Lamser discloses an adjustment switch (thumb button 215 of selector plate 205; Figures 18-22, 24) that moves the latch plate 210 between the first state and the second state ([0189]).
Claims 2-6, 9-17, 19-20, 22 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Miersch (U.S. Pub. No. 2006/0206144).
Regarding claim 2, Miersch discloses a closure assembly (Figures 1-3) for a surgical device ([0022]) comprising:
a movement unit including a bar (first toothed rack 12) that moves in a direction of a prescribed motion ([0020]; since gripping parts 7, 8 are pivotable relative to each other about joint 9, the bar 12 on gripping part 7 is movable in a distal or proximal direction, such as distally towards the gripping part 8 or proximally away from the gripping part 8; it is noted that “a direction of a prescribed motion” is interpreted as a general predetermined way in which an element can move [e.g. distally, proximally] due to the structure of the closure assembly, and not necessarily an exact movement path or movement between a lockable state and unlockable state); and
a latch unit including a hook latch (any of grooves between teeth on second toothed rack 13; Figures 1-3) that selectively receives the bar 12 ([0023], [0028]), the hook latch being movable between a first state (engaged with first toothed rack 12; Figure 3) and a second state (disengaged with first toothed rack 12; Figure 1).
Regarding claim 3, Miersch discloses the hook latch (any of grooves between teeth on second toothed rack 13) is movable in the direction of the prescribed motion ([0020]; since gripping parts 7, 8 are pivotable relative to each other about joint 9, the hook latch on second toothed rack 13 on gripping part 8 is movable in a proximal or distal direction, such as proximally towards the gripping part 7 or distally away from the gripping part 7; it is noted that “a direction of a prescribed motion” is interpreted as a general predetermined way in which an element can move [e.g. proximally, distally] due to the structure of the closure assembly, and not necessarily an exact movement path or movement between a lockable state and unlockable state).
Regarding claim 4, Miersch discloses the latch unit further includes a latch
plate (see thin, planar second toothed rack 13; Figures 1-3).
Regarding claim 5, Miersch discloses the hook latch (any of grooves between teeth on second toothed rack 13) extends from a surface of the latch plate 13 (Id.).
Regarding claim 6, Miersch discloses the latch plate 13 includes a guide aperture (at bearing point 15; [0023]) and the latch plate is pivotable about the guide aperture (via pivot lever 14).
Regarding claim 9, Miersch discloses the guide aperture 15 receives a
connection pin (element within bearing that allows pivoting of pivot lever 14; Id.) of the surgical device.
Regarding claim 10, Miersch discloses the first state is a lockable state (engaged with first toothed rack 12; Figure 3) where the hook latch (any of grooves between teeth on second toothed rack 13) is engageable by the bar 12 of the movement unit.
Regarding claim 11, Miersch discloses the second state is an unlockable state (disengaged with first toothed rack 12; Figure 1) where the bar 12 does not reach the hook latch (any of grooves between teeth on second toothed rack 13) or the hook latch is moved out of alignment with the prescribed motion so that the hook latch is not engaged by the bar (Id.).
Regarding claim 12, Miersch discloses an adjustment switch 17 or 18 ([0024]-[0026]) that is operable to move the hook latch (any of grooves between teeth on second toothed rack 13) between the first state and the second state.
Regarding claim 13, Miersch discloses a biasing member (spring 21; Figure 1, [0027]) positioned between the hook latch (any of grooves between teeth on second toothed rack 13) and the adjustment switch 17 (Id.).
Regarding claim 14, Miersch discloses a closure assembly (Figures 1-3) for a surgical device ([0022]) comprising:
a movement unit including an engagement member (first toothed rack 12) that moves in a direction of a prescribed motion ([0020]; since gripping parts 7, 8 are pivotable relative to each other about joint 9, the engagement member 12 on gripping part 7 is movable in a distal or proximal direction, such as distally towards the gripping part 8 or proximally away from the gripping part 8; it is noted that “a direction of a prescribed motion” is interpreted as a general predetermined way in which an element can move [e.g. distally, proximally] due to the structure of the closure assembly, and not necessarily an exact movement path or movement between a lockable state and unlockable state); and
a latch unit including a latch plate (see thin, planar second toothed rack 13; Figures 1-3) including a hook latch (any of grooves between teeth on second toothed rack 13) that selectively receives the engagement member ([0023], [0028]), the latch plate being movable between a first state (engaged with first toothed rack 12; Figure 3) and a second state (disengaged with first toothed rack 12; Figure 1).
Regarding claim 15, Miersch discloses the latch plate 13 is movable in the
direction of the prescribed motion ([0020]; since gripping parts 7, 8 are pivotable relative to each other about joint 9, the latch plate 13 on gripping part 8 is movable in a proximal or distal direction, such as proximally towards the gripping part 7 or distally away from the gripping part 7; it is noted that “a direction of a prescribed motion” is interpreted as a general predetermined way in which an element can move [e.g. proximally, distally] due to the structure of the closure assembly, and not necessarily an exact movement path or movement between a lockable state and unlockable state).
Regarding claim 16, Miersch discloses the latch plate 13 including a bias member comprising a deformable body (spring 21; Figure 1, [0027]).
Regarding claim 17, Miersch discloses the latch plate includes a guide aperture (at bearing point 15; [0023]) that receives a connection pin (element within bearing that allows pivoting of pivot lever 14; Id.) of the surgical device.
Regarding claim 19, Miersch discloses further comprising an adjustment switch 17 or 18 ([0024]-[0026]) that moves the latch plate 13 between the first state and the second state (Id.).
Regarding claim 20, Miersch discloses a closure assembly (Figures 1-3) for a surgical device ([0022]) comprising:
a movement unit including a bar (first toothed rack 12) that moves in a direction of a prescribed motion ([0020]; since gripping parts 7, 8 are pivotable relative to each other about joint 9, the bar 12 on gripping part 7 is movable in a distal or proximal direction, such as distally towards the gripping part 8 or proximally away from the gripping part 8; it is noted that “a direction of a prescribed motion” is interpreted as a general predetermined way in which an element can move [e.g. distally, proximally] due to the structure of the closure assembly, and not necessarily an exact movement path or movement between a lockable state and unlockable state); and
a latch unit including a latch plate (see thin, planar second toothed rack 13; Figures 1-3) including a guide aperture (at bearing point 15; [0023]) and a hook latch (any of grooves between teeth on second toothed rack 13) that selectively receives the bar 12 ([0023], [0028]), the latch plate being pivotable about the guide aperture (via pivot lever 14) and movable in the direction of the prescribed motion between a lockable state and an unlockable state ([0020]; since gripping parts 7, 8 are pivotable relative to each other about joint 9, the latch plate 13 on gripping part 8 is movable in a proximal or distal direction, such as proximally towards the gripping part 7 to move in a lockable state or distally away from the gripping part 7 to move in an unlockable state; it is noted that “a direction of a prescribed motion” is interpreted as a general predetermined way in which an element can move [e.g. proximally, distally] due to the structure of the closure assembly, and not necessarily an exact movement path).
Regarding claim 22, Miersch discloses the latch plate 13 includes one or more
bias members (spring 21; Figure 1, [0027]).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 2-6, 8-17, 19-20, 22 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 5-7, 12 of U.S. Patent No. 10,786,299. Although the claims at issue are not identical, they are not patentably distinct from each other because it is clear the patent claims encompass the limitations of the application claims (see chart below with corresponding claims).
Application No.
18/354,315 claims
U.S. Patent No.
10,786,299 claims
2
1
3
1
4
1
5
1
6
2
7
8
3
9
5
10
1
11
1
12
12
13
6
14
1
15
1
16
7
17
5
18
19
12
20
2
21
22
2
Claims 2-22 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9, 12-14, 17-19 of U.S. Patent No. 11,744,637. Although the claims at issue are not identical, they are not patentably distinct from each other because it is clear the patent claims encompass the limitations of the application claims (see chart below with corresponding claims).
Application No.
18/354,315 claims
U.S. Patent No.
11,744,637 claims
2
1
3
1
4
1
5
1
6
2
7
3
8
7
9
6
10
4
11
5
12
8
13
9
14
12
15
12
16
13
17
12
18
12
19
14
20
17
21
18
22
19
Allowable Subject Matter
Claims 7-8, 18, and 21 would be allowable if a Terminal Disclaimer was filed to overcome the double patenting rejections 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: None of the prior art of record, alone or in combination, teaches or renders obvious a closure assembly for a surgical device including, inter alia, a bar that moves in a direction of a prescribed motion, a latch unit including a latch plate and a hook latch movable in the direction of the prescribed motion, the latch plate including a guide aperture and the latch plate is pivotable about the guide aperture, wherein the latch plate is movable longitudinally along the guide aperture, as in claim 7. As discussed above, Miersch discloses the latch plate 13 includes a guide aperture (at bearing point 15; [0023]) and the latch plate is pivotable about the guide aperture (via pivot lever 14), however does not teach the latch plate also being movable longitudinally along the guide aperture.
None of the prior art of record, alone or in combination, teaches or renders obvious a closure assembly for a surgical device including, inter alia, a bar that moves in a direction of a prescribed motion, a latch unit including a latch plate and a hook latch movable in the direction of the prescribed motion, the latch plate including a guide aperture and the latch plate is pivotable about the guide aperture, the guide aperture is elongated and has a longitudinal dimension that is greater than a lateral dimension, as in claim 8. As discussed above, Miersch discloses the latch plate 13 includes a guide aperture (at bearing point 15; [0023]) and the latch plate is pivotable about the guide aperture (via pivot lever 14), however does not teach the guide aperture is elongated and has a longitudinal dimension that is greater than a lateral dimension.
None of the prior art of record, alone or in combination, teaches or renders obvious a closure assembly for a surgical device including, inter alia, an engagement member that moves in a direction of a prescribed motion, a latch plate including a hook latch that selectively receives the engagement member, wherein the latch plate includes a guide aperture that receives a connection pin of the surgical device, wherein the latch plate is pivotable about the guide aperture and movable longitudinally along the guide aperture, as in claim 18. As discussed above, Miersch discloses the latch plate 13 includes a guide aperture (at bearing point 15; [0023]) and the latch plate is pivotable about the guide aperture (via pivot lever 14), however does not teach the latch plate also being movable longitudinally along the guide aperture.
None of the prior art of record, alone or in combination, teaches or renders obvious a closure assembly for a surgical device including, inter alia, a bar that moves in a direction of a prescribed motion, a latch plate including a guide aperture and a hook latch that selectively receives the bar, the latch plate being pivotable about the guide aperture and movable in the direction of the prescribed motion between a lockable state and an unlockable state, wherein the latch plate is translatable along the guide aperture, as in claim 21. As discussed above, Miersch discloses the latch plate 13 includes a guide aperture (at bearing point 15; [0023]) and the latch plate is pivotable about the guide aperture (via pivot lever 14), however does not teach the latch plate also being translatable along the guide aperture.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Mayenberger et al., hereinafter “Mayenberger” (U.S. Patent No. 5,951,577) teaches a movement unit including a bar 18 and a hook latch 17 on latch plate 15.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DIANE D YABUT whose telephone number is (571)272-6831. The examiner can normally be reached M-F 9am-5pm.
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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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/DIANE D YABUT/Primary Examiner, Art Unit 3771
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