DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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 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.
Claim Objections
Claim 1 is objected to because of the following informalities: line 8 should be amended to -which the release mechanism is actuable by motion of the inner portion-. 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.
The following claim limitations
Releasing mechanism (claim 1)
has/have been interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because it uses/they use a generic placeholder
Mechanism (Releasing mechanism - claim 1)
coupled with functional language
for releasing the sleeve from the outer portion (Releasing mechanism - claim 1)
without reciting sufficient structure to achieve the function. Furthermore, the generic placeholder is not preceded by a structural modifier.
Since the claim limitation(s) invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, claim(s) 1 has/have been interpreted to cover the corresponding structure described in the specification that achieves the claimed function, and equivalents thereof.
A review of the specification shows that the following appears to be the corresponding structure described in the specification for the 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph limitation:
lever arm (¶0032) or slanting first contact surface (¶0033) (Releasing mechanism - claim 1)
If applicant wishes to provide further explanation or dispute the examiner’s interpretation of the corresponding structure, applicant must identify the corresponding structure with reference to the specification by page and line number, and to the drawing, if any, by reference characters in response to this Office action.
If applicant does not intend to have the claim limitation(s) treated under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112 , sixth paragraph, applicant may amend the claim(s) so that it/they will clearly not invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, or present a sufficient showing that the claim recites/recite sufficient structure, material, or acts for performing the claimed function to preclude application of 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
For more information, see MPEP § 2173 et seq. and Supplementary Examination Guidelines for Determining Compliance With 35 U.S.C. 112 and for Treatment of Related Issues in Patent Applications, 76 FR 7162, 7167 (Feb. 9, 2011).
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.
Claims 1, 3 and 5 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by BR PI0614821 A2 to Conway (see English language machine translation attached to this or a previous office action).
Conway discloses:
Regarding claim 1:
A surgical instrument (figure 1-4) for piercing into a human or animal body, the instrument comprising:
an inner portion (11/15/17) which is movably arranged within a needle-like outer portion (19),
wherein the outer portion (19) connects to the inner portion (11/15/17) through a spring (66) so as to provide with the outer portion (19) during use a load on the inner portion (11/15/17) (spring applies a force between inner portion 11/15/17 via 75 and the outer portion 19),
wherein the outer portion (19) is provided with a proximal sleeve (25) that provides a finger grip (see the outer diameter of 25 as shown in figure 1) to a person (intended use however see the “user” on page 3),
wherein the sleeve (25) is releasably connectable to the outer portion (19) (sleeve 25 is releasably connected to the outer portion 19 via 26); and
a release mechanism (see the release mechanism A in figure 1 below which is a lever arm extending from 26 that allow the user to pull the hook B back from the edge 27 which is consistent with the 35 USC 112(f) interpretation above) for releasing the sleeve (25) from the outer portion (19), which release mechanism (A in figure 1 below) is actuable by motion of the inner portion (11/15/17) (release mechanism A moves position based on the motion of the inner portion 11/15/17 relative to the outer portion 19 to allow it to engage with edge 27 or edge 28),
wherein the outer portion (19) is provided with a proximal ring or edge (27 or 28)(as shown in figure 1); and
the sleeve (25) comprises a displaceable hook (see the hook B in figure 1 below) for hooking behind the ring or edge (27 or 28) to provide a connection (holds the outer portion and the sleeve in one of two position as shown in figures 2 and 3) between the outer portion (19) and the sleeve (25),
wherein the release mechanism (A in figure 1 below) can be operable on the hook (B in figure 1 below) to remove it (the portion A is used by the user to lift the hook from the ring 27 or 28; see page 5 of the translation) from its position behind the ring or edge (27 or 28).
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Figure 1 – figure 1 of Conway, annotated by the examiner
Regarding claim 3:
The surgical instrument of claim 1, wherein the release mechanism (A in figure 1 above) comprises a slanting first contact surface (see the slanting surface C in figure 1 above) that is tailored to a correspondingly slanting second contact surface (see the slanting surface D in figure 1 above) disposed on the hook (B in figure 1 above).
Regarding claim 5:
The surgical instrument of claim 1, wherein the release mechanism (A in figure 1 above) comprises a lever arm (see the lever arm A extending from 26) which is mounted proximal (mounted on the proximal end or end closest to 22 of the inner portion) on the inner portion (11/15/17).
Allowable Subject Matter
Claims 2, 4 and 6 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The following is pertinent prior art:
US-20150265777-A1
WHITLEY
See sleeve 110
US-20130310750-A1
Hopman
See the sleeve 12
US-20070260184-A1
Justis
See the sleeve 404
US-6027518-A
Gaber
See the sleeve 204
JP-H11504234-A
ユーン，インバエ
See the sleeve 18
WO-9404206-A1
YOON
See the sleeve 38
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/WESLEY G HARRIS/Examiner, Art Unit 3783