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 .
Election/Restrictions
Applicant’s election without traverse of Group I, Claims 1-22 in the reply filed on 7/1/26 is acknowledged.
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 1-22 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 1 (rest by dependency) recites “a sampling needle extending between a base and a tip”. A base and a tip of what? It is unclear if this limitation refers to the sampling needle having a base and a tip or that the sampling needle extends from the base to the tip of some other object.
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.
Claim(s) 1 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Herrin et al. (US 20220183667 A1 – cited by Applicant), hereinafter Herrin.
Regarding Claim 1, Herrin teaches: A sampling device insertable into a bronchoscope to obtain samples of target nodules in lungs of a patient (abstract; paragraph 0052), the sampling device comprising:
a sampling needle extending between a base and a tip (abstract);
a needle inlet guide tube (abstract) removably couplable to the bronchoscope and defining a working lumen (paragraph 0008); and
a needle actuator configured to receive the base of the sampling needle to extend the sampling needle through the working lumen (abstract; paragraph 0013-0016), the needle actuator engageable with the needle inlet guide tube to move the sampling needle through the sampling device (paragraph 0019-0023);
the sampling device including operating states, in each of the operating states the needle actuator moves relative to the needle inlet guide tube to move the tip of the sampling needle with respect to the sampling device (paragraph 0018-0020).
Claim Rejections - 35 USC § 103
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 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) 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over Herrin in view of Dull et al. (US 20210196251 A1), hereinafter Dull.
Regarding Claim 2, Herrin teaches: The sampling device of claim 1, wherein the operating states comprise:
a detached state (paragraph 0055);
a locked state (paragraph 0060-0065);
an armed state (paragraph 0018-0020; ready position);
a standard sampling state (paragraph 0018-0020; sampling position); and but does not explicitly mention an extended sampling state.
Dull teaches that needle extension can be controlled to a desired plunging distance (paragraph 0037). It would have been obvious to one of ordinary skill in the art, before the effective filing date to have modified the device to include an extended sampling state, in order to get to places not accessible from the standard sampling state.
Allowable Subject Matter
Claim 3-22 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.
The following is a statement of reasons for the indication of allowable subject matter: The closest prior arts of Hernin and Panzenbeck et al (US 20210059648 A1) fails to teach the claimed engagement ramp that engages with the actuator as the device state changes and a locking groove to lock in a state and a housing with first and second buttons. None of the prior art considered, alone or in combination, teaches that particular feature combined with the other limitations of the claim.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAY B SHAH whose telephone number is (571)272-0686. The examiner can normally be reached M-F 8-5.
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JAY SHAH
Primary Examiner
Art Unit 3791
/JAY B SHAH/Primary Examiner, Art Unit 3791
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