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 .
Status of the Claims
This Office Action is responsive to the amendment filed November 11, 2025. As directed by the amendment: Claims 1, 9, and 12 have been amended. Claims 5, 6, 8, 10, and 13 have been cancelled. Claims 1-4, 7, 9, 11, 12, and 14 are presently pending in this application.
Claim Objections
Claim 11 is objected to because of the following informalities: In ll. 1, the phrase “The surgical retractor of claim 10” appears to be mis-written because claim 10 has been cancelled. Appropriate correction is required.
Claim Rejections - 35 USC § 112(a)
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-4, 7, 9, 11, 12, and 14 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claim 1, ll. 23-28, the phrase “the first and second legs configured to move between a closed position and a plurality of open positions such that rotation of the adjustment component in an opposite direction reduces retraction force without collapse under tissue pressure, and such that the surgical retractor is configured to permit intra-operative radiographic imaging while remaining in place without obscuring anatomical detail” renders new matter as the originally filed disclosure is silent on this feature. Applicant is suggested to cancel any new matter in order to overcome this rejection.
Regarding claim 12, ll. 13-14, the phrase “such that the operative portions of the retractor remain visible to the surgeon while permitting intra-operative imaging without removal” and ll. 19-22, the phrase “to provide continuous, sub-millimeter incremental adjustment of spacing between the legs and to reduce retraction force without collapse under tissue pressure such that edges of a tissue separate or are loosened from a recent separation” renders new matter as the originally filed disclosure is silent on this feature. Applicant is suggested to cancel any new matter in order to overcome this rejection.
Claims 2-4, 7, 9, 11, and 14 are rejected on being dependent on a rejected base claim.
Claim Rejections - 35 USC § 112(b)
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 1-4, 7, 9, 11, 12, and 14 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 recites the limitation "the spacing" in ll. 21. There is insufficient antecedent basis for this limitation in the claim.
The term “smooth” in claim 1 is a relative term which renders the claim indefinite. The term “smooth” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
Regarding claim 1, ll. 23-28, the phrase “the first and second legs configured to move between a closed position and a plurality of open positions such that rotation of the adjustment component in an opposite direction reduces retraction force without collapse under tissue pressure, and such that the surgical retractor is configured to permit intra-operative radiographic imaging while remaining in place without obscuring anatomical detail” is unclear as to what is meant by the phrase. Amendment and clarification are required.
Claim 12 recites the limitations "the operative portions" in ll. 13, “the surgeon” in ll. 13-14. There is insufficient antecedent basis for these limitations in this claim.
Regarding claim 12, ll. 19-22, the phrase “to provide continuous, sub-millimeter incremental adjustment of spacing between the legs and to reduce retraction force without collapse under tissue pressure such that edges of a tissue separate or are loosened from a recent separation” is unclear as to what is meant by the phrase. Amendment and clarification are required.
Claims 2-4, 7, 9, 11, and 14 are rejected on being dependent on a rejected base claim.
Claim Rejections - 35 USC § 112(d)
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 4 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Regarding claim 4, ll. 1-2, the phrase “wherein the adjustment component comprises a knob” fails to further limit the subject matter of the claim upon which it depends, see claim 1, ll. 14-15. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Section 33(a) of the America Invents Act reads as follows:
Notwithstanding any other provision of law, no patent may issue on a claim directed to or encompassing a human organism.
Claims 12 and 14 are rejected under 35 U.S.C. 101 and section 33(a) of the America Invents Act as being directed to or encompassing a human organism. See also Animals - Patentability, 1077 Off. Gaz. Pat. Office 24 (April 21, 1987) (indicating that human organisms are excluded from the scope of patentable subject matter under 35 U.S.C. 101).
Regarding claim 12, ll. 13-14, the phrase “such that the operative portions of the retractor remain visible to the surgeon” is directed to or encompassing a human organism. Applicant is suggested to use the language such as “adapted to/for” or configured to/for”.
Claim 14 is rejected on being dependent to a rejected base claim.
Response to Arguments
Applicant’s arguments on pages 7-12, under 35 U.S.C. 102(a)(1) and 35 U.S.C 103, of the Remarks with respect to the references Josse, Serra, Lee have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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.
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/SI MING KU/Primary Examiner, Art Unit 3775