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 .
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 1-4 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 inner contour" in line 6. There is insufficient antecedent basis for this limitation in the claim. Claim 1 does not previously recite an “inner contour”. For purposes of examination, claim 1 is interpreted as instead reciting “against an of the device body” as supported by the instant specification Page 2.
Claims 2-4 are also rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, since these claims depend from the claims rejected above and do not remedy the aforementioned deficiencies.
Claim Rejections - 35 USC § 102
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-3 are rejected under 35 U.S.C. 102(1)(1) as being anticipated by Kern (US 20170014023 A1) (newly cited).
Regarding claim 1, Kern teaches a surgical handheld device comprising a tubular shaft (flexible elongate member) and a device body, wherein an end portion of the tubular shaft is positioned within a receiving space (bore) of the device body and the end portion presses against the inner contour of such that the end portion is connected to the device body with form-fit engagement (see press-fit and interference fit) (Kern, Abstract, Par. 0004, 0032, 0040, and Figs 2-4). Regarding the limitation of the end portion being radially expanded and hydroformed, this is considered a product by process limitation. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (See MPEP 2113). The device structure of the prior art discloses a product which reasonably appears to be either identical or substantially identical to the claimed product-by-process device structure subjected to the process steps of expanding and hydroforming as both the prior art end portion and claimed end portion are form-fit with the inner contour of the device body. Therefore, absent any objective evidence showing to the contrary, the addition of the process limitations of claim 1 does not provide a patentable distinction over the prior art.
Regarding claim 2, Kern teaches the device body is a main body or attachment body of the device body (Kern, Abstract, Par. 0004, 0032, 0040, and Figs 2-4).
Regarding claim 3, Kern teaches the tubular shaft is a shaft, a tube, an outer tube, or an inner tube (Kern, Abstract, Par. 0004, 0032, 0040, and Figs 2-4).
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Kern as applied to claim 1 above, further in view of Scholer et al. (DE 102016118158 B3; herein English machine translation used for all citations) (previously cited)
Regarding claim 4, Kern teaches all of the elements of the claimed invention as stated above for claim 1. Kern is silent regarding an inner contour of the device body having a ring-like undercut and/or projection against which the tubular shaft is pressed with form-fit engagement.
Scholar teaches a tubular shaft for a surgical handheld device (medical instrument for endoscopic procedures) wherein the tubular shaft is connected to an adjacent device that has a ring-like undercut against which the tubular shaft is pressed with form fit engagement (Scholar, Par. 0001, 0010-0012, 0017, 0029, 0045-0049, and Fig. 8).
Kern and Scholar are analogous art as they both teach tubular shafts for a surgical handheld device that are pressed into an adjacent device. It would have been obvious to one of ordinary skill in the art to include the ring-like undercut of Scholar into the inner contour of the device body of Kern. This would allow for improved attachment of the tubular shaft to the device body (Scholar, Par. 0046-0049).
Response to Arguments
Applicant’s remarks and amendments filed 19 August 2026 have been fully considered.
Applicant requests withdrawal of the objection and rejection under 35 USC § 112 set forth in the previous office action.
The objection and rejection under 35 USC § 112 set forth in the previous office action have been withdrawn due to the present claim amendments.
Applicant argues that Scholar does not teach the features of newly amended claim 1. This is found moot.
The grounds of rejection have been updated above in view of the present claim amendments. The new grounds of rejection rely upon newly cited Kern to teach the features of newly amended claim 1.
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 THOMAS J KESSLER JR whose telephone number is (571)272-3075. The examiner can normally be reached 7:30-5:30 M-Th.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Aaron Austin can be reached at 571-272-8935. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/THOMAS J KESSLER/Examiner, Art Unit 1782
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