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 .
Response to Amendment
This Office action is responsive to the amendment filed 02/12/2026. Claims 1, 6 and 10 have been amended. Claims 11-17 have been newly added. Claims 1-4 and 6-17 are currently pending in the application.
Response to Arguments
Applicant’s arguments, see pg. 10, filed 02/12/2026, with respect to the rejections of the claims under 35 U.S.C. 112(b) have been fully considered and are persuasive. The rejections have been withdrawn.
Applicant’s arguments, see pg. 7-8, filed 02/12/2026, with respect to the rejections of the claims under 35 U.S.C. 102 and 103 have been fully considered and are persuasive. Therefore, the rejections have been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Talman et al. (US D224840 S).
Claim Objections
Applicant is advised that should claim 10 be found allowable, claim 15 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
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 1-2, 7, and 10-15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Talman et al. (US D224840 S).
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Regarding claims 1, 10, 11, 14 and 15, Talman discloses a cartridge (see Fig. 1-4) comprising: a pair of side walls (see annotated Fig. 3 above) separated by a compartment, the compartment being configured to receive a surgical clip (the space between the walls can be considered a compartment and is capable of receiving a surgical clip); and a base member (see annotated Fig. 3) supporting the pair of side walls, wherein the pair of side walls extend at an acute angle relative to a vertical axis of the base member (see annotate Fig. 3), such that the surgical clip cartridge retains the surgical clip within the compartment at the acute angle relative to the vertical axis of the base member (a surgical clip held between side walls would be retained at the acute angle), wherein each side wall of the pair of side walls comprises a respective side surface defining a guiding surface (the top surface of one of the slanted shoulders of each side wall can be considered a side surface, see annotated Fig. 1 above), wherein each side surface is disposed at a surface angle relative to the longitudinal axis of the corresponding side wall, and wherein each surface angle is acute relative to the longitudinal axis of the corresponding side wall (the slanted top surface of each wall is disposed at an acute angle relative the longitudinal axis of the corresponding side wall, see annotated Fig. 1), and wherein each side wall includes at least one laterally extending shoulder recessed at an acute angle in the lateral direction relative to a longitudinal axis of the corresponding side wall (the side walls each include a shoulder slanted at an acute angle relative to the longitudinal axis of the side wall, see annotated Fig. 1).
The language “wherein the compartment is configured to receive first and second jaw members of a clip applier to load the surgical clip onto the clip applier” and wherein the guiding surfaces are “configured to orient jaw members of a clip applier toward the compartment when the jaw members are inserted into the cartridge” constitutes functional claim language, indicating that the claimed device need only be capable of being used in such a manner. Furthermore, the claim is an apparatus claim, and is to be limited by structural limitations. The Office submits that the device of Talman meets the structural limitations of the claim, and the compartment of the device of Talman is capable of receiving jaw members of a clip applier to load a clip onto the clip applier depending on the size of the clip and the applier and the top surfaces of walls are configured to guide a clip applier toward the compartment since they are angled and would therefore orient any inserted object to the appropriate angle for insertion into the compartment.
Recitation of “a surgical clip cartridge” in the preamble of the claim is considered a recitation of intended use. The device of Talman is a cartridge that meets all of the structural limitations of the claim and could be used as a cartridge for surgical clips depending on the size of the clips.
Regarding claims 2 and 12, Talman discloses the surgical clip cartridge of claims 1 and 11, wherein the pair of side walls are substantially parallel (see Fig. 3).
Regarding claims 7 and 13, Talman discloses the surgical clip cartridge of claims 1 and 11, wherein the base member comprises a pair of longitudinal walls extending on opposing sides of the compartment (see annotated Fig. 1).
Claim Rejections - 35 USC § 103
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.
Claims 3-4, 6 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Talman et al. (US D224840 S).
Regarding claims 3 and 4, Talman discloses the surgical clip cartridge of claim 1, but fails to expressly teach wherein the acute angle is greater than 10° and wherein the acute angle is about 20-30°.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the device of Talman by making the acute angle about 20-30° since it has been held that “where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device” Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 SPQ 232 (1984). In the instant case, the device of Talman would not operate differently with the claimed angle and since the side walls of Talman are meant to extend at an acute angle, the device would function appropriately having the claimed acute angle. Further, applicant places no criticality on the range claimed, indicating simply that the angle “may” be within the claimed ranges (specification pp. [0019]).
Regarding claims 6 and 16, Talman discloses the surgical clip cartridge of claims 1 and 15, but fails to expressly teach each surface angle is about 5-45° relative to the longitudinal axis of the corresponding side wall.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the device of Talman so that the surface angle is about 5-45° since it has been held that “where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device” Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 SPQ 232 (1984). In the instant case, the device of Talman would not operate differently with the claimed diameter and since the side surfaces of Talman are angled at an acute angle relative to the longitudinal axis of the corresponding side wall, the device would function appropriately having the claimed surface angle. Further, applicant places no criticality on the range claimed, indicating simply that the angle “may” be within the claimed ranges (specification pp. [0026]).
Allowable Subject Matter
Claim 9 is allowed.
Claims 8 and 17 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.
The following is a statement of reasons for the indication of allowable subject matter:
Regarding claims 8 and 9, see reasons for indication of allowable subject matter in the Non-Final Rejection mailed 11/12/2025.
Regarding claim 17, the closest prior art document of record, Talman, teaches the surgical clip cartridge of claim 1, but fail to teach a kit comprising the surgical clip cartridge, a surgical clip loaded into the cartridge and a clip applier.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
All of the documents cited in the attached PTO-892 teach related devices having slanted side walls.
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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/SERENITY A MILLER/Examiner, Art Unit 3771
/ELIZABETH HOUSTON/Supervisory Patent Examiner, Art Unit 3771