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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 5/7/2026 has been entered.
Response to Arguments
Applicant’s arguments with respect to the amendments to the claims overcoming the previously presented 35 USC 102a1 rejections over Winkler et al. (US 2014/0142597) have been fully considered and are persuasive. The 35 USC 102a1 rejection of claims 1-9, 21, and 22 as being anticipated by Winkler has been withdrawn. However, in view of the amendments, a new rejection is set forth below.
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.
Claim(s) 1-9, 21 and 22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kuester, III (US 2004/0254596) in view of Zieburtz (US 1,679,196).
Kuester discloses a clip for a portion of a heart, the clip comprising: a first jaw (bottom jaw 20 in fig. 1) having a distal end portion and a proximal end portion and a compression surface and an outer surface facing opposite the compression surface; a second jaw (top jaw 20 in fig. 1) having a distal end portion and a proximal end portion (see examiner-annotated figures below) and a compression surface and an outer surface facing opposite the compression surface of the second jaw, and a groove (space between plates of 40 on top jaw) at the proximal end portion of the second jaw for receiving the proximal end portion of the first jaw (noting portion of pivoting point 40 on lower jaw fits into groove formed in pivoting point 40 of upper jaw as understood in view of fig. 2); and a slotted pin joint (40, which includes a “bar”, considered a pin, that slides within elongated groove; [0033]) coupled to the first jaw and the second jaw and configured to allow the first jaw to move relative to the second jaw to compress the portion of the heart between the first jaw and the second jaw. It is noted that “for a portion of a heart” is a recitation of intended use. Because the clip of Kuester is capable of being applied to a portion of the heart, it meets this recitation of intended use.
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Kuester discloses a spring (50; see fig. 2 and fig. 4) that forces the distal end portion of the first jaw towards the distal end portion of the second jaw, the spring having an upper distal portion having a fixed connection to the first jaw and a lower distal portion having a fixed connection to the second jaw, but the spring does not extend over the outer surfaces of the first jaw and the second jaw.
Zieburtz, in the same field of endeavor (spring biased clips), discloses a clip having first and second jaws (1,4) that pivot (2/3) relative to each other to move the distal end portions of the jaws towards or away from each other, wherein distal end portions (jaw portions distal of pivot 2/3) of the first and second jaws are biased towards each other via a spring (5), the spring including an upper distal portion and a lower distal portion (fig. 1), the upper distal portion having a fixed connection to the first jaw (at notch 8 in jaw 4; fig. 1, noting end 7 of spring 5 remains in notch 8 throughout actuation of clip and thus is considered a fixed connection) and the lower distal portion having a fixed connection to the second jaw (at notch 8 in 1; fig. 1), the spring extending over the outer surface of the first jaw and the outer surface of the second jaw (fig. 1). It would have been obvious to one of ordinary skill in the art to have modified the prior art of Kuester to replace the coil spring positioned between the proximal end portions of the jaws with the spring configuration taught by Zieburtz, the spring including an upper distal portion having a fixed connection to the first jaw and a lower distal portion having a fixed connection to the second jaw, as such a modification can be considered a substitution of one known spring arrangement for a spring biased clip having jaws which pivot about a joint for another wherein the results are predictable (jaws of clip are biased towards each other at their distal end portions under the force of the spring) and one skilled in the art would have had a reasonable expectation of success when making such a modification.
Regarding claim 2, the slotted pin joint is positioned at the proximal end portions of the first jaw and the second jaw (see examiner-annotated figures above).
Regarding claim 3, the distal end portion of the first jaw and the distal end portion of the second jaw define an opening (when proximal ends are pivoted towards each other, or configuration shown in fig. 9) for a channel (space between jaws0 for receiving the portion of the heart.
Regarding claim 4, the slotted pin joint is configured to allow the first jaw to angle relative to the second jaw such that the channel has a width at the proximal end portions of the first jaw and the second jaw that is greater than a width at the distal end portions of the first jaw and the second jaw. Noting that this is a recitation of intended use, the prior art must only be capable of carrying out this function in order to meet the limitation. Kuester discloses 40 as a pivoting point (see also [0032]-[0033]), and thus it is understood that the pin (“bar” in par. [0033]) can pivot as well as slide within the elongated groove of pivoting point 40. If a small enough tissue is placed only between proximal end portions of the jaws (distal of the pivoting point), the resistance from the tissue and the bias of the spring (5 of Zieburtz) will cause distal ends of the jaws to pivot (about the bar) towards each other while the proximal end portions are lifted away from each other because the tissue slides the pin upwards in the elongated groove, similar to the instant invention. Thus, the channel will have a greater width at the proximal end portions of the jaws than at the distal end portions.
Regarding claim 5, the limitation “the slotted pin joint is configured to allow the distal end portions of the first jaw and the second jaw to close prior to the proximal end portions of the first jaw and the second jaw” is a recitation of intended use. As discussed above with respect to claim 4, the pivoting joint 40 of Kuester allows the pin (bar) to pivot and slide within the elongated groove, and the jaws are biased together by the spring, and thus the prior art of Kuester is capable of performing the intended use in the same manner as the instant invention if an appropriately sized tissue is placed between the jaws.
Regarding claim 6, the slotted pin joint is configured to allow the first jaw to extend parallel with the second jaw (see fig. 9 of Kuester).
Regarding claim 7, the first jaw extends along an axis, and the slotted pin joint includes a slot (elongated groove of pivoting joint 40, best shown in fig. 1) on the first jaw (bottom jaw in fig. 1) extending transverse to the axis and a pin (“bar”; [0033] of Kuester) on the second jaw (top jaw in fig. 1) configured to slide along the slot (as understood in view of figs. 1-4, 8, and 9 of Kuester).
Regarding claim 8, the slot extends perpendicular to the axis (see figs. 1-4, 8, 9 of Kuester).
Regarding claim 9, the slot includes an upper end and a lower end, and the pin is configured to slide along the slot towards the upper end to increase a distance between the first jaw (see fig. 8, 9 of Kuester) and the second jaw and is configured to slide along the slot towards the lower end to reduce a distance between the first jaw and the second jaw.
Regarding claim 21, as taught by Zieburtz, the spring (5 of Zieburtz; fig. 1) includes a proximal portion including a bend portion (proximal portion includes both angled bends 6) that extends over the proximal end portion of the first jaw and the proximal end portion of the second jaw (see fig. 1) and couples the upper distal portion to the lower distal portion (fig. 1), the upper distal portion of the spring extending over the outer surface of the first jaw (4) and the lower distal portion of the spring extending over the outer surface of the second jaw (1).
Regarding claim 22, the upper distal portion applies a force to the first jaw at the distal end portion of the first jaw (noting spring taught by Zierburtz extends distally past the pivot point 2/3 in order to bias jaws in closed configuration) such that the distal end portions of the first jaw and the second jaw close prior to the proximal end portions of the first jaw and the second jaw (e.g., when a small/thin piece of tissue is held between the two jaws near their proximal ends and forces the pin to slide upwards in the elongated slot of Kuester, the distal end portions of the first and second jaws will close under the force of the spring arranged as taught by Zieburtz prior to the proximal end of the first and second jaws, similar to instant application).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KATHLEEN SONNETT HOLWERDA whose telephone number is (571)272-5576. The examiner can normally be reached M-F, 8-5, with alternate Fridays off.
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KSH 6/4/2026
/KATHLEEN S HOLWERDA/Primary Examiner, Art Unit 3771
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