DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
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 pre-AIA 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 –
(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of application for patent in the United States.
Claim 1 is again rejected under pre-AIA 35 U.S.C. 102(b) as being anticipated by Coe et al., Pub. No. U.S. 2008/0243106 (“Coe”).
Coe discloses a surgical system comprising: a surgical tool shaft 12,246, having a distal end 12d configured to be advanced through a port of an endoscope into a location within a patient’s body, and a proximal end 12p configured to remain outside of the patient’s body (see Figs. 1A-1B, 22B, and para. [0068]); a handle 240 attached to the proximal end of the shaft 246 (Figs. 22A-22C); a magnetizable surgical tool tip 14 detachably connectable to the distal end of the surgical tool shaft (Figs. 1B, 3E, 13A); and a magnet 138 on the shaft configured to attract the surgical tool tip 130 and align said tip with the shaft, wherein the surgical tool tip mechanically engages the shaft after magnetic alignment (Figs. 4A, 4B [0080], and Fig.13A [0094] “FIG. 13A illustrates a magnet 138a disposed on the distal end of the shaft 134 and a magnet 138b disposed on the proximal end of the probe 130. In order to align the probe 130 with the shaft 134 so as to cause the electrodes 132a, 132b to extend into the bores 137a, 137b and mate to the leads 136a, 136b, the magnets 138a, 138b can have a configuration as previously described with respect to FIG. 4B”).
Regarding the limitation “a latch on the shaft for selectively engaging the surgical tool tip” in claim 1 line 8, the applicant’s specification teaches one or more embodiments wherein a magnetic connection 134 configured for coupling/engaging the shaft 102 to the surgical tool tip 130 in a male-female coupling (see Figs. 6A-6B, and para. 00104). Regarding this limitation, Coe teaches various mechanisms including male/female coupling components that are exemplary coupling mechanisms. Alternatively, Coe teaches the components can be any known coupling mechanism/components. In a further alternative, he teaches the coupling components can also be magnets that can magnetically couple with other magnetic coupling components in other modular components. In a further embodiment, he teaches the coupling components can be a combination of magnets to help with initial positioning and mechanical coupling components to more permanently couple the two modules.” Thus, Coe anticipates the claimed limitation/invention as broadly as claimed.
Response to Arguments
Applicant's arguments filed 07/16/2025 have been fully considered but they are not persuasive. Applicant argues Coe does not teach or anticipate the “latch on the shaft for selectively engaging the tool tip” as alleged by the office. Regarding this limitation, the applicant’s specification in [par. 00104] teaches one or more wherein a magnetic connection 134 configured for coupling the shaft 102 to the surgical tool tip 130 as described in paragraph 5 above. Coe also teaches in Par. 005-007 various alternative engagement mechanisms on the distal of the shaft, including magnets that can magnetically couple/engage one of plurality of end effectors to the distal end of the shaft.
For example, Fig. 1B illustrates a generic modular device having interchangeable end effectors, an elongate member/tool shaft 12 having a distal end 12d configured to be advanced through an endoscope/tube port into a location withing a patient’s body and a proximal end 12p configured to remain outside of the patient’s body; a generic end effector 14 intended to represent end effector used to effect a particular surgical outcome; wherein the device including a first engagement/coupling mechanism 18 that is coupled between the elongate member 12 and the end effector 14, and a second engagement mechanism illustrated by arrow 19 , that is coupled between a second elongate member 13 and a portion 14a of the end effector (i.e., a latch 19 on the shaft 13 for engaging the surgical end effector/tool tip as claimed). Thus, the examiner maintains the rejection of the claim because Coe teaches the claimed invention, including a latch/coupling mechanism 19 on the shaft 13 for engaging the surgical tool tip/end effector 14a as presently claimed. Note: Coe further discloses alternative embodiments comprising a latch on the shaft for engaging the surgical tool tip/end effector (see Figs. 3A -4B, 7A-8, 12A-14B and 22B).
Conclusion
THIS ACTION IS MADE FINAL. 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 AHMED M FARAH whose telephone number is (571)272-4765. The examiner can normally be reached Mon - Fri. 9:30AM -10:30 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Niketa Patel can be reached at 571-272-4156. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/AHMED M FARAH/Primary Examiner, Art Unit 3792