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
The amendments to claims 16 and 20 in the response filed on 04/20/2026 are acknowledged.
Claims 1-20 remain pending in the application.
Claims 5 and 12-20 are withdrawn.
Claims 1-4 and 6-11 are examined.
Response to Arguments
Applicant’s arguments, see pages 8-10, filed 04/20/2026, with respect to claim 1 have been fully considered and are persuasive. The 35 U.S.C 102(a)(1) rejection of claim 1 has been withdrawn.
Election/Restrictions
Applicant’s election of Invention I and Species B, readable on claims 1-4 and 6-11 in the reply filed on 01/16/2026 is acknowledged. Because applicant did not distinctly and
specifically point out the supposed errors in the restriction requirement, the election has
been treated as an election without traverse (MPEP § 818.01(a)). Applicant asserts this election reads on claims 1-4 AND 6-11.
Status of Claims
Claims 1-20 are pending, claims 5 and 12-20 are withdrawn, and claims 1-4 and 6-11 are currently under consideration for patentability under 37 CFR 1.104.
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.
Claim(s) 1-4, 7-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Publication No. 2008/0269562 to Marescaux et al. (hereinafter “Marescaux”) in view of U.S. Publication No. 2022/0054166 to Murray et al. (hereinafter “Murray”).
Regarding claim 1, Marescaux discloses a medical device, comprising: a handle (12, Fig. 1, [0057]) including an actuator (20, Fig. 9, [0070]); a shaft extending distally from the handle (11, Fig. 1, [0057]), wherein the shaft includes a lumen ([0058]); and a distal cap (13, Fig. 1, [0058]), wherein the distal cap includes: a body (Fig. 2) including a first channel (15b, Fig. 2, [0060]), wherein the first channel is in communication with a distal portion of the lumen (22, Fig. 8, [0069]) a distal face (see distal face in examiner’s annotated Fig. 4) including an opening (see opening of 15b in examiner’s annotated Fig. 4), wherein the opening is a distal opening of the first channel (the examiner notes that the opening labeled in Fig. 4 is a distal opening of channel 15b), and an expandable portion (14a, 14b, Fig. 4, [0057], [0059]) coupled to the body (24, Fig. 3, [0062]- A hinge 24 is shown, which pivotably connects the arm 14b to the tubular member 11), wherein the expandable portion is configured to expand radially outwards from the body (Fig. 2, Fig. 4, [0059]- Arms 14a and 14b are shown in an open position) and to retract radially inwards towards the body from an expanded position (Fig. 3, [0062]-[0064]).
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Although Marescaux discloses the expandable portion including channels (16a & 16b) that receive and guide surgical tools ([0059]), Marescaux fails to expressly teach wherein the expandable portion includes at least one light.
However, Murray discloses a medical device comprising: a handle including an actuator (Murray: [0030]); a shaft extending distally from the handle (Murray: 106, Fig. 1A, [0029]), wherein the shaft includes a lumen (Murray: 116, Fig. 1A, [0031]); and a distal cap (Murray: 102, Fig. 1B, [0028]), wherein the distal cap includes: a body (Murray: 118) and an expandable portion (Murray: 110, Fig. 1B) coupled to the body (Murray: [0032]- arms 110 may be coupled via a connection portion 118), wherein the expandable portion is configured to expand radially outwards from the body (Murray: Fig. 1B, [0031]- wires 114 may be pulled proximally to transition arms 110 to the open configuration shown in FIG. 1B) and to retract radially inwards towards the body from an expanded position (Murray: Fig. 1A, [0031]- arms 110 may be biased toward the closed configuration shown in FIG. 1A), and wherein the expandable portion includes at least one light (Murray: [0035]- an illumination or visualization device may be delivered to the treatment site through one tube 112 and out of arm channel 121 of one arm tube 120; [0039]).
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the device of Marescaux to utilize an illumination device so that the expandable portion includes at least one light, as taught by Murray. It would have been advantageous to make the combination for the purpose of providing light to the treatment site ([0035] of Murray).
Regarding claim 2, Marescaux, in view of Murray, teaches the medical device of claim 1, and Marescaux further discloses wherein the actuator is in engagement with the expandable portion so that the actuator is configured to control expansion and retraction of the expandable portion (Marescaux: 20, Fig. 9, [0070]).
Regarding claim 3, Marescaux, in view of Murray, teaches the medical device of claim 1, and Marescaux further discloses wherein the expandable portion is biased towards a retracted position (Marescaux: Fig. 3, [0062]-[0064]).
Regarding claim 4, Marescaux, in view of Murray, teaches the medical device of claim 3, and Marescaux further discloses wherein in the retracted position, an outer diameter of the distal cap is approximately the same as an outer diameter of a remaining portion of the shaft (Marescaux: Fig. 3, [0062]-[0064]).
Regarding claim 7, Marescaux, in view of Murray, teaches the medical device of claim 1, and Marescaux, further discloses wherein the expandable portion is coupled to the body via a hinge (Marescaux: 24, Fig. 3, [0062]).
Regarding claim 8, Marescaux, in view of Murray, teaches the medical device of claim 7, and Marescaux, further discloses wherein the expandable portion is coupled to a distal end of the body so that the expandable portion covers at least a portion of the opening in a retracted position (Marescaux: Fig. 3, [0062]-[0064]) and exposes an entirety of the opening in the expanded position (Fig. 2, Fig. 4, [0059]).
Regarding claim 9, Marescaux, in view of Murray, teaches the medical device of claim 8, and Marescaux further discloses wherein the expandable portion is semi-annular so that in the retracted position a portion of the opening remains exposed (Marescaux: 14a, 14b, Fig. 4, [0057], [0059]).
Regarding claim 10, Marescaux, in view of Murray, teaches the medical device of claim 8, and Marescaux further discloses wherein the expandable portion is transparent (Marescaux: [0067]).
Regarding claim 11, Marescaux, in view of Murray, teaches the medical device of claim 8.
Marescaux, in view of Murray, fails to expressly teach wherein the actuator and the expandable portion engage one another via an opening wire and a closing wire, wherein a force applied to the opening wire is configured to expand the expandable portion, and wherein a force applied to the closing wire is configured to retract the expandable portion.
However, Murray further teaches wherein the actuator and the expandable portion engage one another via an opening wire and a closing wire, wherein a force applied to the opening wire is configured to expand the expandable portion, and wherein a force applied to the closing wire is configured to retract the expandable portion (Murray: 114, Fig 1A, Fig. 1B, [0030]-[0031]).
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the device of Marescaux, in view of Murray, to utilize an opening wire and a closing wire, as taught by Murray. It would have been advantageous to make the combination for the purpose of providing movement of the arms ([0031] of Murray).
Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Marescaux in view of Murray and further in view of U.S. Publication No. 2019/0136070 to Aizenberg et al. (hereinafter “Aizenberg”).
Regarding claim 6, Marescaux, in view of Murray, teaches the medical device of claim 1.
Marescaux, in view of Murray, fails to expressly teach wherein a diameter of the opening is about 1.5 mm to 2.0 mm.
However, Aizenberg teaches of a medical device wherein a diameter of the opening is about 1.5 mm to 2.0 mm (Aizenberg: [0117], Figs. 2A-2B).
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the device of Marescaux, in view of Murray, to utilize a diameter opening of 2.0mm, as taught by Aizenberg. It would have been advantageous to make the combination for the purpose of inserting a device ([0117] of Aizenberg).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTEN A. SHARPLESS whose telephone number is (571)272-2387. The examiner can normally be reached Monday-Tuesday 6:00 AM - 2:00 PM, and Friday 6:00 AM - 10:00 AM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mike Carey can be reached at (571) 270-7235. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/C.A.S./Examiner, Art Unit 3795
/MICHAEL J CAREY/Supervisory Patent Examiner, Art Unit 3795
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