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 on 10/15/2025. As directed by the amendment: claims 1, 2, 5, and 10-12 have been amended, claims 13-20 have been cancelled and claims 21-28 have been added. Thus, claims 1-12 and 21-28 are presently pending in this application.
Response to Arguments
Applicant’s arguments, see pg. 6, filed 10/15/2025, with respect to the objection of claim 11 have been fully considered and are persuasive. The objection of claim 11 has been withdrawn.
Applicant's arguments filed 10/15/2025 have been fully considered but they are not persuasive. Applicant argues that Terada fails to teach the opening penetrates the case in a height direction that intersects with the longitudinal direction and the opening/closing direction. The Office respectfully disagrees. Terada does disclose this as visible in the annotated fig. below.
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Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 21-23, 27, and 28 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 21 recites “the opening is divided into an outer opening and an inside opening, the outer opening is located on an opening side of the arm in the opening/closing direction, the inside opening is located on a closing side of the arm in the opening/closing direction”. The originally filed specification does not have any mention of the opening is divided into an outer opening and an inside opening where the outer portion is on an opening side of the arm in the opening/closing direction and the inside opening is located on a closing side of the arm in the opening/closing direction. Independent claim 1 required the opening to be in the height direction. The Drawings do show two openings in that direction (e.g. 681 and 682 in fig. 9). However neither of these openings are inside or outside but are positioned in the same location relative to the housing and the clip. Thus, this fails to provide proper support for the claims inner and outer openings. Appropriate correction is required.
Claim 27 recites “a case including …an opening; and a block stored … the block includes a block-opening through which at least part of the arm is exposed when the clip unit stored in the storage area is positioned at a predetermined position, and wherein the block-opening penetrates the block in a height direction that intersects with the longitudinal direction and the opening/closing direction”. The originally filed specification does not have any mention of a block opening. Furthermore, the drawings show the block as being solid and not with an opening. Even further, all of the openings appear to be in the case, thus a device with an opening in the case and in the block is not supported by the originally filed application. Thus, this limitation is considered new matter. Appropriate correction is required.
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 21-23 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 21 recites “the opening is divided into an outer opening and an inside opening, the outer opening is located on an opening side of the arm in the opening/closing direction, the inside opening is located on a closing side of the arm in the opening/closing direction”. The scope of “the outer opening is located on an opening side of the arm… the inside opening is located on a closing side of the arm” is unclear because the arm is both opening and closed meaning it doesn’t really have an opening side and closing side. Appropriate correction is required.
Claim Rejections - 35 USC § 102
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, 5, and 6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Mericle (US 4,361,229).
Regarding claim 1 Mericle discloses (fig. 1 and 4a-4d) a cartridge system, comprising:
a clip unit 75 including an arm 77 configured to open and close along an opening/closing direction (see fig. 4a-4b and col. 4 ln. 32-60); and
a case (88+70; see col. 4 ln. 32-60) including:
a storage area (see annotated fig. 4a below) configured so that the clip unit moves along a longitudinal direction (see fig. 4a-4d and col. 4 ln. 32-60) and
an opening (see annotated fig. 4a below) through which at least part of the arm is exposed when the clip unit stored in the storage area is positioned at a predetermined position (see fig. 1 and 4a), the opening penetrates the case in a height direction (top/bottom direction as viewed in fig. 4a) that intersects with the longitudinal direction (coming out of the page in fig. 4a, see also fig. 1) and the opening/closing direction (left/right as viewed in fig. 4a).
Regarding claim 5 Mericle further discloses (fig. 1 and 4a-4d) the opening communicates with the storage area (see annotated fig. 4a below).
Regarding claim 6 Mericle further discloses (fig. 1 and 4a-4d) the opening including an upper opening provided on a first side in the height direction (see annotated fig. 4a below) and a lower opening provided on a second side in the height direction (see annotated fig. 4a below), and wherein, when viewed from the height direction, the upper opening overlaps at least a part of the lower opening (see fig. 1 and 4a).
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Claims 1-4, 9, and 21-23 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Terada (US 20130072946 A1).
Regarding claim 1 Terada discloses (fig. 20-23) a cartridge system, comprising:
a clip unit 13 including an arm configured to open and close along an opening/closing direction (see fig. 23A-23D); and
a case 161 including
a storage area 167 (see fig. 21 and [0157]) configured so that the clip unit 13 moves along a longitudinal direction (see fig. 23A-23D),
an opening (hole in 163, see fig. 21) through which at least part of the arm is exposed (see fig. 20-21) when the clip unit 13 stored in the storage area is positioned at a predetermined position (see fig. 20) the opening penetrates the case in a height direction that intersects with the longitudinal direction and the opening/closing direction (see annotated fig. 20 below).
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Regarding claim 2 Terada further discloses (fig. 20-23) the predetermined position is a distal side position where the clip unit 13 stored in the storage area engages with the case on a distal side in the longitudinal direction (side with opening, see fig. 20-21).
Regarding claim 3 Terada further discloses (fig. 20-23) the predetermined position is a proximal side position where the clip unit 13 stored in the storage area engages with the case on a proximal side in the longitudinal direction (side with opening, see fig. 20-21). The Office notes that the claims do not define proximal/distal.
Regarding claim 4 Terada further discloses (fig. 20-23) the opening is formed at a position where at least a portion of the arm of the clip unit 13 placed at any position in the storage area is exposed (see fig. 20-21).
Regarding claim 9 Terada further discloses (fig. 20-23) the arm includes a curve portion at a position overlapping the opening when viewed from a height direction intersecting the longitudinal direction when the clip unit is stored in the storage area (see fig. 20).
Regarding claim 21 Terada further discloses (fig. 20-23) the opening is divided into an outer opening and an inside opening, the outer opening is located on an opening side of the arm in the opening/closing direction, the inside opening is located on a closing side of the arm in the opening/closing direction (see annotated fig. 21 below).
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Regarding claim 22 Terada further discloses (fig. 20-23) the outer opening and the inside opening are configured to allow passage of a thread (a thread is capable of passing through the openings). The language “the outer opening and the inside opening are configured to allow passage of a thread” 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 Terada meets the structural limitations of the claim, and the outer opening and the inside opening are configured to allow passage of a thread. The openings are large enough to allow for passage for a thread.
Regarding claim 23 Terada further discloses (fig. 20-23) the arm includes a concave portion (see fig. 20) configured to catch the thread. The language “the arm includes a concave portion configured to catch the thread” 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 Terada meets the structural limitations of the claim, and the arm includes a concave portion (see fig. 20) capable of catching the thread. The concave section is shaped to be able to catch a thread.
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 7 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Terada in view of Wood (US 3,270,745).
Regarding claims 7 and 8, Terada discloses the claimed invention substantially as claimed, as set forth above for claim 1. Terada is silent regarding a restricting member configured to be stored in the storage area while being grasped by the arm, wherein the restricting member includes a through-space penetrating in a height direction that intersects with the longitudinal direction, and the through-space overlaps at least a portion of the arm grasping the restricting member when viewed from the height direction, and wherein, when the clip unit stored in the storage area is positioned at the predetermined position, the opening overlaps the through-space when viewed from the height direction; the through-space is divided into an outer through-space and an inside through-space, the outer through-space is located outside the arm in a width direction perpendicular to the height direction, the inside through-space is located inside the arm in the width direction.
However Wood, in the same filed of endeavor, teaches (fig. 19-23) a clip unit 60 and cartridge 78; a restricting member 80 configured to be stored in a storage area while being grasped by the arm (see fig. 19), wherein the restricting member includes a through-space 84 penetrating in a height direction that intersects with the longitudinal direction (see fig. 19 and col. 4 ln. 38-46), and the through-space 84 overlaps at least a portion of the arm grasping the restricting member 80 when viewed from the height direction (see fig. 19), and wherein, the through-space is divided into an outer through-space and an inside through-space, the outer through-space is located outside the arm in a width direction perpendicular to the height direction, the inside through-space is located inside the arm in the width direction (see annotated fig. 19 below).
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Therefore it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify Terada to have a restricting member configured to be stored in the storage area while being grasped by the arm, wherein the restricting member includes a through-space penetrating in a height direction that intersects with the longitudinal direction, and the through-space overlaps at least a portion of the arm grasping the restricting member when viewed from the height direction and to have one arm of the clip longer than the other; the through-space is divided into an outer through-space and an inside through-space, the outer through-space is located outside the arm in a width direction perpendicular to the height direction, the inside through-space is located inside the arm in the width direction as taught by Nash, for the purpose of preventing the clip from separating after application (see Wood col. 4 ln. 56-64).
Terada as modified teaches when the clip unit stored in the storage area is positioned at the predetermined position, the opening overlaps the through-space when viewed from the height direction. Terada is modified to have a through space that is bisected by the clip arm and the clip arm overlaps the opening in the height direction. Thus the through space would also overlap the opening.
Claims 10, 11, and 24-26 are rejected under 35 U.S.C. 103 as being unpatentable over Terada in view of Nash et al. (US 5,242,456).
Regrading claims 10 and 11 Terada discloses (fig. 20-23) a cartridge system, comprising: a clip unit 13 including an arm configured to open and close along an opening/closing direction (see fig. 23A-23D); a case 161 including a storage area 167 (see fig. 21 and [0157]) configured so that the clip unit moves along a longitudinal direction (see fig. 23A-23D), and an opening (hole and slot in 163, see fig. 21) penetrates the case in a height direction that intersects with the longitudinal direction and the opening/closing direction (see annotated fig. 20 below).
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Terada is silent regarding a thread including a first end; wherein the first end is tied to the arm and exposed through the opening when the clip unit stored in the storage area is positioned at a predetermined position; the thread including second end, a second end passes through the opening, and the second end is arranged outside the case.
However Nash, in the same filed of endeavor, teaches (fig. 3-6, 9, and 10) a thread 36 including a first end (end attached with 140, see fig. 6); wherein the first end is tied to a arm of a clip (see fig. 6, connected to the arm via the bridging section 34); the thread 36 including second end (end opposite 140), the second end the second end is arranged distant from the clip (see fig. 9-10).
Therefore it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify Terada to have a thread including a first end; wherein the first end is tied to the arm; the thread including second end arranged distant the clip as taught by Nash, for the purpose of being able to have a line of sight to another internal portion blocked (see Nash col. 8 ln. 58-68).
Terada as modified teaches the first end is tied to the arm and exposed through the opening when the clip unit stored in the storage area is positioned at a predetermined position (Terada teaches the whole arm is exposed through the opening so modifying it to have a thread thereon would have that thread also exposed through the opening); a second end passes through the opening (the thread is long, significantly longer than the case, thus the second end would need to extend out of the case form one of the openings it comprises).
Regarding claim 24, Terada as modified discloses the claimed invention substantially as claimed, as set forth above for claim 10. Terada further discloses (fig. 20-23) a housing area (see annotated fig. 20 below) configured to fix a position of the thread within a package. The language “configured to fix a position of the thread within a package” 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 Terada meets the structural limitations of the claim, and the housing area is capable of fixing a portion of the thread within a package.
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Regarding claim 25, Terada as modified discloses the claimed invention substantially as claimed, as set forth above for claim 24. Terada further discloses (fig. 20-23) the housing area is part oft he case (see annotated fig. 20 above).
Regarding claim 26, Terada as modified discloses the claimed invention substantially as claimed, as set forth above for claim 10. Terada further discloses (fig. 20-23) the arm includes a concave portion (see fig. 20) configured to catch the thread. The language “the arm includes a concave portion configured to catch the thread” 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 Terada meets the structural limitations of the claim, and the arm includes a concave portion (see fig. 20) capable of catching the thread. The concave section is shaped to be able to catch a thread.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Terada in view of Nash as applied to claim 10 above, and further in view of Kimura et al. (US 20050143767 A1), herein after Kimura-767.
Regarding claim 12, Terada as modified discloses the claimed invention substantially as claimed, as set forth above for claim 10. Terada as modified is silent regarding a package housing the case storing the clip unit.
However Kimura-767, in the same filed of endeavor, teaches (fig. 24-25) a package 50 housing a case storing a clip unit (see fig. 24-25 and [0178]-[0179]).
Therefore it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify Terada as modified to have a package housing the case storing the clip unit as taught by Kimura-767, for the purpose of having a sterilized system that can be delivered to the use (see Kimura-767 [0178]).
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 KATHERINE H SCHWIKER whose telephone number is (571)272-9503. The examiner can normally be reached Monday - Friday 7:30 am-4:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Darwin Erezo can be reached at (571) 272-4695. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KATHERINE H SCHWIKER/Primary Examiner, Art Unit 3771