DETAILED ACTION
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 action is in response to amendments filed on 01/08/2026. Claims 1, 9, 11 have been amended. Claims 2-3, 10 have been cancelled. Claims 1, 4-9, 11 are pending and examined below.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 20060258961 A1 (hereinafter referred to as “Zamierowski”) in view of US 20080269643 A1 (hereinafter referred to as “Morriss”).
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Regarding claim 1, Zamierowski, a medical measuring device, teaches a reusable clip sizing tool (abstract), the tool comprising:
a handle portion having a proximal end and a distal end (as shown in annotated Figure 4);
a base portion distal to the handle portion (as shown in annotated Figure 4);
an intermediate portion between the handle portion and the base portion, wherein the intermediate portion comprises a bend (as shown in annotated Figure 4);
a plurality of distal indicator markers on the base portion, wherein the plurality of distal indicator markers comprise one or more distal numbers corresponding to a size of a left atrial appendage when a distal end of the base portion is aligned with the left atrial appendage, wherein the one or more distal numbers are aligned in a portrait direction from the distal end of the base portion to a proximal end of the base portion such that a bottom of the one or more distal numbers face proximally towards the intermediate portion (as shown in annotated Figure 4);
a plurality of proximal indicator markers on the handle portion, wherein the plurality of proximal indicator markers comprise one or more proximal numbers are aligned in a portrait direction from the proximal end of handle portion to the distal end of the handle portion such that a bottom of the one or more proximal numbers face proximally towards the intermediate portion (as shown in annotated Figure 4);
wherein the plurality of proximal indicator markers comprise alternating contrast levels;
wherein the plurality of distal indicator markers comprise alternating contrast levels;
wherein the intermediate portion is between the plurality of proximal indicator markers and the plurality of distal indicator markers (as shown in annotated Figure 4); and
wherein the handle portion and the base portion comprise a malleable material (paragraph [0008]); but does not explicitly teach the indicator markers having alternate contrast levels.
However, Morriss teaches the indicator markers comprise alternating contrast levels (paragraph [0060]; as shown in Figure 3B). It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to modify the distal and proximal indicator marker of Zamierowski, to have contrasting levels, as taught by Morriss, because doing so visually make its easier for a user to read a measurement.
Regarding claim 4, Zamierowski does not explicitly teach wherein the malleable material comprises annealed stainless steel.
However, Morriss teaches wherein the malleable material comprises annealed stainless steel (paragraph [0059], [0061]). It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to modify the teachings of Zamierowski, to use annealed stainless steal, in view of Morriss, because making this modification merely combines prior art elements according to known methods well known in the industry (see MPEP 2143, KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007)).
Regarding claim 5, Zamierowski does not explicitly teach wherein the malleable material is configured to resist deterioration from autoclave and chemical sterilization.
However, Morriss teaches wherein the malleable material is configured to resist deterioration from autoclave and chemical sterilization (paragraph [0059], [0061]). It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to modify the teachings of Zamierowski, wherein the malleable material is configured to resist deterioration from autoclave and chemical sterilization, as taught by Morriss, because doing so allows for the device to be sterilized for reuse.
Regarding claim 6, Zamierowski, in view of Morriss, teaches wherein the malleable material is configured to maintain bendability after use (paragraph [0031]; as shown in Figures 3; as taught by Zamierowski).
Regarding claim 7, wherein the distal end of the base portion is atraumatic (as shown in Figure 4).
Regarding claim 8, Zamierowski does not explicitly teach wherein the tool is made from a flat wire fabrication method.
However, Morriss teaches wherein the tool is made from a flat wire fabrication method (paragraph [0059], [0061]). It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to modify the teachings of Zamierowski, wherein the tool is made from a flat wire fabrication method, as taught by Morriss, because making this modification merely combines prior art elements according to known methods well known in the industry (see MPEP 2143, KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007)).
Regarding claim 9, Zamierowski does not explicitly teach wherein the plurality of indicator markers are configured to withstand multiple sterilization cycles.
However, Morriss teaches wherein the plurality of indicator markers are configured to withstand multiple sterilization cycles (paragraph [0059], [0061]). It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to modify the teachings of Zamierowski, wherein the plurality of indicator markers are configured to withstand multiple sterilization cycles, as taught by Morriss, because doing so allows the device for retaining integrity after sterilization.
Regarding claim 11, Zamierowski does not explicitly teach wherein the plurality of indicator markers comprise contrasting inverted background patterns between adjacent indicator markers.
However, Morriss teaches wherein the plurality of indicator markers comprise contrasting inverted background patterns between adjacent indicator markers (paragraph [0060]; as shown in Figure 3B). It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to modify the teachings of Zamierowski, wherein the plurality of indicator markers comprise contrasting inverted background patterns between adjacent indicator markers, as taught by Morriss, because doing so visually make its easier for a user to read a measurement.
Response to Arguments
Applicant’s arguments, filed 01/08/2026, with respect to the 35 USC 112(d) rejection have been fully considered and are persuasive. The 35 USC 112(d) rejection has been withdrawn.
Applicant’s arguments, filed 01/08/2026, with respect to the rejection(s) of claim(s) 1 under 35 USC 102(a)(1) have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made by Zamierowski, in view of Morriss.
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.
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/ABID A MUSTANSIR/Examiner, Art Unit 3791