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 .
Information Disclosure Statement
The information disclosure statement filed October 28, 2023 fails to comply with 37 CFR 1.98(a)(2), which requires a legible copy of each cited foreign patent document; each non-patent literature publication or that portion which caused it to be listed; and all other information or that portion which caused it to be listed. It has been placed in the application file, but the information referred to therein has not been considered. The Applicant has not provided copies of the Non-Patent Literature thus the references have been crossed-out of the information disclosure statement.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the original equipment manufacturer’s structure that enables the knob to turn, in combination with how the retrofittable handle is attached to the existing knob, as disclosed in Paragraph 0011 (Note: Claim 3 has means-plus-function limitation in “means for enabling”. The structure of the limitation must be shown in the drawings because they are a part of the claims.) and the knob from claim 5, line 3, must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed.
The following title is suggested: HANDLE FOR SURGICAL MICROSCOPE
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
Claim limitation “means for enabling” in claims 2 and 3 have been interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because it uses a non-structural term “means” coupled with functional language “for enabling” without reciting sufficient structure to achieve the function. Furthermore, the non-structural term is not preceded by a structural modifier.
Since this claim limitation invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, claims 2 and 3 have been interpreted to cover the corresponding structure described in the specification that achieves the claimed function, and equivalents thereof.
A review of the specification shows that the following appears to be the corresponding structure described in the specification for the 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph limitation: a washer and a nut as disclosed in Paragraph 0010, and the original equipment manufacturer’s structure that enables the knob to turn, in combination with how the retrofittable handle is attached to the existing knob, as disclosed in Paragraph 0011.
If applicant wishes to provide further explanation or dispute the examiner’s interpretation of the corresponding structure, applicant must identify the corresponding structure with reference to the specification by page and line number, and to the drawing, if any, by reference characters in response to this Office action.
If applicant does not wish to have the claim limitation treated under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may amend the claim so that it will clearly not invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, or present a sufficient showing that the claim recites sufficient structure, material, or acts for performing the claimed function to preclude application of 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
For more information, see Supplementary Examination Guidelines for Determining Compliance with 35 U.S.C. § 112 and for Treatment of Related Issues in Patent Applications, 76 FR 7162, 7167 (Feb. 9, 2011).
Claim Objections
Claims 2, 3, and 5 are objected to because of the following informalities:
Claim 2, lines 2-3, recites “the microscope” which should be changed to --the surgical microscope-- to maintain consistent claim terminology.
Claim 2, lines 3-4, recites “the microscope” which should be changed to --the surgical microscope-- to maintain consistent claim terminology.
Claim 3, line 5, recites “the microscope” which should be changed to --the surgical microscope-- to maintain consistent claim terminology.
Claim 3, line 6, recites “the microscope” which should be changed to --the surgical microscope-- to maintain consistent claim terminology.
Claim 5, lines 1-2, recites “further comprising a set screw wherein the set screw” which is grammatically incorrect and should be changed to --further comprising a set screw, wherein the set screw--.
Claim 5, line 3, recites “the knob” which should be changed to --the knob of the head of the surgical microscope-- to make it clear which knob the Applicant is referring to.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
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 1-5 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 1 recites the limitation "the knob" in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim 1 recites the limitation "the angle" in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim 1 recites the limitation "the head" in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim 1 recites the limitation "the manufacturer" in line 3. There is insufficient antecedent basis for this limitation in the claim.
Claim 3 recites the limitation "the means for enabling" in line 4. There is insufficient antecedent basis for this limitation in the claim. Claim 2 discloses a means for enabling, but claim 3 does not depend from claim 2.
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.
It is noted that the novelty of the claims is directed solely to the structure of the retrofittable handle, and any limitations directed to a structure of a surgical microscope are examples of intended use/functional language.
Claims 1-4, as best understood, are rejected under 35 U.S.C. 102(a)(1) as being anticipated by W. S. King (US 2,981,495 A).
Regarding claim 1, W. S. King discloses a **[retrofittable]** handle **[for a surgical microscope]** comprising:
a knob (M), an arm (K), and a cover (J),
wherein the retrofittable handle is **[configured to replace the knob for adjusting the angle of the head of the surgical microscope originally provided by the manufacturer of the surgical microscope]**.
Regarding claim 2, W. S. King discloses a means for enabling (28, 34, 35) the knob to rotate freely relative to the arm **[such that the angle of the head of the microscope can be adjusted with a single grasping of the handle regardless of the angle to which the microscope is being adjusted]**.
Regarding claim 3, W. S. King discloses that the retrofittable handle is **[configured to replace the knob for adjusting the angle of the head of the surgical microscope originally provided by the manufacturer of the surgical microscope after removal of the knob]**, and
a means for enabling (28, 34, 35) the knob to rotate freely relative to the arm **[such that the angle of the head of the microscope can be adjusted with a single grasping of the handle regardless of the angle to which the microscope is being adjusted]** comprises a washer (35) and a nut (28).
Regarding claim 4, W. S. King discloses that the **[retrofittable]** handle is **[configured to cover and therefore replace the knob for adjusting the angle of the head of the surgical microscope originally provided by the manufacturer of the surgical microscope]**.
Claims 1, 4, and 5, as best understood, are rejected under 35 U.S.C. 102(a)(1) as being anticipated by M. Leitch & S. H. Hall (US 1,159,054 A) (hereinafter referred to as Leitch et al.).
Regarding claim 1, Leitch et al. discloses a **[retrofittable]** handle **[for a surgical microscope]** comprising:
a knob (the structure attached to the bottom of element f in Figure 1), an arm (f’), and a cover (m; Figure 4),
wherein the retrofittable handle is **[configured to replace the knob for adjusting the angle of the head of the surgical microscope originally provided by the manufacturer of the surgical microscope]**.
Regarding claim 4, Leitch et al. discloses that the retrofittable handle is **[configured to cover and therefore replace the knob for adjusting the angle of the head of the surgical microscope originally provided by the manufacturer of the surgical microscope]**.
Regarding claim 5, Leitch et al. discloses a set screw (c’ in Figure 4), wherein the set screw and retrofittable handle are **[arranged to use the set screw to fasten the retrofittable handle to the knob it is covering]** (It is noted that the knob is not viewed as being a part of the invention because the claims are directed to only the structure of the retrofittable handle and not to any surgical microscope structure(s)). A knob of a surgical microscope is capable of taking the place of element a or being placed on element a in Figure 4, and in turn the set screw (c’) would interact with the knob therefore Leitch et al. meets the claim limitation.).
Claims 1 and 4, as best understood, are rejected under 35 U.S.C. 102(a)(1) as being anticipated by A. J. Longone et al. (US 2,812,682 A).
Regarding claim 1, A. J. Longone et al. discloses a **[retrofittable]** handle **[for a surgical microscope]** comprising:
a knob (11), an arm (6), and a cover (7),
wherein the retrofittable handle is **[configured to replace a knob (22) for adjusting the angle of the head of the surgical microscope originally provided by the manufacturer of the surgical microscope]**.
Regarding claim 4, A. J. Longone et al. discloses that the retrofittable handle is **[configured to cover and therefore replace the knob for adjusting the angle of the head of the surgical microscope originally provided by the manufacturer of the surgical microscope]**.
**The above statements in brackets are instances of intended use and functional language. While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. Apparatus claims cover what a device is, not what a device does, see MPEP 2114. It has been held that a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Metelski (US 2009/0218455 A1) discloses a balancing apparatus for a surgical microscope, and the surgical microscope has a plurality of knobs that are configured to be operated by a user.
H. C. Newcom (US 1,439,018 A) discloses a crank handle that has a knob end which includes a plurality of fastening elements.
M. G. Hanson (US 1,592,204 A) discloses a handle that is comprised of a knob and an arm, the knob is rotatably connected to one end of the arm, and another end of the arm has an opening which is configured to fit over a rotatable element.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ADAM D ROGERS whose telephone number is (571)272-6561. The examiner can normally be reached Monday through Friday from 6AM-2:00PM EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, John Olszewski can be reached at (571)272-2706. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ADAM D ROGERS/ Primary Examiner, Art Unit 3617