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 .
Election/Restrictions
Applicant’s election without traverse of Invention I (claims 1-15 and 20) in the reply filed on 12/30/25 is acknowledged.
Claims 16-19 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 12/30/25.
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 over tube having an expandable distal end 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.
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 “at least one arm” 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.
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(4) because reference characters "38b" in Fig. 2-4 and 7-8 and "39b" in Fig. 9 have both been used to designate the tab. 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. 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.
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they include the following reference character(s) not mentioned in the description: 39b. Corrected drawing sheets in compliance with 37 CFR 1.121(d), or amendment to the specification to add the reference character(s) in the description in compliance with 37 CFR 1.121(b) 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. 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 specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required: Claims 1 and 8 recites that the over tube has an expandable distal end, this is not found in the specification. However, the specification does teach that the inner tube has an expandable distal member.
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required: Claim 20 recites “at least one arm (39) able to expand the inner tube” and “at least one arm of the adjunct non-pneumatic operative field device expands the distal end of the inner tube to create an operative secure field”, which is not found in the specification. The applicant notes that the arm is part (39) however this is not found in the drawings or the specification. The only reference to a part 39 is 39b in Fig. 9 which appears to be the tab for the locking mechanism, therefore for purposes of this action the examiner will interpret it as the arm.
Claim Objections
Claim 12 is objected to under 37 CFR 1.75 as being a substantial duplicate of claim 11. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
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 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.
Claim(s) 20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by McGuckin, Jr. et al. (2011/0040314)
McGuckin discloses an adjunct non-pneumatic operative field device (10) (Fig. 1) comprising: a pair of selectively lockable, slidingly engaged nested tubes (40’, 140 and 60, 160) (Fig. 1-2 and [0058]) comprising: an inner tube (60, 160) having a basket (70, 170), a proximal end (end at handle (12) as seen in Fig. 1-2), a distal end (76, 176), ii. an over tube (40’, 140) having a proximal end (end at handle (12) as seen in Fig. 1-2 and [0058]) and a distal end (end that covers basket as best seen in Fig. 3), iii. a lock (38) comprising at least one tab (81) and a path (80, 82), and at least one arm (84) able to expand the inner tube (Fig. 1-4 and [0058]), wherein the pair of selectively lockable, slidingly engaged nested tubes have a home position (Fig. 3) and an active position (Fig. 4), wherein in the home position the two distal ends are coterminous (Fig. 3), wherein in the active position, i. the two distal ends are spaced apart (fig. 4), ii. the lock is selectively engaged to suppress relative movement between the pair of selectively lockable, slidingly engaged nested tubes ([0058]), and iii. at least one arm of the adjunct non-pneumatic operative field device expands the distal end of the inner tube to create an operative secure field (Fig. 1-4 and [0058]).
Allowable Subject Matter
Claims 1-15 are allowed.
The following is an examiner’s statement of reasons for allowance:
The closest prior art of record, Herzberg (5,171,223), does not disclose or fairly suggest, either singly or in combination of any of the prior art of record, the claimed invention of Independent Claims 1 and 8, which recite, inter alia that the pair of selectively lockable, slidingly engaged nested tubes have a home position and an active position, wherein in the home position the two distal ends are in adjacency, wherein in the active position, the two distal ends are spaced apart by a user, the lock is selectively engaged to suppress relative movement between the pair of selectively lockable, slidingly engaged nested tubes, and the over tube at its distal end expands to create an operative secure field; in conjunction .
The closest prior arts of record Herzberg (5,171,223) teach an expandable distal end inf the over tube of the nested lockable tubes similar to that of Claims 1 and 8, however Herzberg does not disclose that in the home position the two distal ends are in adjacency while in the active position when the distal end of the over tube is expanded the two distal ends are spaced apart by a user. Herzberg discloses that the distal ends are attached which in combination of the slidable movement between the two tubes causes the expandable distal end of the over tube to expand.
Therefore, it would not have been obvious to one of ordinary skill in the art at the time the invention was filed to arrive at the technical solutions of Claims 1 and 8 according to the prior art documents or a combination thereof. Therefore, in view of the prior art at its deficiencies, Applicant’s invention is rendered novel and non-obvious and thus is allowable as claimed.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DIANNE DORNBUSCH whose telephone number is (571)270-3515. The examiner can normally be reached Monday-Wednesday 9 am-3 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Elizabeth Houston can be reached at (571) 272-7134. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DIANNE DORNBUSCH/Primary Examiner, Art Unit 3771