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 .
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.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: alignment element configured to align in claim 10. For examination purposes, the alignment element is being interpreted based on pg. 9 2nd full paragraph as a protruding stop or a pin and structural equivalents thereof.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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.
Claim 9 is 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 9 recites the limitation “a screw connection” which is already recited in claim 8. Therefore, it is unclear if the screw connection of claim 9 is the same as recited in claim 8. For examination purposes, this limitation in claim 9 is being interpreted as “the screw connection”. 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 2, 4-6, and 10 are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Vogtherr (US 20200138462 A1).
Regarding claim 1 Vogtherr discloses (fig. 1-2) a medical instrument comprising:
a first gripping element 14 (see fig. 1 and [0050]);
a second gripping element 16 (see fig. 1 and [0050]); and
a spring unit 28 (see fig. 1 and [0051]),
the first gripping element 14 and the second gripping element 16 being pivotably mounted relative to each other (at hinge 8, see fig. 1 and [0049]), the spring unit 28 comprising a first spring end portion 36 and a second spring end portion 38 (see fig. 1 and [0051]), the first spring end portion 36 being connected to the first gripping element 14 (see fig. 1), and the second spring end portion 28 being connected to the second gripping element 16 (see fig. 1), so that when at least one of the first gripping element 14 and the second gripping element 16 is pivoted out of a base position, pivoting back into the base position can be carried out via the spring unit 28 (see [0010]),
the spring unit 28 being adapted to provide a substantially constant spring force when the first gripping element 14 and the second gripping element 16 are pivoted (see [0010] and [0022]), and
a platform-shaped projection (40+42) being formed on at least one of the first spring end portion 14, the second spring end portion 16 (see [0053] and fig. 2) such that the platform-shaped projection (40+42) at least one of:
rigidly connects the first spring end portion to the first gripping element, so that the at first spring end portion is raised relative to and distanced from the first gripping element in at least the base position (see fig. 2 and [0053]); and
rigidly connects the second spring end portion to the second gripping element, so that the second spring end portion is raised relative to and distanced from the second gripping element in at least the base position (see fig. 2 and [0053]).
Regarding claim 2 Vogtherr further discloses (fig. 1-2) wherein the spring unit 28 is formed in two parts in and comprises two leaf springs (30, 32), which are coupled to each other via a distal fork-nose connection 34 (see fig. 1 and [0051]-[0052]).
Regarding claim 4 Vogtherr further discloses (fig. 1-2) wherein the platform-shaped projection (40+42) forms a front-face contact supporting surface (see annotated fig. 2 below) via which at least one of the first spring end portion 36 and the second spring end portion 38 is attached to the first gripping element 14 and the second gripping element 16, respectively (see fig. 2 and [0053]).
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Regarding claim 5 Vogtherr further discloses (fig. 1-2) wherein the platform-shaped projection (40+42) is block-shaped (see fig. 1-2).
Regarding claim 6 Vogtherr further discloses (fig. 1-2) the front-face contact supporting surface is planar (see annotated fig. 2 above).
Regarding claim 10 Vogtherr further discloses (fig. 1-2) the platform-shaped projection comprises an alignment element (end that 36 engaged, see annotated fig. 2 below; this is functions a stop thus meets the interpretation under 112f) configured to align the first spring end portion 36 and the second spring end portion 38 with respect to the first gripping element 14 and the second gripping element 16, respectively (see [0053]).
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Claim 1 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Boebel (US 4,282,884).
Regarding claim 1 Boebel discloses (fig. 1) a medical instrument comprising:
a first gripping element 11 (see fig. 1 and col 2 ln. 6-10);
a second gripping element 10 (see fig. 1 and col 2 ln. 6-10); and
a spring unit 10a,
the first gripping element 11 and the second gripping element 10 being pivotably mounted relative to each other (see fig. 1 and col 2 ln. 6-10), the spring unit 10a comprising a first spring end portion (portion connected to 11) and a second spring end portion (portion connected to 10), the first spring end portion being connected to the first gripping element 11, and the second spring end portion being connected to the second gripping element 10 (see fig. 1 and col. 2 ln. 10-14), so that when at least one of the first gripping element 11 and the second gripping element 10 is pivoted out of a base position, pivoting back into the base position can be carried out via the spring unit 10a (see col. 2 ln. 6-18),
the spring unit 10a being adapted to provide a substantially constant spring force when the first gripping element 11 and the second gripping element 10 are pivoted (see col. 2 ln. 6-18), and
a platform-shaped projection (see annotated fig. 1 below) being formed on the first gripping element 11 such that the platform-shaped projection:
rigidly connects the first spring end portion to the first gripping element 11, so that the at first spring end portion is raised relative to and distanced from the first gripping element in at least the base position (see fig. 1).
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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 3 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Vogtherr.
Regarding claim 3, Vogtherr discloses the claimed invention substantially as claimed, as set forth above for claim 1. Vogtherr is silent regarding the platform-shaped projection has a height of at least 1 mm.
However, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the device of Vogtherr to have the platform-shaped projection have a height of at least 1 mm since it has been held that “where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device” Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 SPQ 232 (1984). In the instant case, the device of Vogtherr would not operate differently with the claimed height since thew platform would still be able to engage the leaf spring ends with the claimed height. Further, applicant places no criticality on the range claimed, indicating simply that the height “may” be within the claimed ranges (specification pg. 8, 1st full paragraph).
Regarding claim 7, Vogtherr discloses the claimed invention substantially as claimed, as set forth above for claim 1. Vogtherr further teaches (fig. 1-2) a gap angle between a side of the first spring end portion facing the first gripping element and a side surface of the platform-shaped projection (see fig. 1 and 2).
Although Vogtherr appears to show an angle of at least 20° Vogtherr does not expressly disclose the gap angle is at least 20°.
Before the effective filing date of the claimed invention, it would have been an obvious matter of design choice to a person of ordinary skill in the art to have the angle be 20° because Applicant has placed no criticality on the range claimed, indicating simply that the angle “may” be within the claimed ranges (specification pg. 9, 1st full paragraph). One of ordinary skill in the art, furthermore, would have expected Vogtherr’s device, and applicant’s invention, to perform equally well with either the angle taught by Vogtherr or the claimed 20° because both angle measures would perform the same function of functional as a spring to boas the handles apart.
Therefore, it would have been prima facie obvious to modify Vogtherr to obtain the invention as specified in claim 7 because such a modification would have been considered a mere design consideration which fails to patentably distinguish over the prior art of Vogtherr.
Claims 8 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Boebel in view of Seel (US 20140296858 A1).
Regarding claims 8 and 9, Boebel discloses the claimed invention substantially as claimed, as set forth above for claim 1. Boebel further discloses (fig. 1) wherein the first spring end portion is connected to the first gripping element via the platform-shaped projection (see fig. 1).
Boebel is silent regarding a screw connection between the first spring end portion and first gripping element in which a screw is screwed into a blind hole bore with an inner thread from a side of said at the first spring end portion in a direction of the first gripping element, so that the first gripping element and the second gripping element does not have a drilled hole on an outer gripping surface.
However Seel, in the same filed of endeavor, teaches (fig. 1) a screw connection 142 between a first spring end portion 160 (see [0049]) of a spring 146 (see [0048]) and a first gripping element 40 (see fig. 2 and [0040]) in which a screw 142 (see [0048]) is screwed into a blind hole (see blind hole in fig. 2) bore from a side of said at the first spring end portion 166 in a direction of the first gripping element 40 (see fig. 2), so that the first gripping element 40 and a second gripping element 38 does not have a drilled hole on an outer gripping surface (see fig. 2), the bore with an inner thread (element 142 is disclosed as a screw and positioned in the bore, thus it has an internal thread).
Therefore it would have been obvious to one of ordinary skill in the art, before the effective filing date, to modify Boebel to have a screw connection between the first spring end portion and first gripping element in which a screw is screwed into a blind hole bore with an inner thread from a side of said at the first spring end portion in a direction of the first gripping element, so that the first gripping element and the second gripping element does not have a drilled hole on an outer gripping surface as taught by Seel, for the purpose of being able to fix the spring to the handle to have the connection remain during use (see Seel [0048]).
Boebel as modified teaches the first spring end portion is connected to the first gripping element via the platform-shaped projection via the screw connection. Boebel teaches the spring end portion is connected to the first gripping element via the platform-shaped projection and this connection is modified to have the screw.
Conclusion
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