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 species II in the reply filed on 06/15/2026 is acknowledged.
Claims 11-19 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species I, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 06/15/2026.
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 1-10 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 “a pedestal-shaped projection”. The scope of “pedestal-shaped” is unclear because it is unclear what would and would not constitute the shape of a pedestal. Furthermore, the specification provides no guidance on this as the term is not used therein. For examination purposes, “pedestal-shaped” will be interpreted as any shape an object can be placed on should it be sized accordingly. 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 having a spring profile (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 pedestal-shaped projection 46 being formed on at least one of the first spring 36 end portion and the second spring end portion (see fig. 2 and [0054]) wherein the pedestal-shaped projection 46 is formed in one piece with the spring unit and thickens a circumference of said at least one of the first spring end portion and the second spring end portion relative to a non-thickened remainder of the spring profile (see fig. 2 and [0054]) such that the pedestal-shaped projection 46 rigidly connects at least one of:
the first spring end portion to the first gripping element, so that the non- thickened remainder of the spring profile is raised relative to and distanced from the first gripping element in at least the base position (see fig. 2 and [0054]); and
the second spring end portion to the second gripping element, so that the non- thickened remainder of the spring profile is raised relative to and distanced from the second gripping element in at least the base position (see fig. 2 and [0054]).
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 pedestal-shaped projection 46 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 [0054]).
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Regarding claim 5 Vogtherr further discloses (fig. 1-2) wherein the pedestal-shaped projection 46 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) pedestal-shaped projection comprises a protruding stop (see annotated fig. 2 below) configured to align the first spring end portion and the second spring end portion with respect to the first gripping element and the second gripping element, respectively (see fig. 2 and [0054]).
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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.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Vogtherr in view of Mennicken (US 5,214,854).
Regarding claim 8, Vogtherr discloses the claimed invention substantially as claimed, as set forth above for claim 1. Vogtherr is silent regarding at least one of the first spring end portion and the second spring end portion is connected to the first gripping element and the second gripping element, respectively, via the pedestal-shaped projection via a screw connection and/or by bonding.
However Mennicken, in the same filed of endeavor, teaches (fig. 1-4) at least one of a first spring end portion 28 and a second spring end portion 26 is connected to a first gripping element 12 and a second gripping element 14, respectively, by bonding (glue, see col. 3 ln. 18-34).
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 Vogtherr to include at least one of the first spring end portion and the second spring end portion is connected to the first gripping element and the second gripping element, respectively, by bonding as taught by Mennicken, for the purpose of having an additional attachment means between to spring and the gripping element (see col. 3 ln. 18-34).
Response to Arguments
Applicant’s arguments, see pg. 7, filed 12/23/2025, with respect to the interpretation under 112(f) have been fully considered and are persuasive. As a result of the amendment, the interpretation under 112(f) has been withdrawn.
Applicant’s arguments, see pg. 7, filed 12/23/2025, with respect to the rejection of claim 9 under 35 U.S.C. 112 have been fully considered and are persuasive. The rejection of claim 9 under 35 U.S.C. 112 has been withdrawn.
Applicant's arguments filed 12/23/2025 have been fully considered but they are not persuasive. Applicant argues that none of the previously cited references teach the limitations of amended claim 1. The Office respectfully disagrees. As set forth above, a variant interpretation of Vogtherr (pedestal shaped projection 46 which has a thickened circumference and rigidly connects the spring end portions to the gripping arms, see fig. 2 and [0054]) teaches the limitations of amended claim 1.
Allowable Subject Matter
Claim 9 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: the prior art, alone or in combination, fails to teach or render obvious: at least one of the first spring end portion and the second spring end portion is connected to the first gripping element and the second gripping element, respectively, via the pedestal-shaped projection is formed in one piece with the spring unit and thickens a circumference of said at least one of the first spring end portion and the second spring end portion relative to a non-thickened remainder of the spring profile in combination with the pedestal-shaped projection via the screw connection, in which a screw is screwed into a blind hole bore with an inner thread from a side of said at least one of the first spring end portion and the second spring end portion in a direction of the first gripping element and the second gripping element, respectively, so that the first gripping element and the second gripping element does not have a drilled hole on an outer gripping surface, or that the screw is screwed in from a side of the outer gripping surface of the first gripping element and the second gripping element in a direction of the first spring end portion and the second spring end portion.
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 MENDEZ whose telephone number is (571)272-9503. The examiner can normally be reached Monday - Friday 8 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 MENDEZ/Primary Examiner, Art Unit 3771
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