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 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.
GROUND 1: Claim(s) 31 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. Patent No. 5,3232,767 to Lafferty et al.
In regard to claim 31, Lafferty et al. disclose a device 10 for performing a surgical procedure, the device comprising: a shaft 30 extending from a proximal portion to a distal portion (see Fig. 1); a working channel 228 extending through the shaft from the proximal portion to the distal portion (See Fig. 4 and Col. 8, Lines 38-56); a light conductor 240 extending at least partially through the shaft outside of the working channel, wherein the light conductor includes slack 250 between the proximal portion and the distal portion, wherein the slack comprises a coiling of the light conductor, the coiling having spacing between coils; and a light emitter 240 connected to the light conductor, the light emitter configured to emit light from the light conductor toward a surgical tool that can extend from working channel (see Col. 8, Line 57 – Col. 9, Line 11).
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.
GROUND 2: Claim(s) 31-47 is/are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent No. 11,206,972 to Bendory et al. in view of U.S. Patent No. 5,3232,767 to Lafferty et al.
In regard to claims 31-33, 38-39 and 43-45, Bendory et al. disclose a device 970 for performing a surgical procedure, the device comprising: a shaft extending from a proximal portion to a distal portion (see Figs. 20-35); a working channel extending through the shaft from the proximal portion to the distal portion (See Col. 30, Lines 52-67); a light conductor 252 extending at least partially through the shaft outside of the working channel (See Fig 25B); and a light emitter 240 connected to the light conductor, the light emitter configured to emit light from the light conductor toward a surgical tool that can extend from working channel (see Col. 32, Lines 27-44). Bendory et al. are silent with respect to wherein the light conductor includes slack between the proximal portion and the distal portion, wherein the slack comprises a coiling of the light conductor, the coiling having spacing between coils. Lafferty et al. teach of an analogous device 10 for performing a surgical procedure comprising: a shaft 30, a working channel 228 and a light conductor 240 extending at least partially through the shaft outside of the working channel (See Figs. 1-4). The light conductor includes slack 250 between the proximal portion and the distal portion, wherein the slack comprises a coiling of the light conductor, the coiling having spacing between coils; and a light emitter 240 connected to the light conductor, the light emitter configured to emit light from the light conductor toward a surgical tool that can extend from the working channel (see Col. 8, Line 57 – Col. 9, Line 11). It would have been obvious to one skilled in the art at the time the invention was filed to modify the light conductor of Bendory et al. to include a slack segment to compensate for movement of the transmission fiber bundle when the device is moved and//or rotated as taught by Lafferty et al. In further regard to claim 32, Bendory et al. disclose an imaging device 926 located at the distal portion of the shaft; wiring components extending through the shaft between the proximal portion and the imaging device (See Fig. 20, 26 and Col. 32, Lines 27-67). In further regard to claim 38, Bendory et al. disclose the use of a laser module as the surgical tool being inserted through the working channel of the shaft (See Col. 18, Lines 44-54 and Col. 19, Lines 51-64)
In regard to claim 34 and 46-47, Bendory et al. disclose a device for performing a surgical procedure, wherein the shaft comprises a solid body including a plurality of lumens extending therethrough including a light conductor lumen for the light conductor (See Figs. 4a-b and Col. 15, Line 29 – Col. 18, Line 33).
In regard to claims 35-37, Bendory et al., as modified by Lafferty et al., disclose a device for performing a surgical procedure, wherein the light conductor lumen comprises: a first portion partially embedded in the shaft; and a second portion forming a pocket having a diameter larger than that of the light conductor to allow for excess length of the light conductor to be stored (see Fig. 25b and Col. 32, Lines 27-44).
In regard to claims 40-42, Bendory et al., as modified by Lafferty et al., disclose a device configured for insertion into the paranasal cavity (see Col. 1, Lines 12-67) but are silent with respect to s specific overall sizes as claimed. It would have been an obvious matter of design choice to provide the claimed size ranges, since such a modification would have involved a mere change in the size of a component. A change in size is generally recognized as being within the level of ordinary skill in the art. In re Rose, 105 USPQ 237 (CCPA 1955).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW J KASZTEJNA whose telephone number is (571)272-6086. The examiner can normally be reached M-F, 7AM--3PM.
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/MATTHEW J KASZTEJNA/Primary Examiner, Art Unit 3993
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