DETAILED ACTION
Summary
Claims 1-4, 7-22 are pending in the application. Claims 21-22 are rejected under 35 USC 112(a). Claims 1-4, 7, and 10-20 are rejected under 35 USC 103.
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: “heating element” in claim 1, and “at least one heating element” in claim 17.
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.
The limitations will be interpreted as follows:
“a heating element” will be interpreted as a resistive heating element, and equivalents thereof, consistent with [0039] of the application.
“at least one heating element” will be interpreted as a resistive heating element, and equivalents thereof, consistent with [0039] of the application.
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 the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 21-22 rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 21 recites “the loop including two parallel traces serpentined within an area corresponding to a shape of the flex-circuit”. This is not supported by the originally filed disclosure. The specification states the loop could be serpentine in an area corresponding to the heat shrink portion [0051]. There is nothing that suggests the area is related to the shape of the flex-circuit. Therefore, the amendment is new matter.
All claims dependent from the above claims rejected under 35 USC 112(a) are also rejected, as the limitations of the dependent claims fail to cure the deficiencies identified above.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-4, and 12-15 are rejected under 35 U.S.C. 103 as being unpatentable over Tarke et al. (U.S PGPub 2022/0257093 A1) in view of Keller et al. (U.S PGPub 2002/0045925 A1) and Yang et al. (U.S PGPub 2020/0205845 A1).
Regarding Claim 1, Tarke teaches an apparatus for use with an ENT instrument (Abstract), comprising:
(a) a shaft defining a hollow interior (Fig. 40, 1120) [0171], the hollow interior being configured to receive a tubular portion of the ENT instrument [0172]-[0173].
Tarke fails to explicitly teach a heat shrink material integrated into a portion of the shaft; and the heating element being configured to heat a portion of the heat shrink material to reduce a diameter of a portion of the shaft at a predetermined position along the length of the shaft.
Keller teaches an invasive surgical instrument (Abstract). This instrument has a heat shrink material integrated into a portion of the shaft (Fig. 10A, 64) [0103]. There is a heating element being configured to heat a portion of the heat shrink material to reduce a diameter of a portion of the shaft at a predetermined position along the length of the shaft [0103].
It would have been obvious to one of ordinary skill in the art before the effective filing date to modify the shaft of Tarke to include a heat shrink material, as taught by Keller, because this provides a fluid tight fit, thereby more securely coupling the ENT instrument and shaft while preventing fluid backflow from going into the shaft, as recognized by Keller [0103].
The combination fails to explicitly teach the heating element coupled to the heat shrink material.
Yang teaches an invasive surgical instrument (Abstract). This instrument has a heating element coupled to heat shrink material [0117]+[0306] (as the heater is embedded in walls which shrink, the heater is coupled to a heat shrink material).
It would have been obvious to one of ordinary skill in the art before the effective filing date to modify the combined system to substitute the location of the heating element so it is secured to the shaft, as taught by Yang, as the as the substitution for one known location of the heating element with another yields predictable results to one of ordinary skill in the art. One of ordinary skill would have been able to carry out such a substitution, and the results of securing the heating element to the shaft are reasonably predictable. Yang recognizes either securing the heater to the sidewall [0306], or using a heating probe inside the lumen [0313], as alternative methods of applying heat to the device.
Regarding Claim 2, the combination of references teaches the invention substantially as claimed. Tarke further teaches a navigation sensor (Fig. 41, 1146) secured to the shaft [0172].
Regarding Claim 3, the combination of references teaches the invention substantially as claimed. Tarke further teaches the navigation sensor being positioned proximate a distal end of the shaft (Fig. 41, 1146 is proximate this distal end of the shaft) [0174].
Regarding Claim 4, the combination of references teaches the invention substantially as claimed. Tarke further teaches the navigation sensor is positioned proximate at a distal end of the shaft (Fig. 41, 1146 is proximate this distal end of the shaft) [0174].
Tarke fails to explicitly teach the navigation sensor being positioned proximate the heating element.
Yang further teaches the heating element are located at the distal end of the shaft (Fig. 38, 214 is at the distal end of shaft) (Fig. 39, heating elements 214 are within the distal region) [0305]-[0306].
It would have been obvious to one of ordinary skill in the art before the effective filing date to modify the combined system to substitute the location of the heating element so it is secured to the shaft at the distal end, as taught by Yang, as the as the substitution for one known location of the heating element with another yields predictable results to one of ordinary skill in the art. One of ordinary skill would have been able to carry out such a substitution, and the results of securing the heating element to the shaft at the distal end are reasonably predictable. Yang recognizes either securing the heater to the sidewall [0306], or using a heating probe inside the lumen [0313], as alternative methods of applying heat to the device. One of ordinary skill would recognize that, in the combination, as the navigation sensor is at the distal end and the heating element is also at the distal end, they would be proximate each other.
Regarding Claim 12, the combination of references teaches the invention substantially as claimed. Tarke fails to explicitly teach the heating element corresponding to at least a portion of the heat shrink material.
Keller further teaches a heat shrink material integrated into a portion of the shaft (Fig. 10A, 64) [0103] and a heating element which heats a portion of the heat shrink material [0103].
It would have been obvious to one of ordinary skill in the art before the effective filing date to modify the shaft of Tarke to include a heat shrink material, as taught by Keller, because this provides a fluid tight fit, thereby more securely coupling the ENT instrument and shaft while preventing fluid backflow from going into the shaft, as recognized by Keller [0103].
The combination fails to explicitly teach the heating element shape corresponds with at least a portion of the heat shrink material.
Yang teaches further teaches heating element which has a shape that corresponds to at least a portion of the transition region (Fig. 39, 218) [0306] (the transition region is cylindrical, and the heater is also cylindrical).
It would have been obvious to one of ordinary skill in the art before the effective filing date to modify the combined system to substitute the shape of the heating element so it corresponds to the shape of the heat shrink, as taught by Yang, as the as the substitution for one known shape of the heating element with another yields predictable results to one of ordinary skill in the art. One of ordinary skill would have been able to carry out such a substitution, and the results of having the shape of heating element correspond to the shape of the heat shrink are reasonably predictable. One of ordinary skill would recognize that the transition region of Yang corresponds to the heat shrink material of Keller.
Regarding Claim 13, the combination of references teaches the invention substantially as claimed. Tarke fails to explicitly teach the heat shrink material being configured to transition between a loose configuration and a tight configuration.
Keller further teaches the heat shrink material being configured to transition between a loose configuration and a tight configuration [0103].
It would have been obvious to one of ordinary skill in the art before the effective filing date to modify the shaft of Tarke to include a heat shrink material, as taught by Keller, because this provides a fluid tight fit, thereby more securely coupling the ENT instrument and shaft while preventing fluid backflow from going into the shaft, as recognized by Keller [0103].
The combination fails to explicitly teach the heat shrink material being further configured to define a conical shape in the loose configuration.
Yang further teaches the tip containing a conical material which shrinks when it is exposed to heat [0117].
It would have been obvious to one of ordinary skill in the art before the effective filing date to substitute the shape of the heat shrink material to be a conical shape, as taught by Yang, as the substitution for one known heat shrink material shape with another yields predictable results to one of ordinary skill in the art. One of ordinary skill would have been able to carry out such a substitution, and the results of a conical heat shrink material are reasonably predictable.
Regarding Claim 14, the combination of references teaches the invention substantially as claimed. Tarke fails to explicitly teach the heat shrink material being configured to transition between a loose configuration and a tight configuration, the heat shrink material being further configured to define a substantially cylindrical shape in the loose configuration.
Keller further teaches the heat shrink material being configured to transition between a loose configuration and a tight configuration [0103]. The heat shrink material defines a substantially cylindrical shape in the loose configuration (Fig. 10A, one of ordinary skill would recognize the heat shrink material in the loose configuration would be similar in shape to the shaft, and therefore would be cylindrical as shown in the figure) [0103].
It would have been obvious to one of ordinary skill in the art before the effective filing date to modify the shaft of Tarke to include a heat shrink material, as taught by Keller, because this provides a fluid tight fit, thereby more securely coupling the ENT instrument and shaft while preventing fluid backflow from going into the shaft, as recognized by Keller [0103].
Regarding Claim 15, the combination of references teaches the invention substantially as claimed. Tarke fails to explicitly teach the heating element being in thermal communication with the heat shrink material.
Keller further teaches the heating element heats a portion of the heat shrink material (and therefore is in thermal communication with the heat shrink) [0103].
It would have been obvious to one of ordinary skill in the art before the effective filing date to modify the shaft of Tarke to include a heat shrink material, as taught by Keller, because this provides a fluid tight fit, thereby more securely coupling the ENT instrument and shaft while preventing fluid backflow from going into the shaft, as recognized by Keller [0103].
Claims 7, and 10-11 are rejected under 35 U.S.C. 103 as being unpatentable over Tarke in view of Keller and Yang as applied to claim 1 above, and further in view of Sharkey et al. (U.S Patent 6,007,570).
Regarding Claim 7, the combination of references teaches the invention substantially as claimed. Tarke further teaches a flex-circuit having a flexible substrate [0171].
The combination fails to explicitly teach the heating element being defined by one or more electrically-conductive materials positioned on the flexible substrate.
Sharkey teaches a surgical device (Abstract). This device has a heating element defined by one or more electrically-conductive materials positioned on a flexible substrate (Col 17, lines 9-20).
It would have been obvious to one of ordinary skill in the art before the effective filing date to substitute the heating element of the combined system to be a conductive material position on a flexible substrate, as taught by Sharkey, as the substitution for one known heating element with another yields predictable results to one of ordinary skill in the art. One of ordinary skill would have been able to carry out such a substitution, and the results of the heating element being on a flexible substrate are reasonably predictable.
Regarding Claim 10, the combination of references teaches the invention substantially as claimed. Tarke further teaches the flex-circuit being fixedly secured to the shaft [0171]-[0172].
Regarding Claim 11, the combination of references teaches the invention substantially as claimed. Tarke further teaches the flex-circuit being configured to communicate with an image guided surgery (IGS) navigation system [0176].
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Tarke in view of Keller and Yang as applied to claim 1 above, and further in view of Atalar (Atalar, Ergin. "Catheter coils." eMagRes. Wiley, 2011.).
Regarding Claim 16, the combination of references teaches the invention substantially as claimed. Tarke further teaches a position configured to generate signals indicating a real-time position of the position sensor [0174] within three-dimensional space [0265].
The combination is silent that the heating element generates the signals.
Atalar teaches about coils used for catheter tracking (Pg. 1, Col 2, ¶ 4). These catheter coils that track position generate heat when in use (and therefore can be considered heating elements) (Pg. 8, Col 2, ¶ 5).
It would have been obvious to one of ordinary skill in the art before the effective filing date that the position sensors of Tarke can generate heat when in a magnetic field (and therefore be considered a heating element), as taught by Atalar, as the exposure of a coil to a magnetic field causes an increase in temperature in the coil, as recognized by Atalar, and one of ordinary skill would want to investigate the heating to ensure the device can safely by used in a patient (Pg. 8, Col 2, ¶ 4-5).
Claims 17-19 are rejected under 35 U.S.C. 103 as being unpatentable over Tarke et al. in view of Sharkey et al. and Keller et al.
Regarding Claim 17, Tarke teaches an apparatus (Abstract), comprising:
(a) a shaft (Fig. 40, 1120) [0171] having a distal end sized and configured to fit in an anatomical passageway of an ear, nose, or throat of a patient [0205];
(b) a flexible substrate extending along at least a portion of the shaft (Fig. 41, 1140) and fixedly secured thereto [0171]-[0172];
(c) at least one navigation sensor (Fig. 41, 1146) positioned on the flexible substate [0174].
Tarke fails to explicitly teach the at least one heating element being configured to heat a portion of the shaft along which the flexible substrate extends to reduce at least one dimension of the shaft.
Keller teaches an invasive surgical instrument (Abstract). This instrument has a heat shrink material integrated into a portion of the shaft (Fig. 10A, 64) [0103]. There is a heating element being configured to heat a portion of the heat shrink material to reduce a diameter of a portion of the shaft at a predetermined position along the length of the shaft [0103].
It would have been obvious to one of ordinary skill in the art before the effective filing date to modify the shaft of Tarke to include a heat shrink material, as taught by Keller, because this provides a fluid tight fit, thereby more securely coupling the ENT instrument and shaft while preventing fluid backflow from going into the shaft, as recognized by Keller [0103].
The combination fails to explicitly teach at least one heating element positioned on the flexible substrate.
Sharkey teaches a surgical device (Abstract). This device has a heating element defined by one or more electrically-conductive materials positioned on a flexible substrate (Col 17, lines 9-20).
It would have been obvious to one of ordinary skill in the art before the effective filing date to substitute the heating element of the combined system to be a conductive material position on a flexible substrate, as taught by Sharkey, as the substitution for one known heating element with another yields predictable results to one of ordinary skill in the art. One of ordinary skill would have been able to carry out such a substitution, and the results of the heating element being on a flexible substrate are reasonably predictable. One of ordinary skill would recognize that, in the combination, the heating element on the flexible circuit of the combination would heat the portion of the shaft.
Regarding Claim 18, the combination of references teaches the invention substantially as claimed. Tarke fails to explicitly teach the flexible substrate including a first flexible substrate and a second flexible substrate, the first flexible substrate extending along the portion of the shaft opposite the second flexible substrate in the adapter shaft embodiment. However, in a separate embodiment, Tarke teaches the flexible substrate including a first flexible substrate and a second flexible substrate [0189], the first flexible substrate extending along the portion of the shaft opposite the second flexible substrate [0189].
It would have been obvious to one of ordinary skill in the art before the effective filing date to substitute the flexible circuit to be two flexible circuits on opposite sides, as taught by Tarke, as the substitution for one known flexible circuit configuration with another yields predictable results to one of ordinary skill in the art. One of ordinary skill would have been able to carry out such a substitution, and the results of two flexible circuits on opposite sides of the shaft are reasonably predictable.
Regarding Claim 19, the combination of references teaches the invention substantially as claimed. Tarke further teaches the at least one navigation sensor including a first navigation sensor and a second navigation sensor [0192], the first navigation sensor being positioned on the first flexible substrate and the second navigation sensor being positioned on the second flexible substrate [0192] (one of ordinary skill would recognize that, if there are two flexible substrates, both would contain the navigation sensor).
It would have been obvious to one of ordinary skill in the art before the effective filing date to substitute the flexible circuit to be two flexible circuits on opposite sides, as taught by Tarke, as the substitution for one known flexible circuit configuration with another yields predictable results to one of ordinary skill in the art. One of ordinary skill would have been able to carry out such a substitution, and the results of two flexible circuits on opposite sides of the shaft are reasonably predictable.
Tarke fails to explicitly teach the at least one heating element including a first heating element and a second heating element, the first heating element being positioned on the first flexible substrate and the second heating element being positioned on the second flexible substrate.
Sharkey teaches a surgical device (Abstract). This device has a heating element defined by one or more electrically-conductive materials positioned on a flexible substrate (Col 17, lines 9-20).
It would have been obvious to one of ordinary skill in the art before the effective filing date to substitute the heating element of the combined system to be a conductive material position on a flexible substrate, as taught by Sharkey, as the substitution for one known heating element with another yields predictable results to one of ordinary skill in the art. One of ordinary skill would have been able to carry out such a substitution, and the results of the heating element being on a flexible substrate are reasonably predictable. One of ordinary skill would recognize that, in the combination, both flexible substrates would contain a heating element, and therefore there would be a first heating element on the first flexible substrate and a second heating element on the second flexible substrate.
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Tarke in view of Sharkey.
Regarding Claim 20, Tarke teaches a method of using an apparatus (Abstract) having (i) a substrate (Fig. 41, 1140) [0171], (ii) at least one electrically-conductive navigation sensor (Fig. 41, 1146) trace formed on the substrate [0171], and the method comprising:
(a) positioning the substrate relative to a surgical instrument [0172];
(c) exposing the at least one navigation sensor trace to an electromagnetic field [0179];
(d) generating a signal via the at least one navigation sensor trace in response to the act of exposing the at least one navigation sensor trace to the electromagnetic field [0223]; and
(e) determining location coordinates based on the generated signal [0069].
Tarke fails to explicitly teach at least one heating element trace formed on the substrate and communicating power to the at least one heating element trace to generate heat from a portion of the substrate.
Sharkey teaches a surgical device (Abstract). This device has a heating element defined by one or more electrically-conductive materials positioned on a flexible substrate (Col 17, lines 9-20). The system communicates power to the at least one heating element trace to generate heat from a portion of the substrate (Col 17, lines 9-20).
It would have been obvious to one of ordinary skill in the art before the effective filing date to modify the system of Tarke to include a heating element on the substrate, as taught by Sharkey, because this allows the device to more effectively treat vertebral discs while avoiding a major surgical intervention, thereby increasing the safety for the patient, as recognized by Sharkey (Col 1, lines 19-22).
Allowable Subject Matter
Claims 8-9 objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including 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: Claims 8-9 are objected to as being allowable for the same reasons set forth on pages 15-16 of the non-final rejection mailed 3/11/2026.
Response to Arguments
Applicant's arguments filed 6/12/2026 have been fully considered but they are not persuasive.
Applicant argues claim 21 contains all the features of claim 8 and the intervening and base claim, and is therefore allowable. As detailed above, claim 21 contains new matter, and therefore is not allowable.
Applicant argues that the combination of Tarke, Keller, and Yang do not teach claim 1. Applicant argues that Yang teaches the heat might enlarge the funnel, or increase flexibility, and there does not teach the claimed system. The Examiner disagrees. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Keller is relied on to teach the heat shrink material that reduces in diameter when heated. Yang is relied on to teach that the heating element is coupled to the heat shrink material. Furthermore, Yang explicitly teaches the material can shrink [0117], and therefore it can be considered a heat shrink material When viewed together, the heating element would be coupled to the heat shrink material.
Applicant argues that claim 17 is allowable for similar reasons to claim 1. The Examiner disagrees. In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., a heat shrink material integrated into a portion of the shaft; and the heating element being configured to heat a portion of the heat shrink material to reduce a diameter of a portion of the shaft at a predetermined position along the length of the shaft) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Claim 17 therefore remains rejected for substantially the same reasons detailed above.
Applicant does not argue independent claim 20. Applicant's arguments do not comply with 37 CFR 1.111(c) because they do not clearly point out the patentable novelty which he or she thinks the claims present in view of the state of the art disclosed by the references cited or the objections made. Further, they do not show how the amendments avoid such references or objections. Claim 20 therefore remains rejected under 35 USC 103.
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.
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/SEAN D MATTSON/Primary Examiner, Art Unit 3798
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