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 the following species in the reply filed on 01/22/2026 is acknowledged:
Group A, Species I (Fig. 3-5)
Group B, Species VI (Fig. 3-5 and 8)
Group C, Species IX (Fig. 3-4 and 6)
Accordingly, claims 4 and 6 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim.
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 8-9, 14-15 and 18-19 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 8 recites “the head recess extends commencing from a first end of the through-bore….toward the at least one first instrument part.” It is unclear how the head recess can extend toward the first instrument part if it is a part of the first instrument part (see claim 1, lines 8-9, which recite “a head recess on the first instrument part”). For examination purposes, this limitation has been interpreted as “the head recess extends commencing from a first end of the through-bore….toward the at least one second
Claim 9 is similarly rejected by virtue of dependency from claim 8.
Claim 14 recites “the second instrument part” in line 2 which renders the scope of the claim indefinite since it is unclear if “the second instrument part” refers back to the previously recited “at least one second instrument part” in claims 1 and 13 or if “the second instrument part” is meant to be further limiting. For examination purposes, “the second instrument part” has been interpreted as “the at least one second instrument part”.
Claim 15 recites “the connection portion receptacle” in line 4 and “the external thread” in line 6. There is insufficient antecedent basis for these limitations in the claim. For examination purposes, “the connection portion receptacle” and “the external thread” have been interpreted as “a connection portion receptacle” in and “an external thread on the connection portion,” respectively.
Claim 18 recites the limitation “the at least two medical instruments differ in shape, type and/or size” which renders the scope of the claim indefinite because it is unclear how a set comprising at least two medical instruments according to claim 1 could differ in type (i.e., if the instruments differ in “type,” is one of the instruments no longer a medical instrument according to claim 1?). The specification also does not provide a basis for how Applicant construes the term “type.” It is further unclear if differences in shape and/or size also constitute differences in “type” or whether “type” refers to some other category of medical instruments.
Claim 19 is rejected by virtue of dependency from claim 18.
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.
Claims 1, 3, 7-17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Cantwell et al. (US 20210251556).
Regarding claim 1, Cantwell discloses a medical instrument (20, see Fig. 1 and 5-6) comprising: a first instrument part (24); and at least one second instrument part (28), the first instrument part and the at least one second instrument part being mounted to one another so as to be pivotable about a pivot axis and coupled to one another with a connecting element, a longitudinal axis of the connecting element defining the pivot axis (handles 24 and 28 are pivotable about an axis formed by the longitudinal axis of bolt 110, see Fig. 6), the connecting element having a head at least partially accommodated in a head recess (the bolt has a threaded head partially accommodated in a recess within handle 24, see Fig. 6) on the first instrument part, the head recess being open pointing from the first instrument part in a direction away from the at least one second instrument part (see Fig. 6), the head having at least one first annular face (see the at least one annular face in the annotated Fig. 6 below) that is circumferential, self-contained, and pointing away from the longitudinal axis, the head recess having at least one second annular face (see the at least one second annular face in annotated Fig. 6 below) that is circumferential, self-contained, and pointing toward the longitudinal axis, the at least one first annular face and the at least one second annular face being separated from one another in a radial direction relative to the longitudinal axis by an annular gap (see Fig. 6), and a sealing element being arranged in the annular gap, the sealing element being in contact with the at least one first annular face and with the at least one second annular face (insulated cap 126 is in indirect contact with both faces, see Fig. 6).
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Regarding claim 3, Cantwell discloses the medical instrument according to claim 1, wherein the sealing element: is configured as a stand-alone component (see Fig. 5).
Regarding claim 7, Cantwell discloses the medical instrument according to claim 1, wherein: an outer diameter of the sealing element is smaller at an end pointing toward the at least one second instrument part than at an end pointing away from the at least one second instrument part (insulated cap 126 has a mushroom-shaped profile having a larger outer diameter at the dome-shaped end pointing away from handle 28 and a smaller diameter at the cylindrical portion pointing towards handle 28, see Fig. 6).
Regarding claim 8, Cantwell discloses the medical instrument according to claim 1, wherein a through-bore is formed on the first instrument part concentrically to the longitudinal axis, wherein the head recess is configured as a receiving portion of the through-bore that is expanded in inner diameter (the head recess containing the head of bolt 110 is within a larger diameter portion of the through-bore in handle 24, see annotated Fig. 6 above), and wherein the head recess extends commencing from a first end of the through-bore, which points away from the at least one second instrument part, toward the at least one second instrument part (the head recess extends from a first end of the through-bore near the dome-shaped end of insulated cap 126, which points away from handle 28, towards handle 28, see Fig. 6).
Regarding claim 9, Cantwell discloses the medical instrument according to claim 8, wherein: the receiving portion forms a first hollow-cylindrical bore portion (the receiving portion, formed by the larger diameter portion of the through-bore, is cylindrical, see Fig. 6).
Regarding claim 10, Cantwell discloses the medical instrument according to claim 1, wherein the connecting element is configured as a screw or a rivet (bolt 110 can be considered a screw since it has threading, see [0044]).
Regarding claim 11, Cantwell discloses the medical instrument according to claim 1, wherein the head comprises an annular stop face, which surrounds the longitudinal axis, extends transversely to the longitudinal axis, and points away from the at least one second instrument part (see annotated Fig. 6 above).
Regarding claim 12, Cantwell discloses the medical instrument according to claim 1, wherein the end of the sealing element pointing away from the at least one second instrument part, in the assembly position, is flush with an outer surface of the first instrument part (an end of the insulated cap 126 is flush with the outer surface of the first instrument part, see Fig. 6).
Regarding claim 13, Cantwell discloses the medical instrument according to claim 1, wherein a second self- contained sealing element surrounding the longitudinal axis is arranged or formed between the first instrument part and the at least one second instrument part, and the second sealing element is in contact with the first instrument part and the at least one second instrument part (the embodiment of Fig. 6 can include a second sealing member 280 instead of washers 114, 118, see Fig. 8 and [0051], and the sealing member 280 would be between and in contact with both handles 24 and 28).
Regarding claim 14, Cantwell discloses the medical instrument according to claim 13, wherein: a) the first instrument part and the at least one second instrument part comprise a sealing element receptacle for the second sealing element and c) the second sealing element is configured as a self-contained sealing ring (handles 24 and 28 together form a receptacle for the sealing member 280 and sealing member 280 is a self-contained ring, see [0051] and Fig. 8).
Regarding claim 15, Cantwell discloses the medical instrument according to claim 1, wherein: the connecting element comprises a connecting portion projecting from the head and pointing toward the at least one second instrument part (bolt 110 has a head that can be considered to point toward the second instrument part 28, see Fig. 6), the connecting portion and a connecting portion receptacle are in force-locking and/or positive-locking engagement in the assembly position (the head portion of bolt 110 can is in a positive-locking engagement with nut 122), and an internal thread corresponding to an external thread on the connecting portion is formed on the connecting portion receptacle (nut 122 contains an internal thread corresponding to an external thread on bolt 110, see [0044]).
Regarding claim 16, Cantwell discloses the medical instrument according to claim 1, wherein the sealing element is made of an elastically and/or plastically deformable plastic material (insulated cap 126 is made of a material which necessarily either elastically or plastically deformable).
Regarding claim 17, Cantwell discloses the medical instrument according to claim 1, wherein the sealing element is formed in one piece (insulated cap 126 is formed of one piece, see Fig. 5).
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.
Claim 2 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over by Cantwell, as applied to claim 1 above, in view of Weiler (US 2020/0330148).
Regarding claim 2, Cantwell discloses the medical instrument according to claim 1, but fails to expressly teach wherein the sealing element and the annular gap form an interference fit .
Weiler, in the same field of art, teaches a related medical instrument (see Fig. 3-4) having a sealing element 41 which is press fit into an annular gap (see [0044] and Fig. 4).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the medical instrument of Cantwell so that the sealing element and the annular gap form an interference fit, as taught by Weiler, since doing was a known suitable way to connect hinge components of a forceps.
Regarding claim 5, Cantwell discloses the medical instrument according medical instrument according to claim 1, but fails to teach wherein the sealing element is molded onto or is materially bonded to the at least one first annular face or the at least one second annular face.
Weiler, in the same field of art, teaches a related medical instrument (see Fig. 3-4) having a sealing element 41 which is fit into an annular gap either by “welding and/or gluing and/or press fit” (see [0044] and Fig. 4) and gluing is understood to be a type of material boding.
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to cause the sealing element of Cantwell to be fixed within the annular gap with an adhesive, as taught by Weiler, since doing was a known suitable way to connect hinge components of a forceps.
The sealing element of Cantwell as modified by Weiler would be materially bonded to the at least one first annular face and the at least one second annular face.
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over by Cantwell, as applied to claim 1 above, in view of Ramkhelawan et al. (US 2013/0108503).
Regarding claim 18, Cantwell discloses the medical instrument according to claim 1, but fails to teach a medical instrument set comprising at least two medical instruments, wherein the at least two medical instruments differ in shape, type, and/or size.
Ramkhelawan, in the same field of art, teaches a medical instrument set comprising a plurality of medical instruments (I, see Fig. 3E) which may vary in shape, tip type and size, all of which may be used in a particular medical procedure (see [0065]).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to provide the medical instrument of Cantwell as a part of a set comprising at least two medical instruments varying in shape, type and/or size, as taught by Ramkhelawan, since doing so would allow for a variety of medical instruments to be used in a particular procedure.
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over by Cantwell and Ramkhelawan, as applied to claim 18 above, and further in view of Collins (US 2014/0074116).
Regarding claim 19, the combination of Cantwell and Ramkhelawan teaches medical instrument set according to claim 18, wherein the sealing elements of the at least two medical instruments are differently colored.
Collins, in the same field of art, teaches using color to visually identify differing components of a medical instrument set (see Abstract).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the sealing elements of the medical instruments of Cantwell and Ramkhelawan so that they are differently colored since doing so would provide a way to visually identify the different instruments in the set.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
All of the documents cited in the attached PTO-892 teach related medical instruments.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SERENITY MILLER whose telephone number is (571)272-1155. The examiner can normally be reached Monday-Friday 8:00am-5pm.
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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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/SERENITY A MILLER/Examiner, Art Unit 3771
/ELIZABETH HOUSTON/Supervisory Patent Examiner, Art Unit 3771
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