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 of Invention I, Group I, Species A, Group I Species B, readable on claims 1, 2, 4, 6, 7 and 13 in the reply filed on 2/4/2026 and 5/20/2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)). Additionally, the examiner would like to note that Claims 3 and 10 have been withdrawn as reading on Species B, Claims 5, 8 and 9 have been withdrawn as reading on Species C.
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:
“at least one actuating device” in claim 1
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.
Claims 1, 2, 4, 6, 7 and 13 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 the limitation “a medical instrument for processing structures of a human or animal body by holding, gripping, clamping, separating, or cutting a structure or bringing together several structures” in Lines 1-3, wherein the claim language is inconsistent with regards to the use of the term “structures” since the claim states “processing structures” and then recites “processing structures” which is plural can be “by holding, gripping, clamping, separating, or cutting a structure” which is singular. It’s not clear how to interpret the claim due to the inconsistency for how “structure” and “structures” is being claimed. Appropriate correction is required.
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, 2, 4 and 6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Blazejewski (DE 10359337 B4).
In regard to claim 1, Blazejewski discloses a medical instrument (Fig. 4) for processing structures of a human or animal body by holding, gripping, clamping, separating, or cutting a structure or bringing together several structures (via separating structures via tip part (10)), the medical instrument comprising:
an instrument head (10) configured to come into contact with the structure of the human or animal body and to process the structure (Fig. 4);
an elongated instrument shaft (9) including a proximal end and a distal end, wherein the instrument head is arranged at the distal end (Fig. 4);
at least one actuating device (via handle (2), Fig. 4) arranged at the proximal end of the instrument shaft and configured to actuate the medical instrument (a user grips the handle (4) to manipulate the medical instrument);
an imaging device (the optical imaging components of the medical instrument comprising the objective (11) and gradient index fiber (12) to the CCD sensor (5) shown in Figs. 1, 3, 4) arranged on or in the instrument shaft (the objective and index fiber (11, 12) extend within the instrument shaft, Fig. 4) and including at least one image sensor (5) and at least one objective lens (11),
wherein the instrument head and the imaging device are arranged on the instrument shaft fixed relative to each other in the longitudinal direction of the instrument shaft (Fig. 4, the imaging device is mounted within the tube (9)), and
wherein the objective lens and a tip of the instrument head facing away from the instrument shaft are permanently aligned relative to each other so that the imaging device always generates an image of the tip of the instrument head (Fig. 4).
In regard to claim 2, Blazejewski teaches wherein the instrument head is curved or angled at least in sections with respect to a longitudinal axis of the instrument shaft and is thereby aligned in a direction of the objective lens (Fig. 4).
In regard to claim 4, Blazejewski teaches further comprising: an illumination (8, 16) which illuminates the instrument head is received in the instrument shaft (Fig. 4).
In regard to claim 6, Blazejewski teaches wherein the at least one image sensor is configured to convert optical images into electrical signals (via CCD sensor (5)), and
wherein the imaging device is provided with an electrical signal line which feeds the electrical signals to a data processing device and/or an image output device (via cable (8) capable of delivering signals to a data processing device and/or image output device, Fig. 3).
Claims 1, 2, 4, 6 and 13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hwang (US Patent Application Publication No. 2020/0222072).
In regard to claim 1, Hwang discloses a medical instrument (Fig. ) for processing structures of a human or animal body by holding, gripping, clamping, separating, or cutting a structure or bringing together several structures (via jaw assembly (11) for gripping tissue), the medical instrument comprising:
an instrument head (11) configured to come into contact with the structure of the human or animal body and to process the structure (Fig. 1);
an elongated instrument shaft (13) including a proximal end and a distal end, wherein the instrument head is arranged at the distal end (Fig. 1);
at least one actuating device (15) arranged at the proximal end of the instrument shaft and configured to actuate the medical instrument (Fig. 1);
an imaging device (20, Fig. 2) arranged on or in the instrument shaft (Fig. 1) and including at least one image sensor (21) and at least one objective lens (211), Par. 18,19,
wherein the instrument head and the imaging device are arranged on the instrument shaft fixed relative to each other in the longitudinal direction of the instrument shaft (Fig. 1 via holder (27)), and
wherein the objective lens and a tip of the instrument head facing away from the instrument shaft are permanently aligned relative to each other so that the imaging device always generates an image of the tip of the instrument head (Fig. 1).
In regard to claim 2, Hwang teaches wherein the instrument head is curved or angled at least in sections with respect to a longitudinal axis of the instrument shaft and is thereby aligned in a direction of the objective lens (the jaw assembly (11) is angled in the open state and aligned in a direction of the objective lens, Fig. 1).
In regard to claim 4, Hwang teaches further comprising: an illumination (213) which illuminates the instrument head is received in the instrument shaft (Fig. 2).
In regard to claim 6, Hwang teaches wherein the at least one image sensor is configured to convert optical images into electrical signals (via camera module (21)), and
wherein the imaging device is provided with an electrical signal line (23) which feeds the electrical signals to a data processing device and/or an image output device (via cable (23) capable of delivering signals to a data processing device and/or image output device, Figs. 1,3, Par. 20).
In regard to claim 13, Hwang teaches configured as a forceps (13).
Claims 1, 2, 4, 6, 7 and 13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Adair (US Patent No. 6,086,528).
In regard to claim 1, Adair discloses a medical instrument (100, Fig. 1) for processing structures of a human or animal body by holding, gripping, clamping, separating, or cutting a structure or bringing together several structures (via grasping tines (34)), the medical instrument comprising:
an instrument head (24) configured to come into contact with the structure of the human or animal body and to process the structure (Fig. 1);
an elongated instrument shaft (32,36) including a proximal end and a distal end, wherein the instrument head is arranged at the distal end (Fig. 1);
at least one actuating device (56,58) arranged at the proximal end of the instrument shaft and configured to actuate the medical instrument (Fig. 1);
an imaging device (21, Fig. 2A) arranged on or in the instrument shaft and including at least one image sensor (16) and at least one objective lens (20,25),
wherein the instrument head and the imaging device are arranged on the instrument shaft fixed relative to each other in the longitudinal direction of the instrument shaft (Fig. 1, Col. 6, Lines 53-65), and
wherein the objective lens and a tip of the instrument head facing away from the instrument shaft are permanently aligned relative to each other so that the imaging device always generates an image of the tip of the instrument head (Fig. 1, via locking the imaging device with knob (38)).
In regard to claim 4, Adair teaches further comprising: an illumination (27) which illuminates the instrument head is received in the instrument shaft (Fig. 2a).
In regard to claim 6, Adair teaches wherein the at least one image sensor is configured to convert optical images into electrical signals (via camera chip (16)), and
wherein the imaging device is provided with an electrical signal line (19) which feeds the electrical signals to a data processing device and/or an image output device (Figs. 1, 2A).
In regard to claim 7, Adair teaches wherein the signal line is arranged in the instrument shaft (Figs. 1, 2A).
In regard to claim 13, Adair teaches configured as a forceps (30).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RYAN N HENDERSON whose telephone number is (571)270-1430. The examiner can normally be reached Monday-Friday 6am-5pm (PST).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Anhtuan Nguyen can be reached at 571-272-4963. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RYAN N HENDERSON/Primary Examiner, Art Unit 3795 June 7, 2026
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