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 .
Drawings
The drawings are objected to because the drawings are so blurry and pixelated that meaningful details of the labeled structure cannot be clearly viewed or discerned. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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:
Claim 1
“a first driving mechanism…wherein the plurality of elongated medical instruments are delivered and rotated by using the first driving mechanism…”
“a first delivering assembly…configured to clamp one end of a first medical instrument and deliver the first medical instrument”
“a second driving mechanism…wherein the plurality of elongated medical instruments are delivered and rotated by using the…second driving mechanism…”
“a second rotating assembly…configured to clamp the other end of the first medical instrument”
“a second delivering assembly…configured to clamp one end of a second medical instrument and deliver the second medical instrument”
“a third driving assembly…wherein the plurality of elongated medical instruments are delivered and rotated by using the …third driving mechanism…”
“a third rotating assembly…configured to clamp the other end of the second medical instrument”
“a third rotating and delivery assembly…configured to clamp a third medical instrument…” or “…configured to clamp a fourth medical instrument…”
“a third delivering assembly…configured to clamp the third medical instrument…”
Claim 5
“a rapid exchange delivering assembly”
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 “first driving mechanism” fails to have any particular structure associated with it in the specification. It will be interpreted as any structure capable of the claimed function.
The “first delivering assembly” is disclosed as being “a first roller set”, see par. [0036]) and will be interpreted as such.
The “second driving mechanism” fails to have any particular structure associated with it in the specification. It will be interpreted as any structure capable of the claimed function.
The “second rotating assembly” is disclosed as including a “rotating unit” in par. [0036]. However, “unit” is also a nonce term modified by the functional language “rotating”. There is no clear structure that represents the term “second rotating assembly”. It will be interpreted as any structure capable of the claimed function.
The “second delivering assembly” is disclosed as being “a second roller set”, see par. [0036]) and will be interpreted as such.
The “third driving assembly” fails to have any particular structure associated with it in the specification. It will be interpreted as any structure capable of the claimed function.
The “third rotating assembly” is disclosed as including a “rotating unit” in par. [0036]. However, “unit” is also a nonce term modified by the functional language “rotating”. There is no clear structure that represents the term “second rotating assembly”. It will be interpreted as any structure capable of the claimed function.
The “a third rotating and delivery assembly” is disclosed as having “a complicated structure. Specifically,the third rotating and delivering assembly 31 includes a rotating unit 311 and a delivering unit 312. The rotating unit 311 and the delivering unit 312 are assembly to an integral structure, or the rotating unit 311 and the delivering unit 312 are separately arranged.” The terms “unit” are nonce terms only modified by functional language “rotating”, “delivering”. There is no clear structure that represents the term “a third rotating and delivery assembly”. It will be interpreted as any structure capable of the claimed function.
The “third delivering assembly” is disclosed as being “a third roller set”, see par. [0036]) and will be interpreted as such.
The “rapid exchange delivering assembly” is interpreted as “a roller set”, see par. [0039]).
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 1-20 are 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.
Regarding Claim 1, the following lacks adequate structure in the specification: “a first driving mechanism”; “a second driving mechanism”; “a second rotating assembly”; “a third rotating assembly”; “a third driving assembly”; and “a third rotating and delivering assembly”. See MPEP §2181, IV: “A means- (or step-) plus-function limitation that is found to be indefinite under 35 U.S.C. 112(b) based on failure of the specification to disclose corresponding structure, material or act that performs the entire claimed function also lacks adequate written description…”.
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 1-20 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.
Regarding Claim 1, the claim limitations “a first driving mechanism”; “a second driving mechanism”; “a second rotating assembly”; “a third rotating assembly”; “a third driving assembly”; and “a third rotating and delivering assembly” invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. There are no clear structural Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
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 1 recites the limitation "the other end of the first medical instrument" in lines 7-8 of the claim. There is insufficient antecedent basis for this limitation in the claim.
Claim 1 recites the limitation "the other end of the second medical instrument" in line 13 of the claim. There is insufficient antecedent basis for this limitation in the claim.
Claim 1 recites the limitation "the other end of the first medical instrument" in lines 7-8 of the claim. There is insufficient antecedent basis for this limitation in the claim.
Claim 1 recites “wherein the plurality of elongated medical instruments…”. There is insufficient antecedent basis for this limitation in the claim. Applicant needs to maintain consistent language and specifically recite which previously claimed medical instruments are represented by “the plurality”.
Claim 1 recites “the third driving mechanism”. There is insufficient antecedent basis for this limitation in the claim. Applicant previously use the term “a third driving assembly” and would either need to change that instance to read “third driving mechanism” or change the second instance to “third driving assembly”.
Claim 2 recites “…first the third rotating and delivering assembly clamps” does not make grammatical sense in the scope of the entire claim. It is unclear if the phrase should be preceded by a semi-colon or if “first” is some sort of typo and should be deleted. The limitation also describes a method step describing functions that are performed but the claim is a device claim. It is unclear hat further structural limitations Applicant intending to impart with this claim. As noted in MPEP 2173.05(p), II, “A single claim which claims both an apparatus and the method steps of using the apparatus is indefinite under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph. See In re Katz Interactive Call Processing Patent Litigation, 639 F.3d 1303, 1318, 97 USPQ2d 1737, 1748-49 (Fed. Cir. 2011).”
Claims 3, 6, 10 and 14 contain similar issues.
In light of the drawing issues and claim uses under 35 USC 112(b) and 112(a), the Examiner notes there are currently no prior art rejections applied. As note din MPEP §2173.06, II: “Second, where there is a great deal of confusion and uncertainty as to the proper interpretation of the limitations of a claim, it would not be proper to reject such a claim on the basis of prior art. As stated in In re Steele, 305 F.2d 859, 134 USPQ 292 (CCPA 1962), a rejection under 35 U.S.C. 103 should not be based on considerable speculation about the meaning of terms employed in a claim or assumptions that must be made as to the scope of the claims.” Therefore, the lack of applied art is not an admission of allowability and is instead indicative of the inability to provide a clear and proper claim interpretation for the claimed structure.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US Patent 11,751,962; 11,701,191
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALLEN PORTER whose telephone number is (571)270-5419. The examiner can normally be reached Mon - Fri 9:00-6:00 EST.
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/ALLEN PORTER/Primary Examiner, Art Unit 3796