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 .
Specification
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
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 36-39 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 36 recites “bending a distal tip of the inner shaft around a portion of one or both of an esophagus or a stomach”, “thereby reduce a size of the loop to reflect the diameter of the esophagus”, and “to thereby indicate the diameter of the esophagus”. Since “one or both of an esophagus or a stomach” encompasses only bending the inner shaft distal tip around a portion of the stomach and not the esophagus, it is unclear in that case as written how the diameter of an esophagus would be indicated or determined.
Similarly, claim 40 recites in its preamble “[a] method of measuring a diameter of a portion of one or both of an esophagus or a stomach” yet later recites “shaft around the esophagus”, “to reflect the diameter of the esophagus”, and “to thus indicate the diameter of the esophagus”. It is unclear as written how the steps of the claim may indicate measuring a diameter of a stomach, if the loop is placed solely around the esophagus.
Allowable Subject Matter
Claims 21-35 are allowed.
The following is an examiner’s statement of reasons for allowance:
No prior art of record teach and/or fairly suggest the method of using an esophagus sizing instrument of claim 21, the method comprising bending a distal tip of an inner shaft around a portion of at least one of an esophagus or stomach back towards the distal tip of the exterior sheath such that the distal tip contacts the distal end to form a closed loop; while in the closed loop position proximally retracting the inner shaft coaxially through the exterior sheath to thereby reduce a size of the loop, and automatically maintaining the inner shaft in that reduced size position, within the context of all of the remainder of claim 21.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Conclusion
The examiner notes that, though no art has been applied against claims 36-40 at this time, they are not presently allowable. The question of prior art will be revisited upon resolution of the numerous clarity issues noted above.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US 2002/0111567 (Vanden Hoek et al.) teaches a tool for measuring the circumference of a heart
US 2008/0147076 (Geisert et al.) teaches a tool for measuring the circumference of a body cavity
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Carrie R Dorna whose telephone number is (571)270-7483. The examiner can normally be reached 8am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Alexander Valvis can be reached at 571-272-4233. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CARRIE R DORNA/Primary Examiner, Art Unit 3791
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