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 . This action is in response to Applicant Arguments/Remarks Made in an Amendment received on February 23, 2026. Claims 1-20 are currently pending.
Response to Arguments
Applicant’s arguments with respect to claims have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Election/Restrictions
Newly submitted claims 18-20 are directed to an invention that is independent or distinct from the invention originally claimed for the following reasons: Claims 1-17 are drawn to an arthroscopic port introduction system and claims 18-20 are drawn to a method of establishing an arthroscopic port. The product as claimed can be used in a materially different process of using that product, such as being used in plumbing; and therefore could have been restricted
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 18-20 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
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 1-17 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 independent claim 1, there is no written support for “a portion of the elongate hollow enlarging shaft is selectively exposable”, there is no mention of selectively exposable. Also in claim 1, there is no written support for “the elongate hollow enlarging shaft comprises a first stop”, there is no mention of a first stop. Regarding claim 2, there is no written description for “a needle mating structure configured to selectively retain the elongate hollow introducing needle in each a first position and a second position relative to the elongate hollow enlarging shaft” and “wherein, in the second position, the distal tip of the elongate hollow introducing needle is selectively retained in a second location that is proximal to the first location”. There is no mention of first and second positions and positions being retained in said positions. Regarding claim 3, there is no mention of “the first stop”. Regarding claim 4, there is no mention of “a second stop”. Regarding claim 5, there is no mention of a “third stop”. Regarding claim 6, there is no mention of a “coupling mechanism that is configured to selectively couple rotation of the elongate hollow introducing needle to rotation of the elongate stylet”. Regarding claim 7, “wherein the elongate hollow enlarging shaft selectively couples to the arthroscopic port sheath so as to selectively lock rotation of the elongate hollow enlarging shaft”. Regarding claim 8, there is no mention of “a tapered distal region configured to radially spread tissue without cutting”, there is no mention of radially spread tissue. Regarding claim 9, there is no mention “the elongated hollow introducing needle is configured to be removed from the elongate hollow enlarging shaft via proximal translation and to be prevented from being fully separated from the elongate hollow enlarging shaft”. Regarding claim 10, there is no mention of “proximal circumferential guide” and “a distal circumferential guide”. Regarding claim 11, there is no mention of “a sloped longitudinal guide”. Regarding claim 12, there is no mention of “a coupling mechanism that is configured to selectively lock rotation of the elongate hollow introducing needle to rotation of the elongate hollow enlarging shaft”. Regarding claim 13, there is no mention of “the arthoscopic port sheath is prevented from being fully removed from the elongated hollow enlarging shaft via proximal translation of the arthoscopic port sheath relative to the elongate hollow enlarging shaft when the elongate hollow enlarging shaft is disposed within the arthoscopic port sheath”. Regarding claim 14, there is no mention of “a coupling mechanism that is configured to selectively lock rotation of the elongate hollow enlarging shaft to rotation of the arthoscopic port sheath”. Regarding independent claim 15, there is no written support for “a coupling mechanism that is configured to selectively couple rotation of the elongated hollow enlarging shaft to rotation of the arthroscopic port sheath”; there is no mention of a coupling mechanism to selectively couple rotation. Regarding claim 16, there is no mention of “a first laterally extending stop that is located at a proximal portion of the elongate hollow enlarging shaft and that is configured to prevent the arthroscopic port sheath from being removed from the elongate hollow enlarging shaft”, there is no mention of a first laterally extending stop. Regarding claim 17, there is no mention of “a second laterally extending stop that is located at a proximal portion of the elongate hollow introducing needle that is configured to limit proximal translation of the elongate hollow enlarging shaft relative to the elongate hollow introducing needle when the elongate hollow introducing needle is inserted into the elongated hollow enlarging shaft”, there is no mention of a second laterally extending stop.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DIANA S JONES whose telephone number is (571)270-5963. The examiner can normally be reached Monday to Friday (8am to 4pm EST).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Kevin Truong can be reached at 571-272-4705. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Diana Jones/ Examiner, Art Unit 3775
/KEVIN T TRUONG/ Supervisory Patent Examiner, Art Unit 3775
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