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 .
The amendment filed on December 29, 2025 has been received and considered. By this amendment, claims 2 and 3 are amended and claims 2-15 are now pending in the application.
Specification
The disclosure is objected to because of the following informalities: prior to allowance, the first paragraph of the specification should be updated to indicate the present status of all applications referred to therein.
Appropriate correction is required.
Claim Rejections - 35 USC § 103
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 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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 2-10 and 12-15 are rejected under 35 U.S.C. 103 as being unpatentable over Sachs et al. (WO 2013/016588) in view of Raju et al. (U.S. 2010/0256446). Regarding claim 2, Sachs discloses an elongate instrument 40 comprising: a handle assembly 41 at a proximal end, the handle assembly comprising a body (see Figure 7); a suction head 43 at a distal end (see Figure 7); an elongate shaft 42 extending between the handle assembly and the suction head (see Figure 7), wherein the elongate shaft comprises a cannula channel 53 (“Bipolar needle electrodes 51 , 52 are disposed in channels 53 of elongated shaft 42”, page 20, lines 30-31), a suction channel (“Apertures 50 are connected, such as using sealed channels or tubing, to an external vacuum pump that supplies the suction”, page 22, line 31-page 23, line 2), and a scope channel (“a channel may be incorporated into the shaft of device 40 that allows insertion of a traditional urethroscope or other visual device for visual confirmation of the location or placement of the active portion (e.g., suction zone, needle electrodes, etc.) of device 40”, page 23, lines 14-17); an elongate electrode 51-52 slidably disposed in the cannula channel (“Bipolar needle electrodes 51 , 52 are disposed in channels 53 of elongated shaft 42”, page 20, lines 30-31) and being slidable between a first position and a second position, wherein in the first position, a distal end of the electrode is contained within the cannula channel, and wherein in the second position, the distal end of the electrode extends out an open distal end of the cannula channel, proximate the suction head (see Figure 7 and “When actuator 45 of handle 41 is depressed, needle electrodes 51, 52 extend across offset region 54 of distal region 43 (as indicated by dotted lines 55 in FIGS. 8A and 8B.”, page 21, line 1-3). However, while Sachs does disclose a scope disposed in a scope channel, Sachs fails to explicitly disclose a sliding mechanism, the sliding mechanism comprising a sliding tube that is slidingly received by the handle assembly body such that the sliding tube defines a proximal end of the scope channel, wherein the sliding mechanism is configured to receive a scope, and control a longitudinal placement of the scope relative to the elongate instrument. Raju teaches a medical scope carrier and scope that contains a channel and scope to be inserted therethrough (see Abstract) that includes a sliding mechanism, the sliding mechanism comprising a sliding tube that is slidingly received by the handle assembly body such that the sliding tube defines a proximal end of the scope channel, wherein the sliding mechanism is configured to receive a scope, and control a longitudinal placement of the scope relative to the elongate instrument (“comprising: a scope carrier comprising a cylindrical tube having a carrier channel formed therein and adapted to allow a scope to be inserted therethrough; and a scope comprising an objective lens and a scope channel, the scope being adapted to be slidably disposed within the carrier channel.”, paragraph [0016]) that provides the benefit of improving costs, time, and ability to perform a desired medical procedure (see paragraph [0014]). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the invention of Sachs to include a sliding mechanism, the sliding mechanism comprising a sliding tube that is slidingly received by the handle assembly body such that the sliding tube defines a proximal end of the scope channel, wherein the sliding mechanism is configured to receive a scope, and control a longitudinal placement of the scope relative to the elongate instrument, as taught by Raju, in order to improve costs, time, and the ability to perform a desired medical procedure.
Regarding claim 3, Sachs fails to disclose that the sliding mechanism comprises a cutout that receives a feature on a scope such that radial angular orientation of the scope is fixed relative to the instrument when the feature is received in the cutout. Raju teaches that the sliding mechanism comprises a cutout that receives a feature on a scope such that radial angular orientation of the scope is fixed relative to the instrument when the feature is received in the cutout (“Similarly, an up/down angulation lock 36 can be used to lock the knob and relative angle into position.”, paragraph [0041]), wherein the sliding mechanism of Raju provides the benefit of improving costs, time, and ability to perform a desired medical procedure (see paragraph [0014]). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the invention of Sachs to include the sliding mechanism of Raju, including a cutout that receives a feature on a scope such that radial angular orientation of the scope is fixed relative to the instrument when the feature is received in the cutout, in order to improve costs, time, and the ability to perform a desired medical procedure.
Regarding claim 4, it is respectfully submitted that it is inherent that the sliding mechanism of Sachs in view of Raju is slidable between a first position and a second position relative to the elongate instrument because the very nature of something being “slidable” means that it can be moved from a first position to a second position.
Regarding claim 5, Sachs fails to disclose that the sliding mechanism includes a locking tab that extends through the sliding tube and is configured to be depressed to frictionally engage and prevent longitudinal movement of a scope disposed in the sliding tube. Raju teaches that the sliding mechanism includes a locking tab that extends through the sliding tube and is configured to be depressed to frictionally engage and prevent longitudinal movement of a scope disposed in the sliding tube (“the scope carrier and scope can be coupled together in longitudinal position by a lock 238. For example and without limitation, the lock 238 can be rotatable about the scope 102 that restricts the downward movement of the scope. Thus, the distal end 150 of the scope 102 can be held in proximity to the distal end 200 of the scope carrier 101.”, paragraph [0063]), wherein the sliding mechanism of Raju provides the benefit of improving costs, time, and ability to perform a desired medical procedure (see paragraph [0014]). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the invention of Sachs to include the sliding mechanism of Raju, including a locking tab that extends through the sliding tube and is configured to be depressed to frictionally engage and prevent longitudinal movement of a scope disposed in the sliding tube, in order to improve costs, time, and the ability to perform a desired medical procedure.
Regarding claim 6, Sachs fails to disclose that the sliding tube includes a stop that translates within a groove in the handle assembly body, the respective stop and groove defining an extent of longitudinal movement of, and preventing rotation of, the sliding mechanism relative to the body. Raju teaches that the sliding tube includes a stop that translates within a groove in the handle assembly body, the respective stop and groove defining an extent of longitudinal movement of, and preventing rotation of, the sliding mechanism relative to the body (“the scope carrier and scope can be coupled together in longitudinal position by a lock 238. For example and without limitation, the lock 238 can be rotatable about the scope 102 that restricts the downward movement of the scope. Thus, the distal end 150 of the scope 102 can be held in proximity to the distal end 200 of the scope carrier 101.”, paragraph [0063]), wherein the sliding mechanism of Raju provides the benefit of improving costs, time, and ability to perform a desired medical procedure (see paragraph [0014]). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the invention of Sachs to include the sliding mechanism of Raju, including that the sliding tube includes a stop that translates within a groove in the handle assembly body, the respective stop and groove defining an extent of longitudinal movement of, and preventing rotation of, the sliding mechanism relative to the body, in order to improve costs, time, and the ability to perform a desired medical procedure.
Regarding claim 7, Sachs in view of Raju fails to disclose that the sliding tube has a length that is substantially co-extensive with a length of the elongate instrument. It would have been obvious to one having ordinary skill in the art at the time the invention was made to make the lengths of the sliding tube and the elongate instrument substantially co-extensive, since it has been held that where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device, and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device In Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984). Furthermore, it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
Regarding claim 8, Sachs in view of Raju fails to disclose that a distal end of the scope channel is located on a side of the suction head opposite a suction face of the suction head. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the invention of Sachs in view of Raju to include a distal end of the scope channel located on a side of the suction head opposite a suction face of the suction head, as it has been held that rearranging parts of an invention involves only routine skill in the art. MPEP 2144.04
Regarding claim 9, Sachs discloses that the suction head comprises a plurality of suction apertures 50 arranged to engage tissue when suction is applied (“Apertures 50 are connected, such as using sealed channels or tubing, to an external vacuum pump that supplies the suction”, page 22, line 31-page 23, line 2) .
Regarding claim 10, Sachs discloses that the suction head further comprises a flat face and an angled face, each of the faces defining at least one of the plurality of suction apertures (see Figure 9A, which shows suction on both the flat and angled faces).
Regarding claim 12, Sachs discloses that the suction head defines a suction face at a distal end of the suction channel, and wherein the scope channel extends at a non-zero angle relative to the suction face (see Figure 9A).
Regarding claim 13, Sachs in view of Raju fails to disclose that the scope channel is oriented such that the non-zero angle results in an increased separation between a scope and the suction face when the scope is advanced out a distal opening of the scope channel. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the invention of Sachs in view of Raju such that the scope channel is oriented such that a non-zero angle results in an increased separation between a scope and the suction face when the scope is advanced out a distal opening of the scope channel, as it has been held that rearranging parts of an invention involves only routine skill in the art. MPEP 2144.04
Regarding claim 14, Sachs in view of Raju fails to discloses that the non-zero angle is within a range of 1-20 degrees. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the invention of Sachs in view of Raju to include a non-zero angle within a range of 1-20 degrees, since it has been held that where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device, and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device In Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984). Furthermore, it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
Regarding claim 15, Sachs in view of Raju fails to discloses that the non-zero angle is within a range of 5-15 degrees. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the invention of Sachs in view of Raju to include a non-zero angle within a range of 5-15 degrees, since it has been held that where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device, and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device In Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984). Furthermore, it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
Allowable Subject Matter
Claim 11 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Response to Arguments
Applicant's arguments filed December 29, 2025 have been fully considered but they are not persuasive. Regarding the rejection of the claims as being unpatentable over Sachs in view of Raju, the Applicant argues that Raju discloses using a scope carrier 101 having a carrier channel 202 in which an insertion tube 148 of an endoscope 102 can be disposed, wherein the scope 102 is slidingly disposed within the carrier channel 202 of the scope carrier, however, Raju fails to disclose that the scope carrier 101 is slidingly received within a handle assembly body. It is respectfully submitted that the scope carrier 101 of Raju is akin to the handle assembly body of the claimed invention, wherein the scope channel 202 equates to the claimed scope channel, insertion tube 148 equates to the claimed sliding mechanism comprising a sliding tube slidingly received by the handle assembly body such that the sliding tube defines a proximal end of the scope channel, and the scope 102 equates to the claimed scope. As such, Raju does disclose a sliding mechanism slidingly received by the handle assembly body. For at least the reasons given above, the rejection is considered to stand.
Conclusion
THIS ACTION IS MADE FINAL. 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 TAMMIE K MARLEN whose telephone number is (571)272-1986. The examiner can normally be reached Monday through Friday from 8 am until 4 pm.
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/TAMMIE K MARLEN/Primary Examiner, Art Unit 3796