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 .
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 19 are 21 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. There is no text for claim 19, therefore the scope of the claim cannot be determined. Claim 21 is rejected for claiming dependency upon claim 19.
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.
Claim(s) 1-4 and 6-7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US Patent Application Publication 2005/0234297 to Devierre et al (hereinafter “Devierre”). Devierre discloses an auxiliary medical system (Fig. 1, 10) for use with another medical device (Element 60) having a proximal end (Element 12) and a distal end (Element 13), the auxiliary system comprising:
a flexible elongate member (Fig. 1, 11) having a device-engaging section sized, shaped, configured, and/or dimensioned to engage the other medical device ([0051] [0054]); a distal mount (Element 31 and 32) configured to engage the other medical device proximate to a distal end of the other medical device ([0064] [0068]); and a proximal mount configured to engage the other medical device proximate to a proximal end of the other medical device (Figs. 1 and 2A, Element 20, [0057])
wherein said flexible elongate member comprises a sheath having a length selected to extend at least partially along the length of the other medical device (Fig. 2A, Element 22, alternatively the flexible elongate member is disclosed as being multi-layered [0053])
wherein said sheath has a device- engaging section with a concave shape configured to receive a convexly curved outer surface of the other medical device (Fig. 2A, Element 29, [0062])
wherein said distal mount is configured to mount on a distal end of a medical scope (Fig. 3A, Elements 31 and 32)
wherein said flexible elongate member has one or more auxiliary working channels extending therethrough (Element 17, [0055])
one or more attachment strips having a first end attachable to said flexible elongate member and wrappable around said flexible elongate member and the other medical device to secure said auxiliary medical system with respect to the other medical device (more proximal Element 20, [0060] [0061])
Claim(s) 12-21 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US Patent Application Publication 2014/0343358 to Hameed (hereinafter “Hameed”). Hameed teaches an auxiliary medical system comprising:
an auxiliary device (Element 1400, [0073]) configured to be mounted with respect to the other medical device; and at least one mount configured to engage the other medical device and an end of an attachment strip configured to be wrapped around said auxiliary device and the other medical device (Elements 1500, 1501, 1502, and 1503, according to [0036] Element 1500 is usable in with any secondary imaging device disclosed)
wherein said at least one mount is an end cap configured to be mounted with respect to a distal end of the other medical device (Fig. 14 A-F shows 1400 capping the distal end)
wherein said at least one mount includes at least one hook configured to engage a hole in an end of an attachment strip configured to be wrapped around said auxiliary device and the other medical device (Elements 1502 and 1503, [0036])
at least one attachment strip having a first end with a hole defined therethrough shaped to extend over said at least one hook of said at least one mount to secure the first end of said at least one attachment strip with respect to said at least one mount (Elements 1502 and 1503, [0036])
Hameed also discloses a method of engaging an auxiliary device with respect to another medical device comprising:
engaging a section of the auxiliary device with the other medical device ([0036]); and securing the auxiliary device with respect to the other medical device with two or more attachment strips by attaching a free end of the attachment strips to the auxiliary device and wrapping the attachment strips around the auxiliary device and the other medical device (1501, 1502, 1503, Fig. 15A, [0036] discusses a kit with multiple strips provided for attachment)
wherein the auxiliary device is a sheath, and engaging a section of the sheath with the other medical device comprises engaging a concave section of the sheath with a convex surface of the other medical device ([0073], C-Clip)
wherein: the other medical device is a medical scope ([0036], attachment to endoscope); the auxiliary device further includes a distal mount configured to be mounted on a distal end of the medical scope (Fig. 14A, 1405); and said method further comprising orienting features on the distal mount of the auxiliary device with respect to features of the medical scope ([0042], accelerometer as orienting feature)
Claim 19 has no text
wherein securing the auxiliary device with respect to the other medical device further comprises tightening at least one of the attachment strips while wrapping the at least one attachment strip after securing the free end of the at least one attachment strip with respect to the auxiliary device ([0036])
wherein the auxiliary device further includes a distal mount (1405) configured to be mounted with respect to a distal end of the other device, said method further comprising hooking a hole formed in the free end of the at least one of the attachment strips over a hook extending from the distal mount (Elements 1523, 1524, [0036])
Claim Rejections - 35 USC § 103
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.
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Devierre in view of US Patent Application Publication 2020/0390319 to Miller (hereinafter “Miller”). Devierre discloses a distal mount (Elements 31 and 32), but does not disclose specifically a distal stop. However, Miller discloses a auxiliary medical system wherein said distal mount (Element 310) includes a distal stop (Element 324) against which the distal end of the medical scope is abutted when fitted within said distal mount, the distal stop including indicia relative to which a feature of the medical scope is rotationally alignable ([0050] [0055]). It would have been obvious before the effective filing date of the claimed invention to modify Devierre to include the distal stop with indicia such as that taught by Miller in order to fit the medical components together properly without causing damage to either of the medical components in an expeditious manner to as to avoid improver fittings (Miller, [0006]).
Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Devierre in view of US Patent Application Publication 2018/0042602 to Mitelburg (hereinafter “Mitelburg”). Devierre does not disclose a tape system including said one or more attachment strips. However, Mitelburg discloses an auxiliary medical system for attachment to another device comprising a tape system including said one or more attachment strips ([0041]). It would have been obvious before the effective filing date of the claimed invention to modify Devierre to include a tap system such as taught by Mitelburg to additionally secure the cap assembly relative to the endoscope during use (Mitelburg [0041]).
Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Devierre and Mitelburg as applied to claim 8 above, and further in view of UK Patent Application Publication GB 2,457,461 to Palastre (hereinafter “Palastre”). Devierre and Mitelburg do not disclose that the tape system further comprises a tap applicator. However, Palastre discloses a dispensing device for medical tape (Abstract, Fig. 1). It would have been obvious before the effective filing date of the claimed invention to modify Devierre and Mitelburg to include a tape applicator such as that taught by Palastre as it may be difficult to wrap the endoscope and auxiliary device tightly during a surgical procedure.
Claim(s) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Devierre in view of Hameed. Devierre discloses a distal mount (Elements 31 and 32), but does not disclose that said distal mount includes hooks and at least one of said one or more attachment strips includes holes for securing over said hooks. However, Hameed discloses an auxiliary medical system for attachment to an endoscope wherein said distal mount includes hooks and at least one of said one or more attachment strips includes holes for securing over said hooks ([0036]). It would have been obvious before the effective filing date of the claimed invention to modify Devierre to include hooks on the distal mount for engagement with the attachment strips such as that taught by Hameed in order to tightly secure the additional endoscopic element to the main endoscopic device tightly (Hameed [0036]).
Claim(s) 11 is rejected under 35 U.S.C. 103 as being unpatentable over Devierre in view of US Patent Application Publication 2011/0099773 to Golden (hereinafter “Golden”). Devierre discloses a proximal mount (Figs. 1 and 2A, Element 20), but does not disclose that said proximal mount is configured to be coupled with a handle of the other medical device. However, Golden discloses an attachment system for an auxiliary device to be connected with an endoscope wherein said proximal mount is configured to be coupled with a handle of the other medical device (Fig. 1B, [0024] [0028]). It would have been obvious before the effective filing date of the claimed invention to include mounting the proximal mount to the handle of the endoscope such as that taught by Golden so that a physician only needs one hand to grasp both the endoscope and the auxiliary device.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL JAMES CAREY whose telephone number is (571)270-7235. The examiner can normally be reached Monday-Friday (8am-5pm).
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jonathan Moffat can be reached at 571-272-4930. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MICHAEL J CAREY/Supervisory Patent Examiner, Art Unit 3795
Prosecution Insights