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 9, 10, 12 and 17-20 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.
Claim 9 is unclear in the last line citing “the first surgical tool is a scalpel tool”, particularly since line 3 states the first surgical tool is a cautery tool. Claims 12 and 17 have the same issue with reciting the first surgical tool as two different tools in the claims. Claims 10 and 18-20 are rejected for their dependency from a rejected claim.
Claim Rejections - 35 USC § 102
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.
Claims 1-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Lies (10,471,580).
Regarding claim 1, Lies provide a multi-purpose surgical tool comprising a housing (203 – Figure 4A) a first portion of the housing (217b) operable to house a first surgical tool (407) operable to be selectively converted between a plurality of configurations including an in-use configuration (i.e. extended) and a stored configuration (as shown in Figure 4A). The stored configuration has the tool contained in the housing (Figure 4A), and the in-use configuration where the tool is exposed from the housing (i.e. extended). See, for example, column 2, lines 58-65 and column 3, lines 23-35. A second portion of the housing (217a) houses a second surgical tool (406 – Figure 4A) which also has extended (in-use) and retracted (shown in Figure 4A) positions.
Regarding claim 2, the first tool is a cautery tool (407) and the second tool is a forceps tool (406). See column 3, lines 8-10. Regarding claim 3, there is a third tool (409) comprising a scalpel tool in a third portion of the housing (217c). Regarding claim 4, the first and second tools may be at opposite ends of the housing (i.e. forceps 406 and scalpel 409 are at opposite sides of the housing. Regarding claim 5, the tools are individually extendable to an in-use state and hence may have two tools extended at the same time. Regarding claim 6, the second portion of the housing (217a) includes an internal mounting surface to securely position the surgical tool (see Figures 4A and 4B). Regarding claim 7, there is a tool slider (i.e. motor and gears) with a locking mechanism (e.g. 413) to cause the first surgical tool to extend and retract. See column 3. Regarding claim 8, there is an electrical connector to connect at least one surgical tool to an electrosurgical generator (which would be required for the electrocautery tool – see column 3). Regarding claim 9, the first portion of the housing (217b) is a cautery housing and the first surgical tool is a cautery tool (407), and the second portion of the housing (217c) is a scalpel housing for housing a scalpel tool (409). Regarding claim 10, each of the tools has in-use and stored configurations.
Regarding claim 11, Lies again provides a multi-purpose tool comprising a housing (203) with a first portion of the housing for housing a first surgical tool and movable between in-use and stored configurations, and a second portion of the housing to house a second tool extending from a second end (i.e. side) of the housing. See again the discussion of claim 1 above.
Regarding claim 12, the first tool may be a scalpel housing or a cautery housing with the first tool being either a cautery tool (407) or a scalpel (409), and the second portion of the housing may be a forceps tool (406) as seen in Figures 4A and 4B. Regarding claim 13, each tool has a slider (215a-c) and there is a locking member (413) operable to engage with a channel to prevent actuation of each of the devices (column 3). Regarding claim 14, there is a third tool being a scalpel tool (409) and a slider assembly (215c) operable to move the scalpel between extended and retracted positions. Button (413) again acts as a safety locking mechanism for all tools as discussed at column 3. Regarding claim 15, all three tools are extendible in a parallel relationship (see Figures 4A and 4B).
Regarding claim 16, Lies again provides a multi-purpose tool comprising a housing with first and second surgical tools extendible from (in-use configuration) and retractable into (stored configuration) the housing as discussed with respect to claim 1 above. The first and second tools may be at least partially exposed at the same end of the housing as all tools are individually actuatable. See Figures 4A and 4B.
Regarding claim 17, the first tool may be a cautery tool (407) and the second tool may be a scalpel (409). Regarding claim 18, Lies provides one or more power buttons (229) operable to control a power supply to a control circuit for each of the devices. Regarding claim 19, Lies provides a third portion of the housing to house a forceps tool (406). Regarding claim 20, Lies again provides buttons (229) to actuate the devices, and may also employ a touch screen to activate and energize the tools (column 3, for example).
Claims 1, 2, 4-8, 11-13 and 16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Barlow et al (8,715,281).
Barlow et al provides a multi-purpose surgical tool comprising a housing (200 – Figure (23), a first portion of the housing operable to at least partially house a first surgical tool (400), the surgical tool selectively converted between an in-use configuration (shown in Figure 23) and a stored configuration (within the lumen of the housing). A second portion of the housing houses a second surgical tool (50) which is also operable to include a second in-use configuration (shown in Figure 23) whereby the tool is exposed from the housing.
Regarding claim 2, the first portion of the housing is a cautery housing section that houses a cautery tool (400), and the second portion of the housing is a forceps housing that houses a forceps tool (50). Regarding claim 4, the first and second tools extend from opposite ends (i.e. sides) of the housing. Regarding claim 5, the first and second tools may be in the in-use configuration at the same time (as seen in Figure 23). Regarding claim 6, the second portion of the housing includes an internal mounting surface (i.e. lumen) to securely position the second tool (i.e. forceps) in the second portion of the housing. Regarding claim 7, there is a tool slider (handles 240 and 606) for each tool and a locking mechanism (702,704) which controls the first tools conversion from a retracted position to an in-use (i.e. extended) position. Regarding claim 8, there is an electrical connector (220) for connecting the first surgical tool to a generator (col. 8, lines 1-4, for example).
Regarding claim 11, Barlow et al again provide a multi-purpose surgical tool comprising a housing (200) and a first portion on the housing that houses a first surgical tool (400) selectively convertible between an in-use configuration (shown in Figure 23) and a stored configuration within the lumen in the housing. A second portion of the housing houses a second surgical tool (50) having a configuration extending from a second end (i.e. opposite side) of the housing (Figure 23).
Regarding claim 12, the first surgical tool is a cautery tool (400) and the second surgical tool is a forceps tool (Figure 23). Regarding claim 13, see discussion of claim 7 above.
Regarding claim 16, Lies again provides a multi-purpose surgical tool comprising a housing (200) with a first portion of the housing operable to house a first surgical tool that is selectively convertible between an in-use configuration (shown in Figure 23) and a stored configuration within the lumen in the housing. A second portion of the housing is operable to house a second surgical tool (50) which also has an in-use configuration (shown in Figure 23) and a stored configuration within the lumen of the housing.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Sugiyama et al (2010/0168744) and Kappel et al (2013/0172828) disclose another device having a cautery tool and a forceps device extendable from lumens of a housing to treat tissue. Haber et al (5,376,087) discloses another device having a plurality of tools selectively extendable from a housing.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL PEFFLEY whose telephone number is (571)272-4770. The examiner can normally be reached Mon-Fri 8 am-5 pm.
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/MICHAEL F PEFFLEY/Primary Examiner, Art Unit 3794
/M.F.P/ February 27, 2026