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 .
Response to Arguments
The drawings were received on 5/15/2026. These drawings are acceptable.
The previous objection of claims 29 and 31 due to minor informalities has been withdrawn in light of applicant’s amendments made 5/15/2026.
The previous rejections of claim(s) 21-24 over 35 U.S.C. 112(a) as failing to comply with the written description requirement has been overcome in light of the amendments made to claim(s) 21 on 5/15/2026. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Adams et al. (US 2017/0027611 A1).
The previous rejection of claim(s) 31 and 33-36 over 35 U.S.C. 112(b) as being indefinite has been overcome in light of the amendments made to claim(s) 31, 33 and 35-36 on 5/15/2026.
Applicant's arguments filed 5/15/2026 with respect to independent claims 25 and 33 have been fully considered but they are not persuasive. Applicant argues that none of the cited references, whether considered alone or in combination, teach or suggest a sealed cylinder as claimed. The examiner respectfully disagrees. Applicant defines “a sealed cylinder” as a suction chamber with a port that connects to a vacuum line such that pathological tissues and fluid flow are sucked into the sealed cylinder 362 inside the irrigation chamber 360 and out through the lateral port 364 connected to a vacuum line ([0051]). Accordingly, a cylindrical chamber that holds a vacuum is understood to be a “sealed cylinder” as claimed. Figure 16B of Adams et al. (US 2017/0027611 A1) discloses a vacuum port 116 which is equivalent to the claimed “a sealed cylinder” because it is a cylindrical suction chamber with a port that connects to a vacuum line which connects to a collection system 430 and a vacuum source 432 (Fig. 4; [0055]). Adams further discloses applying vacuum pressure to the vacuum port 116 of the cutting instrument ([0055]); and, thereby resecting the tissue ([0073]; [0114]).
Hence, for at least the above reasons, applicant’s arguments are not found to be persuasive, and the application is not in condition for allowance.
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) 21, 23-25 and 29-36 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Adams et al. (US 2017/0027611 A1).
Regarding claim 21, Adams discloses a method of resecting tissue (removing uterine polyps via a hysteroscopic resectoscope; [0044]), comprising: delivering a tissue resector (polypectomy device 100 of Fig. 1A with the distal end 806 as shown in Figs. 8A-8B; [0114]) to a tissue (see for example, Fig. 4), the tissue resector (100) comprising: a handle (handle 102); an outer cutting tube (outer tubular member 804), wherein a proximal portion of the outer cutting tube is attached to the handle (Figs. 1A, 8A); a sealed cylinder (vacuum port 116; Figs. 1A, 16B; it is noted that a “sealed cylinder” is understood by applicant’s specification to be a cylindrical chamber that holds a vacuum; [0051]) positioned within the handle (as at least the distal end of 116 is positioned within the handle 102; Fig. 16B) near the proximal portion of the outer cutting tube (Fig. 16B); and an inner cutting tube (inner tubular member 214) concentrically positioned and rotatable with a lumen of the outer cutting tube (Figs. 8A-8B); activating a motor (motor; [0061]) to rotate the inner cutting tube (214) relative to the outer cutting tube (804; as a button, trigger, foot pedal, and/or the like may be configured to actuate a or activate a motor that causes movement of the inner tubular member with respect to the outer tubular member; [0061]); connecting a source of negative pressure (vacuum source) to a port (proximal end of 116) of the sealed cylinder (as vacuum port 116 is configured to be coupled to a vacuum source via a hose; [0055]); applying the negative pressure to a lumen of the inner cutting tube ([0055]); and resecting the tissue ([0073]; [0114]).
Regarding claim 23, Adams discloses delivering a hysteroscope (hysteroscope 300) to the tissue and advancing the tissue resector (100) through the hysteroscope (Fig. 4).
Regarding claim 24, Adams discloses distending a location of the tissue through a modular outflow channel of the hysteroscope (as the doctor distends the patient’s uterus by passing fluid through the scope and into the uterus; [0188]).
Regarding claim 25, Adams discloses a method of resecting tissue (removing uterine polyps via a hysteroscopic resectoscope; [0044]), comprising: placing a cutting instrument (polypectomy device 100 of Fig. 1A with the distal end 806 as shown in Figs. 8A-8B; [0114]) near tissue to be resected (see for example, Fig. 4); advancing the cutting instrument (as polypectomy device 100 is advanced through hysteroscope 300; Fig. 4; [0070]); rotating an inner cutter (inner tubular member 214) relative to an outer cutter (outer tubular member 804) of the cutting instrument (as 214 is caused to rotate with respect to 804; [0115]; Figs. 8A-8B); applying vacuum pressure to a sealed cylinder (vacuum port 116; Figs. 1A, 16B; it is noted that a “sealed cylinder” is understood by applicant’s specification to be a cylindrical chamber that holds a vacuum; [0051]) of the cutting instrument (as the doctor can activate the vacuum source to remove a polyp through the openings of 214 and 804 similar to the openings 108 of the distal end 106; [0055]); and, thereby resecting the tissue ([0073]; [0114]).
Regarding claim 29, Adams discloses wherein the rotating the inner cutter (214) relative to the outer cutter (804) comprises rotating a cutting window of the inner cutter relative to a cutting window of the outer cutter (windows of 214 and 804 as shown in Figs. 8A-8B).
Regarding claim 30, Adams discloses wherein applying vacuum pressure to the cutting instrument comprises pulling fluid through a distal end of the cutting instrument (as fluid is pulled through the openings in 214 and 808 similar to the openings 108 described in the distal end 106; [0055]).
Regarding claim 31, Adams discloses wherein the pulling fluid through the distal end of the cutting instrument comprises applying suction ([0055]) through the cutting instrument each time the rotation of the cutting window of the inner cutter relative to the cutting window of the outer cutter results in closure of the cutting window of the outer cutter (as the openings in 214, 804 are temporarily blocked by rotation of 214 relative to 204 and the vacuum suction is continuous; [0055]; Figs. 8A-8B).
Regarding claim 32, Adams discloses wherein applying vacuum pressure to the cutting instrument comprises pulling fluid through a distal end of the cutting instrument (as fluid is pulled through the openings in 214 and 808 similar to the openings 108 described in the distal end 106; [0055]).
Regarding claim 33, Adams discloses a method of resecting tissue (removing uterine polyps via a hysteroscopic resectoscope; [0044]), comprising: placing a cutting assembly (polypectomy device 100 of Fig. 1A with the distal end 806 as shown in Figs. 8A-8B; [0114]) adjacent tissue (polyp) to be resected (Fig. 4); advancing the cutting assembly (as polypectomy device 100 is advanced through hysteroscope 300; Fig. 4; [0070]); rotating an inner cutting body (inner tubular member 214) relative to an outer cutting body (outer tubular member 804) of the cutting assembly (as 214 is caused to rotate with respect to 804; [0115]; Figs. 8A-8B); intermittently applying suction to a sealed cylinder (vacuum port 116; Figs. 1A, 16B; [0055]; it is noted that a “sealed cylinder” is understood by applicant’s specification to be a cylindrical chamber that holds a vacuum; [0051]) of the cutting assembly according to each rotation of the inner cutting body relative the outer cutting body (as the openings in 214, 804 are temporarily blocked by rotation of 214 relative to 204 and the vacuum suction is continuous through the openings in 214 and 808 similar to the openings 108 described in the distal end 106; [0055]; Figs. 8A-8B); and, thereby resecting the tissue ([0073]; [0114]).
Regarding claim 34, Adams discloses wherein the inner cutting body (214) and the outer cutting body (804) each include a cutting window (openings in 214 and 804 as shown in Figs. 8A-8B).
Regarding claim 35, Adams discloses wherein the intermittent application of suction corresponds to closure of the cutting window of the outer cutting body by the inner cutting body (Figs. 8A-8B).
Regarding claim 36, Adams discloses wherein the intermittent application of suction comprises suction of fluid through a distal end of the cutting assembly (as the openings in 214, 804 are temporarily blocked by rotation of 214 relative to 204 and the vacuum suction is continuous through the openings in 214 and 808 similar to the openings 108 described in the distal end 106; [0055]; Figs. 8A-8B).
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.
Claim(s) 22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Adams et al. (US 2017/0027611 A1) in view of Fabro et al. (US 2013/0103067 A1) in view of Jenkins et al. (US 2014/0277043 A1).
Regarding claim 22, Adams discloses a button, trigger, foot pedal, and/or the like may be configured to actuate or activate a motor to cause movement of the inner cutter relative to the outer cutter ([0061]) but fails to explicitly disclose wherein rotating the inner cutter relative to the outer cutter comprises simultaneously actuating both a leaf spring trigger and a momentary switch of the tissue resector.
However, Fabro teaches a tissue removal device (tissue removal assembly 408; Figs. 4A-4E) comprising an inner cutter (impeller 804; Fig. 8A) rotatable relative to an outer cutter (impeller housing 807; as actuated rotatable shaft 803 will rotate impeller 804; [0069]), wherein rotating the inner cutter (804) relative to the outer cutter (807) comprises actuating a trigger (trigger 810; [0068]). Fabro further teaches the control interface i.e., actuator may comprise a trigger that may be squeezed to operate the device and/or may comprise a push button, a slide, a dial, a knob, a lever and/or a pivot member ([0043]). Thus, the actuator may comprise a trigger and a push button, both of which are pressed by a user.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of Adams such that rotating the inner cutter relative to the outer cutter comprises simultaneously actuating at least two switches, wherein the simultaneously actuating at least two switches comprises pressing the at least two switches by one user in light of the teachings of Fabro in order to have an additional safety feature in which both switches need to be pressed for the cutting instrument to work.
Modified Adams discloses wherein the at least two switches comprise at least one trigger (810 of Fabro; Figs. 4A-4B) and a momentary switch (push button of Fabro; [0043]), but fails to explicitly disclose the trigger being a leaf spring trigger.
However, Jenkins teaches a pivoting trigger (2628) that is biased away from a pistol grip (2624) by a leaf spring (resilient member comprising a leaf spring; [0216]; Figs. 32, 34).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the trigger of modified Adams to be a leaf spring trigger as taught by Jenkins in order to resiliently bias the trigger in the uncompressed position to prevent inadvertent actuation thereof.
Claim(s) 26-27 is/are rejected under 35 U.S.C. 103 as being unpatentable over Adams et al. (US 2017/0027611 A1) in view of Fabro et al. (US 2013/0103067 A1).
Regarding claims 26-27, Adams discloses a button, trigger, foot pedal, and/or the like may be configured to actuate or activate a motor to cause movement of the inner cutter relative to the outer cutter ([0061]) but fails to explicitly disclose wherein rotating the inner cutter relative to the outer cutter comprises simultaneously actuating at least two switches, wherein the simultaneously actuating at least two switches comprises pressing the at least two switches by one user.
However, Fabro teaches a tissue removal device (tissue removal assembly 408; Figs. 4A-4E) comprising an inner cutter (impeller 804; Fig. 8A) rotatable relative to an outer cutter (impeller housing 807; as actuated rotatable shaft 803 will rotate impeller 804; [0069]), wherein rotating the inner cutter (804) relative to the outer cutter (807) comprises actuating a trigger (trigger 810; [0068]). Fabro further teaches the control interface i.e., actuator may comprise a trigger that may be squeezed to operate the device and/or may comprise a push button, a slide, a dial, a knob, a lever and/or a pivot member ([0043]). Thus, the actuator may comprise a trigger and a push button, both of which are pressed by a user.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of Adams such that rotating the inner cutter relative to the outer cutter comprises simultaneously actuating at least two switches, wherein the simultaneously actuating at least two switches comprises pressing the at least two switches by one user in light of the teachings of Fabro in order to have an additional safety feature in which both switches need to be pressed for the cutting instrument to work.
Claim(s) 28 is/are rejected under 35 U.S.C. 103 as being unpatentable over Adams et al. (US 2017/0027611 A1) in view of Fabro et al. (US 2013/0103067 A1), as applied to claim 28 above, and further in view of Jenkins et al. (US 2014/0277043 A1).
Regarding claim 28, modified Adams discloses wherein the at least two switches comprise at least one trigger (810; Figs. 4A-4B) and a momentary switch (push button; [0043]), but fails to explicitly disclose the trigger being a leaf spring trigger.
However, Jenkins teaches a pivoting trigger (2628) that is biased away from a pistol grip (2624) by a leaf spring (resilient member comprising a leaf spring; [0216]; Figs. 32, 34).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the trigger of modified Adams to be a leaf spring trigger as taught by Jenkins in order to resiliently bias the trigger in the uncompressed position to prevent inadvertent actuation thereof.
Conclusion
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 SARAH A LONG whose telephone number is (571)270-3865. The examiner can normally be reached Monday-Friday 9am-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, Elizabeth Houston can be reached at (571)272-7134. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SARAH A LONG/Primary Examiner, Art Unit 3771
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