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 § 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
1. Claim(s) 1-3, 13-14, and 28 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Banerjee (US 20200046333 A1).
In regards to claim 1, Banerjee teaches a device (Abstract) comprising:
a rod (Figs 1-12, elements [22] and [48] show a rod member that extends and comprises a channel and tip) with a tip (Figs 1-12, element [47]) and a channel formed in the tip (Fig 2 and Par. 0049 teaches a hole [62] that is formed in the tail, i.e. rod);
a containment member including a first end and a second end opposite the first end (Fig 2 and Par. 0035 teach a specimen bag [40], i.e. containment member);
wherein the second end is coupled to the tip (Par. 0035 teaches the specimen bag is coupled to the tip [47]); and
wherein the containment member includes an opening positioned at the first end (Fig 2 shows the opening [45] of the specimen bag [40]. See also Par. 0038); and
a string coupled to the opening of the containment member, the string extends through the channel in the tip (Fig 2 shows the string [70] that is extending through the hole/channel [62]. See also Par. 0058).
In regards to claim 2, Banerjee teaches the device of claim 1, further including a sheath defining a passageway (Fig 2 shows a tubular body, i.e sheath [12] with a bore, i.e. passageway [14]. See also Par. 0035);
wherein the rod is positioned at least partially within the passageway and movable with respect to the sheath (Par. 0035 teaches the rod assembly [48] being movable within the sheath [14]); and
wherein the string extends through the passageway; wherein the opening in the containment member is oriented toward the sheath (Par. 0035, 0058 and Fig 12 show the string [70] going through the channel [62] with the opening [45] is towards the sheath [12]).
In regards to claim 3, Banerjee teaches the device of claim 1, wherein the rod includes a rod passageway, and wherein the string extends through the rod passageway, and wherein the string includes a graspable member coupled to an end of the string (Par. 0061 and Fig 2 show a loop [74] at the end of the string, i.e. a graspable member).
In regards to claim 13, Banerjee teaches the device of claim 1, wherein the rod defines a longitudinal axis and the opening faces a plane that is perpendicular to the longitudinal axis (Fig 2 shows the rod [48] with an opening [62] that opens up perpendicularly to the rod).
In regards to claim 14, Banerjee teaches the device of claim 1, further comprising a handle coupled to the rod, wherein the handle includes a slot configured to releasably secure the string (Par. 0035 teaches a handle [25]).
In regards to claim 28, Banerjee teaches the device of claim 1, wherein the rod is a first rod with a first rod end (Fig 2 shows there being rod [48]); and
wherein the device further comprises a second rod with a second rod end (Fig 2 shows a second rod [12]);
wherein the first end of the containment member is coupled to the first rod end of the first rod and the second end of the containment member is coupled to the second rod end of the second rod, wherein the second rod is movable with respect to the first rod to elongate the containment member (Fig 2 and Par. 0038 teach the first rod having the containment bag [45] and being inserted and moveable into the second rod [12] via the hole [14]).
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.
2. Claim(s) 15, and 25-26 is/are rejected under 35 U.S.C. 103 as being unpatentable over Banerjee.
In regards to claim 15 and 25-26, Banerjee teaches the device of claim 1, wherein the string is looped around the opening of the containment member, wherein the opening at least partially closes in response to actuation of the string; wherein the opening of the containment member enlarges in response to actuation of the expansion string, and wherein a specimen positioned within the containment member is compressed in response to actuation of the compression string (Par. 0038 teaches the bag/containment member can be opened and closed, i.e. expand and compress via the string. Fig 2 shows the string 70 being around the member).
At the time the invention was made, it would have been an obvious matter of design choice to a person of ordinary skill in the art to have both a compression string and an expansion string because Applicant has not disclosed that having two separate strings provides an advantage, is used for a particular purpose, or solves a stated problem. One of ordinary skill in the art, furthermore, would have expected Banerjee and applicant' s invention, to perform equally well with either the single string to expand and compress taught by Banerjee or the claimed two strings because both would perform the same function of expanding and compressing the containment bag equally well.
Therefore, it would have been prima facie obvious to modify the string of Banerjee to obtain the invention as specified in the claim because such a modification would have been considered a mere design consideration which fails to patentably distinguish over the prior art of Banerjee.
3. Claim(s) 4-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Banerjee in view of Pfeffer (US 5735289 A).
In regards to claim 4, Banerjee discloses the device of claim 1, wherein the containment member is a first containment member (Fig 2). Banerjee does not disclose the device further includes a second containment member; wherein the first containment member is positioned at least partially within the second containment member.
However, in the same field of endeavor, Pfeffer discloses a specimen retrieval device (Abstract) where there is a second containment member [24] inside of the first containment member [22] (Col 3, lines 40-60 and Fig 1) in order to avoid spreading the potentially cancerous or infectious specimen that is being removed (Col 3, lines 14-18)..
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have taken the teachings of Banerjee and modified them by having the device comprise a second containment member, as taught and suggested by Pfeffer, in order to avoid spreading the potentially cancerous or infectious specimen that is being removed (Col 3, lines 14-18 of Pfeffer).
In regards to claim 5, the combined teachings of Banerjee and Pfeffer disclose the device of claim 4, wherein the first containment member is a mesh sleeve (Col 3, lines 60-67 of Pfeffer).
In regards to claim 6, the combined teachings of Banerjee and Pfeffer disclose the device of claim 5, wherein the second containment member is impermeable to fluid (Col 4, lines 49-53 of Pfeffer teach the member is made of an impermeable material)
In regards to claim 7, the combined teachings of Banerjee and Pfeffer disclose the device of claim 4, wherein the second containment member includes a third end and a fourth end opposite the third end (Fig 1 and 2A of Pfeffer show the containment member [22] having a proximal and distal end), wherein the second containment member includes a second opening positioned at the third end (Fig 1 and 2a show the pouch having an opening)
In regards to claim 8, the combined teachings of Banerjee and Pfeffer disclose the device of claim 7, wherein a drawstring is coupled to the second opening; wherein the second opening at least partially closes in response to actuation of the drawstring (Col 6, lines 4-21 of Pfeffer teach there being pulling strings to close the pouch).
4. Claim(s) 9-11, 16, and 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Banerjee in view of Hart (US 20070135781 A1)
In regards to claim 9, 11 and 16, Banerjee discloses the device of claim 1, wherein the string is a first string. However, Banerjee does not disclose the device further includes a second string coupled to the opening of the containment member; wherein the second string is further coupled to a user-actuated tightening mechanism.
However, in the same field of endeavor, Hart teaches a tissue/specimen retrieval device (Abstract) wherein there is a second string [250] that is coupled to a handle member [115, 116] that can be pulled/actuated (Par. 0055 and 0041) in order to ensures that during closure of the bag, complete incremental closure of the bag and/or withdrawal of the support arms from the specimen bag are achieved (Par. 0056)
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have taken the teachings of Banerjee and modified them by having the device comprise a second string with an actuation member, as taught and suggested by Hart, in order to ensures that during closure of the bag, complete incremental closure of the bag and/or withdrawal of the support arms from the specimen bag are achieved (Par. 0056)
In regards to claim 10, the combined teachings of Banerjee and Hart disclose the device of claim 9, wherein the opening of the containment member enlarges in response to actuation of the first string, and wherein a specimen positioned within the containment member is compressed in response to actuation of the second string (Par. 0055-0056 of Hart teaches enlarging and shutting the opening).
In regards to claim 17, the combined teachings of Banerjee and Hart disclose the device of claim 16, further including a handle coupled to the rod (Par. 0035 element 25 of Banerjee), wherein the handle includes a groove that at least partially receives the user-actuated tightening mechanism; wherein the user-actuated tightening mechanism includes a faceted circumferential surface that is rotatable relative to the groove (Par. 0041 of Heart teaches there being a stationary handle 115 and a movable handle 116 that can also for the tightening to happen, thus being able to receive the tightening mechanism).
5. Claim(s) 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Banerjee in view of Ahluwalia (US 20190336152 A1)
In regards to claim 12, Banerjee discloses the device of claim 1, wherein the string is a first string. Banerjee does not disclose wherein the device further includes a second string, a third string, and a fourth string; or wherein the second string is coupled to the opening within a range of 90 degrees to 120 degrees from the first string, the third string is coupled to the opening within a range of 60 degrees to 90 degrees from the second string, and the fourth string is coupled to the opening within a range of 60 degrees to 90 degrees from the third string.
However, in the same field of endeavor, Ahluwalia teaches a surgical retrieval device (Abstract) wherein the device employes a pouch with one or more memory wire pieces, i.e. strings with varying opening degrees (Par. 0033 and element [90] teach these memory wires/strings. Fig 3D shows the opening degrees) in order to enable expansion of retrieval bag.
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have taken the teachings of Banerjee and modified them by having the device comprise several strings, as taught and suggested by Ahluwalia, in order to enable expansion of retrieval bag.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SKYLAR LINDSEY CHRISTIANSON whose telephone number is (571)272-0533. The examiner can normally be reached Monday-Friday, 7:30-5:30 EST.
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, Niketa Patel can be reached at (571) 272-4156. 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.
/S.L.C./Examiner, Art Unit 3792
/MICHAEL W KAHELIN/Primary Examiner, Art Unit 3792