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 INTERPRETATION
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
No claim limitation has been interpreted under 35 U.S.C. 112(f) because each term connotes sufficient structure to a POSITA. See MPEP § 2181. If applicant contends otherwise, please point to supporting disclosure.
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 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, 11 and 12 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ciulla et al. (US 2016/0166320A1, “Ciulla”).
Regarding claim 1, Ciulla discloses a break-during-suction type surgical ureteroscope includes a ureteroscope main body (100; Fig. 2; [0020]) having a front end portion (distal) and a rear end portion (proximal), a lithotripter (120; [0020]; Fig. 2), and an operating portion operably coupled to the rear end portion (proximal; see annotated figure below). The ureteroscope main body includes a tube structure body (102), at least one perfusion channel (112; [0047]) in the tube structure body extending from the rear end portion to the front end portion. The at least one perfusion channel is provided with at least one perfusion opening (122) located at the front end portion (distal). A suction channel (114;[0046]) in the tube structure body extends from the front end portion to the rear end portion. The suction channel is provided with a suction opening (128) located at the front end portion (distal). The lithotripter is moveably provided in the tube structure body and is capable of switching between a first state and a second state [0020, 0035, 0037,0040, 0045. In the first state a cutting head (distal end) of the lithotripter extends out of the suction opening (Fig. 2) and is capable of breaking calculus. In the second state the cutting head of the lithotripter is capable of retracting to the suction opening and breaking calculus blocked in the suction opening.
PNG
media_image1.png
512
684
media_image1.png
Greyscale
Regarding claim 11, Ciulla discloses that the perfusion opening (122) of the perfusion channel has a first orientation to be capable of allowing fluid to be injected into a renal pelvis from the perfusion opening along the perfusion channel in a first direction (Fig. 2). The suction opening (128) of the suction channel has a second orientation forming a predetermined angle of about 90 degrees (Fig. 2; see annotated figure below) with the first orientation to be capable of allowing the fluid to be sucked into the suction channel from the suction opening in a second direction directed by the second orientation after being diverted in the renal pelvis to form a fluid loop.
PNG
media_image2.png
678
598
media_image2.png
Greyscale
Regarding claim 12, Ciulla discloses that the tube structure body has a front end surface and an outer peripheral surface formed on the front end surface. The perfusion opening (122) is formed on the outer peripheral surface (Fig. 2) of the tube structure body. The suction opening is formed on the front end surface (distal end; Fig. 2) of the tube structure body.
Allowable Subject Matter
Claim(s) 2-10 are 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.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Rontal (US 2006/0069343A1) and Ghani et al. (US 2022/0053998A1) disclose a device including suction and irrigating lumens and an energy probe. Rontal discloses that the device includes a separate lumen through which the energy probe extends but the separate lumen does not extend into the suction channel.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOCELIN C TANNER whose telephone number is (571)270-5202. The examiner can normally be reached M-F 8am-4pm.
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, Jackie Ho can be reached at (571)272-4696. 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.
/JOCELIN C TANNER/Primary Examiner, Art Unit 3771