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The previous objection of claims 1-3, 5-11 and 13-14 due to minor informalities has been withdrawn in light of applicant’s amendments made 7/15/2026.
The previous rejection of claim(s) 1-15 and 17-18 over 35 U.S.C. 112(b) as being indefinite has been overcome in light of the amendments made to claim(s) 1, 5-6, 9-11 and 13-14 along with the cancelation of claims 16-18 on 7/15/2026.
Applicant’s arguments, see page 9, filed 7/15/2026, with respect to claim 1 have been fully considered and are persuasive. The rejection of 1 has been withdrawn.
Applicant's arguments filed 7/15/2026 with respect to claims 19 and 20 have been fully considered but they are not persuasive. Applicant argues new claims 19 and 20 have been added based on the allowable subject matter noted in the Office Action mailed 4/16/2026. However, new claim 19 is a combination of claims 1 and 7 and new claim 20 is a combination of claims 1 and 8. Both claims 7 and 8 were previously rejected in the Office Action mailed 4/16/2026. No additional arguments were raised with respect to previously filed claims 7 and 8. Therefore, the rejection is maintained.
New rejections are made over claims 13-15 based on applicant’s amendment, as discussed below. Accordingly, the application is not found in condition for allowance at this time.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
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.
This application includes one or more claim limitations that use the word “means” or “step” but are nonetheless not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph because the claim limitation(s) recite(s) sufficient structure, materials, or acts to entirely perform the recited function. Such claim limitation(s) is/are: by means of the ultrasonic vibration exciter in claim 12, by means of a vibration excitation device in claim 16, by means of the clamped elastic element in claim 17, by means of the vibration excitation device, and by meansy of the elastic element in claim 18.
Because this/these claim limitation(s) is/are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are not being interpreted to cover only the corresponding structure, material, or acts described in the specification as performing the claimed function, and equivalents thereof.
If applicant intends to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to remove the structure, materials, or acts that performs the claimed function; or (2) present a sufficient showing that the claim limitation(s) does/do not recite sufficient structure, materials, or acts to perform the claimed function.
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 13-15 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 13 recites the limitation "the respective excitation surface and/or further excitation surfaces" in line 3. There is insufficient antecedent basis for this limitation in the claim. For example, claim 13 depends from claim 2 which requires all of the impact bodies to be configured to strike obliquely with the first excitation surface.
Claim 14 recites the limitation “a horn” in line 3. Claim 14 depends from claim 13 which recites “a horn” in line 4. Accordingly, it is unclear if applicant has intended to claim an additional horn or the same horn. For the purposes of examination, the limitation has been interpreted to read “the horn.”
Claim 15 recites the limitation "in each case having an assigned impact body with a clamped elastic element or having a plurality of assigned impact bodies in each case with a clamped elastic element" in lines 3-5. There is insufficient antecedent basis for this limitation in the claim. Claim 15 depends from claim 13, which depends from claim 2. Claim 2 recites “a respective clamped elastic element is arranged at one end of each impact body and a respective free end of each impact body is configured to strike obliquely with the first excitation surface” in lines 3-6. Thus, it is unclear if the clamped elastic element(s) of claim 15 are intended to be the same or in addition to that of claim 2. It is further unclear if the “second striking body” of line 2 of claim 15 is intended to include “the first excitation surface” of claim 2 or an additional second striking surface because claim 2 requires all of the impact bodies to strike the same first excitation surface. Appropriate clarification is required.
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) 19-20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Bond et al. (US 2014/0371636 A1).
Regarding claim 19, Bond discloses a lithotripsy device (reference is made to the device of Figs. 12A-12B for similar parts though the embodiment of Figs. 13-16G is being applied to the rejection) for fragmenting body stones, the lithotripsy device comprising: a carrier unit (housing 18e); a sonotrode (waveguide tube 32f) that is connectable to the carrier unit (18e) on the distal side and has a longitudinal center axis (Fig. 12A); at least one impact body (mass 48f of Figs. 16A-16G) for mechanical impact excitation of the sonotrode (32f), wherein the at least one impact body (48f) has a longitudinal direction (direction through the center of 48f), a proximal end and a distal end and is connected at the proximal end or at the distal end of the at least one impact body to a clamped elastic element (spring 46f), so that the at least one impact body (48f) has a free end (end contacting surface of 42f); and a vibration excitation device (transducer) for vibration excitation of the sonotrode (32f) and of the at least one impact body (48f), and wherein the free end of the at least one impact body (48f) is directed towards a first excitation surface (surface of stop 42f) and is configured to be pressed against the first excitation surface (surface of stop 42f) by means of the clamped elastic element (spring 46f) upon vibration excitation ([0102]), wherein the excitation surface (surface of stop 42f) is connected directly or indirectly to the sonotrode (32f; Figs. 13, 16A-16G), wherein the at least one impact body (48f) is arranged with a longitudinal direction of the least one impact body in a direction deviating from the longitudinal center axis (as the longitudinal direction of 48f is at an angle relative to the longitudinal center axis of 32f in Figs. 16C and 16E) of the sonotrode (32f) and deviating from a transverse axis of the sonotrode (32f; Figs. 16C, 16E), so that a radial vibration (transverse) of the sonotrode (32f) is configured to be excited by an oblique strike of a free end of the at least one impact body (48f) with its free end onto the first excitation surface (Figs. 16C, 16E), wherein the first excitation surface is configured as a flexural resonator (as applicant defines a “flexural resonator” as a spring-mass system capable of harmonic vibration [0045] and the surface of 42f along with the spring 46f and mass 48f creates a spring-mass system capable of harmonic vibration; [0102]).
Regarding claim 20, Bond discloses a lithotripsy device (reference is made to the device of Figs. 12A-12B for similar parts though the embodiment of Figs. 13-16G is being applied to the rejection) for fragmenting body stones, the lithotripsy device comprising: a carrier unit (housing 18e); a sonotrode (waveguide tube 32f) that is connectable to the carrier unit (18e) on the distal side and has a longitudinal center axis (Fig. 12A); at least one impact body (mass 48f of Figs. 16A-16G) for mechanical impact excitation of the sonotrode (32f), wherein the at least one impact body (48f) has a longitudinal direction (direction through the center of 48f), a proximal end and a distal end and is connected at the proximal end or at the distal end of the at least one impact body to a clamped elastic element (spring 46f), so that the at least one impact body (48f) has a free end (end contacting surface of 42f); and a vibration excitation device (transducer) for vibration excitation of the sonotrode (32f) and of the at least one impact body (48f), and wherein the free end of the at least one impact body (48f) is directed towards a first excitation surface (surface of stop 42f) and is configured to be pressed against the first excitation surface (surface of stop 42f) by means of the clamped elastic element (spring 46f) upon vibration excitation ([0102]), wherein the excitation surface (surface of stop 42f) is connected directly or indirectly to the sonotrode (32f; Figs. 13, 16A-16G), wherein the at least one impact body (48f) is arranged with a longitudinal direction of the least one impact body in a direction deviating from the longitudinal center axis (as the longitudinal direction of 48f is at an angle relative to the longitudinal center axis of 32f in Figs. 16C and 16E) of the sonotrode (32f) and deviating from a transverse axis of the sonotrode (32f; Figs. 16C, 16E), so that a radial vibration (transverse) of the sonotrode (32f) is configured to be excited by an oblique strike of a free end of the at least one impact body (48f) with its free end onto the first excitation surface (Figs. 16C, 16E), wherein the first excitation surface (surface of 42f) is arranged on the sonotrode (32f; Fig. 13) or is connected in one piece to the sonotrode.
Allowable Subject Matter
Claims 1-3 and 5-12 are allowed for the reasons discussed on page 16 of the Non-Final Rejection mailed 4/16/2026 as dependent claim 4 has been incorporated into independent claim 1.
Claims 13-15 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
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.
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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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