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 § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1, 3-9, 12-15, 17-18, 21, 34, 35-43 rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Regarding claim 1, there is no support in the original disclosure for a stop attached to the rear upright instrument support and thus it constitutes new matter. Regarding claim 35, there is no support in the original disclosure for a stop attached to the first side of at least one upright instrument support and thus it constitutes new matter. In particular, it is noted that the original disclosure describes the forward support comprising a stop but is silent regarding the rear support comprising a stop. Regarding claims 12-15, 17-18, the claims are dependent upon cancelled claim and thus it is unclear the scope of the claims.
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 1, 3-9, 21 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.
Regarding claims 1, 21, the scope of the claims is unclear as to whether applicant is claiming the combination of the instruments and support or the subcombination of the support. Applicant has stated that the claims are intended to recite the subcombination; however, the claims recite structure of the management system in relation to instruments. For example, in claim 1, the claims recite in part “the first platform having two ends and being positioned and spaced from the handle part” and “bar is adapted to pivot in a path adjacent the pair of first upstanding members between a first position in contact with the topmost instrument in a first stack of instruments…” In claim 21, the claim recites in part “the first platform being positioned and spaced from the handle part.” Such recitations render the scope of the claims unclear because they require limitations of an instrument in the structure of the instrument support.
Claim Objections
Claims 12-15, 17-18 objected to because of the following informalities: Claims dependent upon cancelled claim. Appropriate correction is required.
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.
Claim(s) 44 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 2007/0205123 to Bettenhausen et al (Bettenhausen) in view of US 2009/0266728 to Turner et al. (Turner) and US 2019/0255207 to Oko et al. (Oko).
Regarding claim 44, Bettenhausen discloses a management system (Fig 5) adapted to hold a stack of instruments (intended use), the management system comprising a base (35), at least one, rear upright instrument support (70, Fig 6) extending upward from the base, each rear upright instrument support having at least one surface (€0054) sized and positioned to receive a first part of instruments in a stack since it has the structure as recited, at least one forward upright instrument support (60) attached to the base and spaced from at least one rear upright instrument support (70), the forward upright instrument support (60) having a first stationary platform (61) having two ends, the first platform providing a surface (62) on which a second part of an instrument can contact (€0053). Bettenhausen does not teach the management system further comprising a hinge extending from one at least one side of the forward upright instrument support and a bar pivotally mounted on the hinge. Turner discloses a management system (Fig 1) and in particular discloses a base (1), a rear upright instrument support (2) mounted on the base, a forward upright instrument support (300) mounted to the base, forward upright instrument support comprising at least one upright instrument support having a first side, first platform extending from first side (Fig 6), first platform having two ends (A, B, Fig 6 below) positioned to support a forward part of an instrument (40), the forward upright instrument support comprises a pair of first upstanding members (301, 308), a hinge (321) extending from the upright instrument support, a bar (320) pivotally mounted on the hinge and capable of pivoting in a path adjacent at least one upstanding members (301, 308) between a first position that can contact a topmost instrument in a stack of instruments to a second position in contact with a topmost instrument in a second stack of instruments after at least one instrument is removed since it has the structure as recited. One of ordinary skill in the art would have found it obvious to substitute the forward instrument support of Bettenhausen with a functionally equivalent forward support having a hinge and bar as suggested by Turner in order to facilitate retainment of the instrument since it has been held that simple substitution of one known element for another to obtain predictable results would have been obvious. In re Fout, 675 F.2d 297, 213 USPQ 532. The modified Bettenhausen does not teach a gauge adjacent the forward support and near the distal end of the bar. However, Oko discloses a management system (Fig 1) and in particular discloses that it was known in the art to incorporate indicia such as numbers to instrument support brackets (200) (¶0074). One of ordinary skill in the art would have found it obvious to incorporate numerical indicia to the modified Bettenhausen support brackets as suggested by Oko in order to quickly notify a user specific information about the medical device/instrument (Oko, ¶0074). The modification would have resulted in a gauge that provides information to the user located near distal end of the bar. Note that where the only different between a prior art product and claimed product is printed matter that is not functionally related to the product, the content of the printed matter will not distinguish the claimed product from the prior art. In re Ngai, 367 F.3d 1336, 1339, 70 USPQ2d 1862, 1864 (Fed. Cir. 2004).
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Response to Arguments
Applicant's arguments filed 2/27/2026 have been fully considered but they are not persuasive. Applicant argues that prior art does not teach a bar that is pivotable below the top of the upper region of the support. This is not persuasive because Benedetti discloses bar (42) capable of pivoting below the top of the upper region. Applicant further argues that prior art does not teach a stop. However, there is no support in the original disclosure for a stop attached to the rear upright instrument support and thus it constitutes new matter. The rejection under 35 USC 112, second paragraph is maintained because claim 1 still recites the first platform being positioned and spaced from the handle part even though the handle part of the instrument is not claimed.
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 ROBERT POON whose telephone number is (571)270-7425. The examiner can normally be reached Monday thru Friday, 8:30 am to 6:00 pm.
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/ROBERT POON/Examiner, Art Unit 3735