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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 7/22/2026 has been entered.
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) 44-45 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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Regarding claim 45, the modified Bettenhausen further teaches bar (320, Turner) adapted to rest on topmost instrument when the platform has at least one instrument since it has the structure as recited.
Allowable Subject Matter
Claims 1, 3-9, 12-15, 17-18, 21, 34-43 allowed.
Response to Arguments
Applicant's arguments filed 7/22/2026 have been fully considered but they are not persuasive. Applicant argues the combination of Bettenhausen, Turner and Oko for the rejection of claim 44 because the combination does not provide support of a stack of instruments. However, since the claims do not explicitly require a stack of instruments, so long as prior art teaches the structure of the claimed management system, then it meets the limitation of supporting a stack of instruments.
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
In response to applicant's argument that applicant loads a stack of instruments when the bar is vertical and instruments are removed one at a time by pivoting the bar, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
Applicant argues that the bar of Bettenhausen is fixed and does not pivot. However, the bar as taught by Turner does pivot and thus the modification would have resulted in a pivotable bar. Applicant further argues that Turner does not suggest holding a stack of instruments. However, since the claims do not explicitly recite a stack of instruments, it is believed that so long as prior art has the structure as recited, then it would be capable of holding a stack of instruments. Applicant further argues that the identifier of Oko does not indicate how many instruments remain in the stack. However, content of a printed matter does not distinguish a claimed product from the prior art and in the instant case, the numbers of Oko indicia can be used in the manner as recited.
In response to applicant's argument that applicant’s bar rests on the top instrument and does not secure instruments, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Applicant further argues that there is a functional relationship between the indicia and the bar. This is not persuasive because the bar will pivot regardless of what the indicia is.
Conclusion
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Anthony Stashick can be reached at (571)272-4561. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ROBERT POON/Examiner, Art Unit 3735
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