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 .
Status of Claims
Claims 1-20 are currently pending in this application.
Claim Objections
Claim 14 is objected to because of the following informalities: “have” in line 2 should read “has”. Appropriate correction is required.
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 do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “cleaving apparatus” in claim 11 (specification paragraphs [0035]-[0037]).
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend 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 avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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 2, 7, 13, and 17 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.
The term “generally cylindrical” in claims 2, 13, and 17 is a relative term which renders the claim indefinite. The term “generally” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. It is unclear as to whether the optically transparent material is cylindrical or how cylindrical the material is required to be. For the purposes of examination, “generally” will be omitted from the claims.
The term “substantially weaken” in claim 7 is a relative term which renders the claim indefinite. The term “substantially” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. It is unclear as to how much the adhesive material is required to weaken. For the purposes of examination, “substantially” will be omitted from the claims.
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.
Claims 1-3, 6-7, 9-11, 13-14, and 16-18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Schmocker et al. (US 20180140303 A1), hereinafter Schmocker.
Regarding claim 1, Schmocker discloses a medical optical fiber (Fig. 3, paragraph [0055] optical light guiding element 111), comprising:
a non-renewable portion (Fig. 21, paragraph [0125], proximal part 507); and
a renewable portion coupled to a distal end of the non-renewable portion (Fig. 21, paragraph [0125], distal part 508), the renewable portion comprising a plurality of detachable segments (paragraph [0120], "the light guiding element consists of several parts, some of them, situated at the distal end, are detachable").
Regarding claim 2, Schmocker discloses the medical optical fiber of claim 1, as explained above. Schmocker further discloses that each of the plurality of detachable segments comprises an optically transparent material (paragraph [0102], "The light is guided by total internal reflection") having a generally cylindrical shape (paragraph [0068], "the light guiding element has a diameter"; paragraph [0102], "The first material is shaped in an elongated structure").
Regarding claim 3, Schmocker discloses the medical optical fiber of claim 1, as explained above. Schmocker further discloses that each of the plurality of detachable segments has a length between 0.2 millimeters (mm) and 6.0 mm (paragraph [0068], "the light guiding element has a diameter below 1 mm").
Regarding claim 6, Schmocker discloses the medical optical fiber of claim 1, as explained above. Schmocker further discloses that the plurality of detachable segments are coupled to each other via an adhesive material (paragraph [0120], "This physical connection can be achieved by butt-coupling the fibers using a glue or another element to connect them").
Regarding claim 7, Schmocker discloses the medical optical fiber of claim 6, as explained above. Schmocker further discloses that the adhesive material is configured to melt, dissolve, or substantially weaken when exposed to specific wavelengths of light, when exposed to a select combination of laser pulse frequency and/or power, upon reaching a specific temperature, or upon exposure to a quantity of transmitted laser energy (paragraph [0120], "This physical connection can be undone remotely by means of electromagnetic radiation"; paragraph [0121], "different light sources are used, either to activate the injected photoactive material or to detach the detachable parts of the light guiding element. It this aspect also different sub-parts of the detachable parts can react to different wavelengths. For instance a laser at 10600 nm is used to detach a first part of light guiding element and a second laser at 1523 nm is used to detach a second part of the light guiding element"; paragraph [0125], "This increase in temperature 513 can entirely or partly destroy the material layer 509 ... This change in material leads to the rupture 514 or a weakening of 509").
Regarding claim 9, Schmocker discloses the medical optical fiber of claim 1, as explained above. Schmocker further discloses that each of the plurality of detachable segments comprises a machined end surface, wherein the machined end surface of a first one of the plurality of detachable segments is configured to attract via intermolecular attraction the machined surface of a second one of the plurality of detachable segments when the end surfaces are positioned proximate to each other (paragraph [0125], "the absorption of a photon is the process of the photon being absorbed by the molecules, atoms or lattice or structure build by molecules of the material 509 and wherein this processes requires that the photon energy given by the Planck relationship or a multiple of this energy is equal to the energy separation of the participating pair of quantum energy states. On the macroscopic level the absorption of a photon can result in heat and thus in an increase in temperature 513 of the material 509. This increase in temperature 513 can entirely or partly destroy the material layer 509 and will lead to a separation 514 of 507 and 508."; the intermediate layer 509 and the parts 507 and 508 are held together by intermolecular forces that are disrupted by the incoming photons 511).
Regarding claim 10, Schmocker discloses an endoscope system (paragraph [0067]), comprising:
an endoscope configured for use with a renewable optical fiber, the endoscope having a working channel (paragraph [0064], "the applicator is a cannula or a catheter containing optical fibers"); and
a renewable optical fiber configured to be inserted through the working channel (paragraph [0064], "the applicator is a cannula or a catheter containing optical fibers"), the renewable optical fiber comprising:
a non-renewable portion (Fig. 21, paragraph [0125], proximal part 507); and
a renewable portion coupled to a distal end of the non-renewable portion (Fig. 21, paragraph [0125], distal part 508), the renewable portion comprising a plurality of detachable segments (paragraph [0120], "the light guiding element consists of several parts, some of them, situated at the distal end, are detachable").
Regarding claim 11, Schmocker discloses the endoscope system of claim 10, as explained above. Schmocker further discloses that the endoscope comprises a catheter (paragraph [0064], "the applicator is a cannula or a catheter containing optical fibers, connected to a light source"; paragraph [0067]) and that the working channel extends from a proximal end to a distal end of the catheter (paragraph [0060]). Schmocker further discloses that the distal end of the catheter comprises a cleaving apparatus configured to cleave the plurality of detachable segments (paragraph [0112], "This cut can be introduced into 111 externally by a mechanism or tool brought close to 504 ... To induce the previous mechanisms at 504 one option is to place one or several elements 505 at the tip of 111. This element can consist of...mechanical objects such as clamps").
Regarding claim 13, Schmocker discloses the endoscope system of claim 10, as explained above. Schmocker further discloses that each of the plurality of detachable segments comprises an optically transparent material (paragraph [0102], "The light is guided by total internal reflection") having a generally cylindrical shape (paragraph [0068], "the light guiding element has a diameter"; paragraph [0102], "The first material is shaped in an elongated structure").
Regarding claim 14, Schmocker discloses the endoscope system of claim 10, as explained above. Schmocker further discloses that each of the plurality of detachable segments has a length between 0.2 millimeters (mm) and 6.0 mm (paragraph [0068], "the light guiding element has a diameter below 1 mm").
Regarding claim 16, Schmocker discloses a method comprising:
providing a medical optical fiber having a plurality of detachable segments coupled to a distal end of the medical optical fiber (paragraph [0120], "the light guiding element consists of several parts, some of them, situated at the distal end, are detachable");
inserting the medical optical fiber through a working channel of an endoscope (paragraph [0064], "the applicator is a cannula or a catheter containing optical fibers"; paragraph [0067]);
irradiating a target with laser energy via the medical optical fiber (paragraph [0056], "The light guiding element 111 illuminates the liquid material 113"; paragraph [0125], "To activate the LPM 113 actinic light 112 is guided through the light guide 111 from its proximal to its distal end"); and
renewing the distal end of the medical optical fiber by detaching a most distal one of the plurality of detachable segments (paragraph [0125], "To split the light guide 111 into a proximal 507 and a distal part 508 as for instance in the case where the distal part 508 (506) is left inside a cavity, a layer or intermediate piece 509 is placed between 507 and 508. ... This increase in temperature 513 can entirely or partly destroy the material layer 509 and will lead to a separation 514 of 507 and 508").
Although Schmocker does not disclose that the method is "a lithotripsy method", the requirement of lithotripsy is part of the preamble. According to MPEP 2111.02, "If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction". Therefore, Schmocker discloses the invention of claim 16.
Regarding claim 17, Schmocker discloses the method of claim 16, as explained above. Schmocker further discloses that each of the plurality of detachable segments comprises an optically transparent material (paragraph [0102], "The light is guided by total internal reflection") having a generally cylindrical shape (paragraph [0068], "the light guiding element has a diameter"; paragraph [0102], "The first material is shaped in an elongated structure").
Regarding claim 18, Schmocker discloses the method of claim 16, as explained above. Schmocker further discloses that each of the plurality of detachable segments has a length between 0.2 millimeters (mm) and 6.0 mm (paragraph [0068], "the light guiding element has a diameter below 1 mm").
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Schmocker et al. (US 20180140303 A1), hereinafter Schmocker.
Regarding claim 8, Schmocker discloses the medical optical fiber of claim 6, as explained above. Schmocker further discloses that the adhesive material between a first one of the plurality of detachable segments and a second one of the plurality of detachable segments is configured to melt when exposed to a first quantity of laser energy (paragraph [0125], "The light 511 of this second light source might have a different intensity than 112 or a different wavelength"),
wherein the adhesive material between the second one of the plurality of detachable segments and a third one of the plurality of detachable segments is configured to melt when exposed to a second quantity of laser energy (paragraph [0121], "a laser at 10600 nm is used to detach a first part of light guiding element and a second laser at 1523 nm is used to detach a second part of the light guiding element"),
wherein the second quantity of laser energy is higher than the first quantity of laser energy (paragraph [0121], "a laser at 10600 nm is used to detach a first part of light guiding element and a second laser at 1523 nm is used to detach a second part of the light guiding element"; light of a lower wavelength has higher energy).
Schmocker does not explicitly disclose that the second one of the plurality of detachable segments is proximal to the first one of the plurality of detachable segments, and the third one of the plurality of detachable segments is proximal to the second one of the plurality of detachable segments.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to make the medical optical fiber such that the second one of the plurality of detachable segments is proximal to the first one of the plurality of detachable segments, and the third one of the plurality of detachable segments is proximal to the second one of the plurality of detachable segments, for the purpose of controlling which segment is detached, since it has been held that rearranging parts of an invention involves only routine skill in the art. In re Japikse, 86 USPQ 70.
Claims 4-5, 15, and 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over Schmocker et al. (US 20180140303 A1), hereinafter Schmocker, in view of Ohdaira (US 20090306686 A1).
Regarding claim 4, Schmocker discloses the medical optical fiber of claim 1, as explained above. Schmocker further discloses connecting the plurality of detachable segments to each other using a material configured to interact with an electromagnetic field to selectively decouple one of the plurality of detachable segments (paragraph [0120], "This physical connection can be achieved by butt-coupling the fibers using a glue or another element to connect them. This physical connection can be undone remotely by means of electromagnetic radiation"; paragraph [0125]).
Schmocker does not explicitly disclose that the material comprises a ferrous material.
However, Ohdaira teaches an endoscopic holding apparatus (Abstract) wherein each detachable segment (Fig. 16, paragraph [0149], first connection portion 5 and second connection portion 41) comprises a ferrous material (paragraphs [0145]-[0147]), the ferrous material configured to interact with an electromagnetic field to selectively decouple the detachable segment (paragraph [0119]).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Schmocker with the teachings of Ohdaira so that each of the plurality of detachable segments comprises a ferrous material, the ferrous material configured to interact with an electromagnetic field to selectively decouple one of the plurality of detachable segments, because doing so reduces the amount of time needed to complete the operation (Ohdaira, paragraph [0037]).
Furthermore, the selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945). See MPEP 2144.07.
Regarding claim 5, the medical optical fiber of claim 4 is obvious over Schmocker and Ohdaira, as explained above. Schmocker further discloses that the medical optical fiber is configured to be inserted through a working channel of an endoscope comprising a catheter (Fig. 19(b), paragraph [0112], cannula/catheter 110; paragraph [0064], "The light applied to and collected from the photosensitive material travels through an applicator ... the applicator is a cannula or a catheter containing optical fibers"; paragraph [0067]).
According to MPEP 2114:
"[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim.
Functional claim language that is not limited to a specific structure covers all devices that are capable of performing the recited function. Therefore, if the prior art discloses a device that can inherently perform the claimed function, a rejection under 35 U.S.C. 102 and/or 35 U.S.C. 103 may be appropriate.
Although Schmocker does not explicitly disclose that the catheter has one or more electromagnets disposed at a distal end, the one or more electromagnets configured to generate the electromagnetic field, the claim does not require the endoscope and its components, only that the medical optical fiber can be inserted through a working channel of an endoscope.
Additionally, Ohdaira further teaches a catheter having one or more electromagnets disposed at a distal end, the one or more electromagnets configured to generate an electromagnetic field (paragraph [0150]).
Regarding claim 15, Schmocker discloses the endoscope system of claim 10, as explained above. Schmocker further discloses connecting the plurality of detachable segments to each other using a material configured to interact with an electromagnetic field to selectively decouple one of the plurality of detachable segments (paragraph [0120], "This physical connection can be undone remotely by means of electromagnetic radiation"; paragraph [0125]).
Schmocker does not explicitly disclose that the material comprises a ferrous material.
However, Ohdaira teaches an endoscopic holding apparatus (Abstract) wherein each detachable segment (Fig. 16, paragraph [0149], first connection portion 5 and second connection portion 41) comprises a ferrous material (paragraphs [0145]-[0147]), the ferrous material configured to interact with an electromagnetic field to selectively decouple the detachable segment (paragraph [0119]).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Schmocker with the teachings of Ohdaira so that each of the plurality of detachable segments comprises a ferrous material, the ferrous material configured to interact with an electromagnetic field to selectively decouple one of the plurality of detachable segments, because doing so reduces the amount of time needed to complete the operation (Ohdaira, paragraph [0037]).
Furthermore, the selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945). See MPEP 2144.07.
Regarding claim 19, Schmocker discloses the method of claim 16, as explained above. Schmocker further discloses connecting the plurality of detachable segments to each other using a material configured to interact with an electromagnetic field to selectively decouple one of the plurality of detachable segments (paragraph [0120], "This physical connection can be achieved by butt-coupling the fibers using a glue or another element to connect them. This physical connection can be undone remotely by means of electromagnetic radiation"; paragraph [0125]).
Schmocker does not explicitly disclose that the material comprises a ferrous material.
However, Ohdaira teaches an endoscopic holding apparatus (Abstract) wherein each detachable segment (Fig. 16, paragraph [0149], first connection portion 5 and second connection portion 41) comprises a ferrous material (paragraphs [0145]-[0147]), the ferrous material configured to interact with an electromagnetic field to selectively decouple the detachable segment (paragraph [0119]).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Schmocker with the teachings of Ohdaira so that each of the plurality of detachable segments comprises a ferrous material, the ferrous material configured to interact with an electromagnetic field to selectively decouple one of the plurality of detachable segments, because doing so reduces the amount of time needed to complete the operation (Ohdaira, paragraph [0037]).
Furthermore, the selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945). See MPEP 2144.07.
Regarding claim 20, the lithotripsy method of claim 19 is obvious over Schmocker and Ohdaira, as explained above. Schmocker further discloses that the medical optical fiber is configured to be inserted through a working channel of an endoscope comprising a catheter (Fig. 19(b), paragraph [0112], cannula/catheter 110; paragraph [0064], "The light applied to and collected from the photosensitive material travels through an applicator ... the applicator is a cannula or a catheter containing optical fibers"; paragraph [0067]).
According to MPEP 2114:
"[A]pparatus claims cover what a device is, not what a device does." Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original). A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim.
Functional claim language that is not limited to a specific structure covers all devices that are capable of performing the recited function. Therefore, if the prior art discloses a device that can inherently perform the claimed function, a rejection under 35 U.S.C. 102 and/or 35 U.S.C. 103 may be appropriate.
Although Schmocker does not explicitly disclose that the catheter has one or more electromagnets disposed at a distal end, the one or more electromagnets configured to generate the electromagnetic field, the claim does not require the endoscope and its components, only that the medical optical fiber can be inserted through a working channel of an endoscope.
Additionally, Ohdaira further teaches a catheter having one or more electromagnets disposed at a distal end, the one or more electromagnets configured to generate an electromagnetic field (paragraph [0150]).
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Schmocker et al. (US 20180140303 A1), hereinafter Schmocker, in view of Marin et al. (US 5827310 A), hereinafter Marin.
Regarding claim 12, Schmocker discloses the endoscope system of claim 11, as explained above. Schmocker does not explicitly disclose that the endoscope comprises a handle, nor that the handle comprises an actuator arranged to actuate the cleaving apparatus. However, Marin teaches a cutting device (Fig. 18, column 6, lines 47-54) comprising a handle (rotatable knob 122), the handle comprising an actuator arranged to actuate the cleaving apparatus ("Movement of the blades 120 is controlled by a rotatable knob 122 at the proximal end of the catheter through an elongated rod 124 and a suitable transmission").
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Schmocker with the teachings of Marin so that the endoscope comprises a handle, and that the handle comprises an actuator arranged to actuate the cleaving apparatus, because doing so allows the cutting to take place entirely within the catheter (Marin, column 1, lines 54-56).
Conclusion
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/CHRISTINE SISON/Examiner, Art Unit 3796
/Jennifer Pitrak McDonald/Supervisory Patent Examiner, Art Unit 3796