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 for Election/Restrictions
Applicant’s election without traverse of Group I (claims 1-35) in the reply filed on 3/27/2026 is acknowledged. Claims 1-35 read on the elected invention.
Election was made without traverse in the reply filed on 3/27/2026.
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: “a deployment mechanism… the deployment mechanism is adapted to selectively reconfigure the plurality of tool carriers from a linear arrangement into a parallel cluster” in claim 1.
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 10 and 16 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 pre-AIA the applicant regards as the invention.
Regarding claim 10, the claim recites the limitations “the shuttle segment” in line 3. There is insufficient antecedent basis for this limitation in the claim. Appropriate correction is required.
Regarding claim 16, the claim recites the limitations “the deployment mechanism” in line 3. It is not clear to the examiner if the deployment mechanism in claim 16 is the same as the deployment mechanism in claim 1 or is it different therefore making the scope of the claim unclear. Appropriate correction 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 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 1-4, 11 and 15-17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Marczyk (US Pub No. 2013/0178869).
Regarding claim 1, Marczyk discloses (Figures 1-4B) a tool tip cassette (10) comprising: a deployment mechanism (110); a plurality of tool carriers (120) coupled to the deployment mechanism (Figure 1A) (via hoop 162 as disclosed in Paragraph 0051), wherein each tool carrier has a tool access end (open distal end as shown in Figure 1A) and a base end (proximal end that is attached to 100 as shown in Figure 1A); and wherein the deployment mechanism is adapted to selectively reconfigure the plurality of tool carriers from a linear arrangement (Figure 3) [Each of the segments 130a, 130b and 130c of the tool carriers as shown in Figure 3 are arranged linearly as shown in the annotated figure below] into a parallel cluster (clearly shown in Figure 1A).
Regarding an alternative rejection for claim 1, Marczyk discloses (Figures 1-4B) a tool tip cassette (10) comprising: a deployment mechanism (40) (Figures 4A and 4B); a plurality of tool carriers (120) coupled to the deployment mechanism (Figure 1A) (indirectly coupled via hoop 162 attached to 114 as disclosed in Paragraph 0051), wherein each tool carrier has a tool access end (open distal end as shown in Figure 1A) and a base end (proximal end that is attached to 100 as shown in Figure 1A); and wherein the deployment mechanism is adapted to selectively reconfigure (by selectively controlling the amount of inflation and deflation as disclosed in Paragraph 0040 and 0063-0066) the plurality of tool carriers from a linear arrangement (Figure 3) [Each of the segments 130a, 130b and 130c of the tool carriers as shown in Figure 3 are arranged linearly as shown in the annotated figure below] into a parallel cluster (clearly shown in Figure 1A).
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Regarding claim 2 under either the first or second rejection for claim 1, further comprising surgical working tips (30) removably placed in at least some of the plurality of tool carriers (Figure 3) (Paragraph 0046).
Regarding claim 3 under either the first or second rejection for claim 1, wherein the tool carriers comprise tubular bodies, typically cylindrical bodies (clearly shown in Figure 1).
Regarding claim 4 under the second rejection for claim 1, further comprising a hub (110) configured to occupy a center region of the parallel cluster of tool carriers when said tool carriers are unconstrained (via hoop as shown in Figure 1A and disclosed in Paragraph 0051).
Regarding claim 11 under either the first or second rejection for claim 1, further comprising an over tube (100) having a passage (108) for straightening and delivering the plurality of tool carriers to a surgical site (Figure 1).
Regarding claim 15 under the second rejection for claim 1, wherein individual tool carriers or groups of tools carriers are configured to be displaced away from the hub to facilitate access to a tool carried by the tool carrier (clearly shown in Figure 3).
Regarding claim 16 as best understood under the second rejection for claim 1, wherein the individual tool carriers or groups of tools carriers are configured to be displaced away from the hub by engagement with a deployment mechanism (114), such as a pusher (balloon 114 pushes tool carriers as shown in Figure 3 which is considered a pusher).
Regarding claim 17 as best understood under the second rejection for claim 1, further comprising a tether (162) attached to the hub (Figure 1A) and configured to temporarily support the parallel cluster of tool carriers prior to capture by a tool tip cassette deployment and support tool (not positively recited in the claim and is only functionally recited) and/or remove the tool tip cassette from a work site [Fully configured in doing this since Marczyk discloses all of the structural elements in the same arrangement as claimed].
Claims 1, 12 and 13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Okoniewski (US Pub No. 2012/0157780).
Regarding claim 1, Okoniewski discloses (Figures 9-10) a tool tip cassette (400) comprising: a deployment mechanism (442); a plurality of tool carriers (414a, 414b, 416a, 416b) coupled to the deployment mechanism (clearly shown in Figures 9-10), wherein each tool carrier has a tool access end (open distal end similar to Figure 6) and a base end (open proximal end similar to Figure 6); and wherein the deployment mechanism is adapted to selectively reconfigure the plurality of tool carriers from a linear arrangement (Figure 9) [Each of the tool carriers as shown in Figure 9 are arranged linearly around the deployment mechanism 442] into a parallel cluster (Figure 10) (Paragraph 0036).
Regarding an alternative rejection for claim 1, Okoniewski discloses (Figures 9-10) a tool tip cassette (400) comprising: a deployment mechanism (442); a plurality of tool carriers (414a, 414b, 416a, 416b) coupled to the deployment mechanism (clearly shown in Figures 9-10), wherein each tool carrier has a tool access end (open distal end similar to Figure 6) and a base end (open proximal end similar to Figure 6); and wherein the deployment mechanism is adapted to selectively reconfigure the plurality of tool carriers from a linear arrangement (Figure 10) [Each of the tool carriers as shown in Figure 10 are arranged linearly around the deployment mechanism 442] into a parallel cluster (Figure 9) (Paragraph 0036).
Regarding claim 12 under the first rejection for claim 1, wherein the deployment mechanism comprises an inflatable structure (442) (Paragraph 0036), wherein the plurality of tool carriers can align axially when the inflatable structure is deflated (Figure 9) and will arrange into the parallel cluster when the inflatable structure is inflated (Figure 10).
Regarding claim 13 under the first rejection for claim 1, wherein the inflatable structure (442) comprises a ring (clearly shown in Figures 9-10).
Allowable Subject Matter
Claims 18-35 are allowed.
Claims 5-10 and 14 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.
The following is an examiner’s statement of reasons for indicating allowable subject matter:
The prior art of record fails to disclose or render obvious the combination of features as claimed. In particular, the prior art or record (see rejection above) fails to disclose a manipulator segment attached to the hub, wherein at least one of the tool carriers and the hub each comprise at least one magnetic element, wherein the at least one magnetic element on the hub is configured to attract the magnetic element on the at least one tool carriers to hold the plurality of tool carriers in the in the parallel cluster configuration while allowing limited displacement to facilitate removal and return of tool tips from the tool carriers (claims 5 and 18), wherein the deployment mechanism comprises spring elements which attach the base ends of individual tool carriers to the tool access ends of adjacent tool carriers, wherein the spring elements on adjacent tool carriers are circumferentially offset so that the spring elements cause the tool carriers to fold into the parallel cluster when unconstrained, wherein the springs members comprise two legs having a U-shape when unconstrained, wherein a first leg is attached to a base end of one tool carrier and a second leg is attached to a base end of an adjacent tool carrier (claim 9), wherein the hub is attached to the base end of the first tool carrier by a U-shaped spring configured so that the plurality of tool carriers fold into the parallel cluster about a periphery of the shuttle segment when released from constrained (claim 10) and wherein the inflatable structure comprises an open ring with spokes and wherein the tool tip holders are attached to radially inward ends of the spokes (claim 14).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MAJID JAMIALAHMADI whose telephone number is (571) 270-0172. The examiner can normally be reached on Monday-Friday 7am-5pm EST.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Darwin Erezo can be reached on (571) 272-4695. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MAJID JAMIALAHMADI/Primary Examiner, Art Unit 3771
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