DETAILED ACTION
The Non-Final Office Action, filed 23 January 2026, has been vacated to correct the prior art rejections.
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 INTERPRETATION
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.
Claim Objections
Claim 1 is objected to because of the following informalities: please change “retracts or deploys” to “is configured to retract or deploy” . Appropriate correction is required.
Claim 1 is objected to because of the following informalities: please change “deploys from the respective pathway or retracts back” to “is configured to deploy from the respective pathway or retract back” . Appropriate correction is required.
Claim 3 is objected to because of the following informalities: please change “that powers” to “is configured to power” . Appropriate correction is required.
Claim 6 is objected to because of the following informalities: please change “move within” to “configured to move within” . Appropriate correction is required.
Claim 21 is objected to because of the following informalities: please change “is deployed” to “is configured to be deployed” . Appropriate correction is required.
Claim 22 is objected to because of the following informalities: please change “at least one joints” to “at least one joint” . Appropriate correction is required.
Claim 23 is objected to because of the following informalities: please change “changes” to “is configured to change” . Appropriate correction is required.
Claim 25 is objected to because of the following informalities: please change “changes” to “is configured to change” . Appropriate correction is required.
Claim 27 is objected to because of the following informalities: please change “changes” to “is configured to change” . Appropriate correction is required.
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.
Claim(s) 2 and 4 is/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 2 recites the limitation "the contents" in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim 4 recites the limitation "the contents" in line 3. There is insufficient antecedent basis for this limitation in the claim.
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) 1, 2, 6, 9, 20 and 21 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Plumb et al. (US 5,961,441, “Plumb”).
Regarding claim 1, Plumb discloses a surgical apparatus including a central body (14; Fig. 1) that houses a plurality of different surgical instruments (38, 58, 72, 80; Fig. 3, 5, 7-10) where each surgical instrument retracts or deploys from a respective pathway within the central body (Fig. 5, 6; C4;L9-20). At least one button (56) among a plurality of buttons is located on a thumb side of the central body. A surgical instrument is capable of being deployed from the respective pathway (Fig. 3) or retracted back into the respective pathway within the central body in response to a respective push or retraction of the at least one button (Fig. 5, 6; C4; L9-27).
Regarding claim 2, Plumb discloses that the apparatus includes a width based on contents contained within the apparatus (Fig. 5).
Regarding claim 6, Plumb discloses that the central body includes a tubular shaped housing (Fig. 2)within which the plurality of different surgical instruments are configured to be maintained and moved within respective pathways (Fig. 3) associated with each surgical instrument.
Regarding claim 9, Plumb discloses the plurality of different surgical instruments includes at least one curette (72).
Regarding claim 20, Plumb discloses that at least two surgical instruments are a scalpel (knife ;38) and a curette (72).
Regarding claim 21, Plumb discloses that the central body includes a working end (30) through which a surgical instrument is configured to be deployed (Fig. 2).
Claim Rejections - 35 USC § 103
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) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Plumb in view of Barnes et al. (US 2010/0312102A1, “Barnes”).
Regarding claim 3, Plumb discloses a button connected to an actuator (shaft) does not disclose a battery powered motor or wifi capability that is configured to power an actuator that actuates a deployment or retraction of a surgical instrument in response to pressing the at least one button.
In the same field of endeavor, actuators, Barnes teaches a motor/actuator (114) that is activated by a button (115), wherein the button is configured to cause reciprocating axial movement or may be wirelessly (wifi) coupled to a driver device [0027]. The actuator is connected to a battery power source (112). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have provided the shaft of Plumb with a battery-powered motor, as taught by Barnes, to provide means for rotation and reciprocating axial motion [0027].
Claim(s) 4, 5 and 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Plumb in view of Bennett et al. (US 2015/0157357A1, “Bennett”).
Regarding claim 4, 5 and 10, Plumb does not disclose an indentation and rubber portion on the central body that are usable by a thumb and index finger to manipulate the surgical apparatus.
In the same field of endeavor, retractable instruments, Bennett teaches a curette device including a gripping portion on a central body (105). The gripping portion includes a rubber strip (725) having a surface pattern of indentations in the form of dimples or ribbing (Fig. 7). The gripping portion is usable by a thumb and index finger to assist in manipulating the apparatus. Bennett further teaches a curette having a loop size ranging from 1mm to 8mm which is within the claimed range of 2-4mm. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have provided the central body of Plumb with an indentation and a rubber portion, as taught by Bennett, to provide ergonomic gripping means during use [0097]. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have substituted the size of the loop of the curette of Plumb with the claimed loop size, as taught by Bennett, as this modification involves the simple substitution of one curette size for another for the predictable result of providing means for scraping or debriding.
Claim(s) 7 and 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Plumb in view of Wilsey et al. (US 2020/0330702A1, “Wilsey”).
Regarding claims 7 and 8, Plumb does not disclose that the plurality of different surgical instruments includes at least one penfield dissector.
In the same field of endeavor, surgical instruments, Wilsey teaches a #4 penfield dissector used to separate tissue[0052]. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have substituted one of the end effectors of the different surgical instruments with a #4 penfield dissector, as taught by Wilsey, as this modification involves the simple substitution of one end effector for another for the predictable result of providing means for treatment.
Claim(s) 11 and 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Plumb in view of Kaufman (US 2010/0069922A1).
Regarding claims 11 and 12, Plumb does not disclose that the plurality of different surgical instruments includes at least one scalpel.
In the same field of endeavor, surgical instruments, Kaufman teaches a ten or fifteen scalpel blade [0021]. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have substituted one of the end effectors of the different surgical instruments with a ten or fifteen scalpel blade, as taught by Kaufman, as this modification involves the simple substitution of one end effector for another for the predictable result of providing means for treatment.
Claim(s) 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Plumb in view of Berman et al. (US 2024/0423621A1, “Berman”).
Regarding claim 13, Plumb does not disclose that the plurality of different surgical instruments includes at least one micro or macro nerve hook.
In the same field of endeavor, surgical instruments, Berman teaches a micro or macro nerve hook [0006, 0073, 0102]. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have substituted one of the end effectors of the different surgical instruments with a micro or macro nerve hook, as taught by Berman, as this modification involves the simple substitution of one end effector for another for the predictable result of providing means for treatment.
Claim(s) 14 and 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Plumb.
Regarding claims 14 and 16, Plumb discloses a suction tube (34) but the suction tube is not one of the plurality of different surgical instruments. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have substituted one of the end effectors of the different surgical instruments of Plumb with a suction tube, as this modification involves the simple substitution of one end effector for another for the predictable result of providing means to axially manipulate the suction. With this modification, the at least one suction is capable of being attached to a standard hospital suction at a superior most portion of the apparatus.
Claim(s) 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Plumb, as discussed above in claim 14, and in view of Bendory et al. (US 2022/0218187A1, “Bendory”).
Regarding claim 15, Plumb does not disclose a plurality of suctions of different sizes with sizes of at least one of 6, 8 and 10 French. In the same field of endeavor, suction tubes, Bendory teaches that the suction tube may have an outer diameter ranging from about 0.6mm to about 2.5mm or more which encompasses the range of 6 French, 8 French and 10 French. It may be advantageous to have a large suction shaft diameter for some ear surgery procedures to provide more suction force and/or prevent clogging of the suction tube and in other cases it would be advantageous to have a small diameter [0126]. Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to provide a plurality of suctions of different sizes of at least one of 6, 8 and 10 French, as taught by Plumb and Bendory, since it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art. St. Regis Paper Co. v. Bemis Co., 193 USPQ 8.
Claim(s) 17-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Plumb in view of Smith (US 2017/0196573A1).
Regarding claims 17-19, Plumb does not disclose that the plurality of different surgical instruments includes at least one bony drill.
In the same field of endeavor, retractable instruments, Smith teaches a retractable bony drill (108; Fig. 1). The working length of the bony drills may be approximately 0.5mm to 10mm [0031] which is within the claimed limitations of 2mm, 3mm and 4mm. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have substituted one of the end effectors of the different surgical instruments with the bony drill, as this modification involves the simple substitution of one end effector for another for the predictable result of providing means for treatment. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to provide a plurality of bony drills, since it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art. St. Regis Paper Co. v. Bemis Co., 193 USPQ 8. With this modification, the at least one suction is capable of being attached to a standard hospital suction at a superior most portion of the apparatus.
Claim(s) 29 is/are rejected under 35 U.S.C. 103 as being unpatentable over Plumb in view of Drapeau et al. (US 2012/0231416A1, “Drapeau”).
Regarding claim 29, Plumb does not disclose that the plurality of different surgical instruments and the central body are sterilized and packaged prior to a surgical use of the apparatus.
In the same field of endeavor, surgical instruments, Drapeau teaches an apparatus including a hand piece (747) and a plurality of different surgical instruments (505) which are sterilized and individually packaged prior to use [0063]. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have sterilized and individually packaged the central body and plurality of different instruments of Plumb prior to use, as taught by Drapeau, to provide means to eliminate microorganisms and prevent contamination of tissues.
Allowable Subject Matter
Claim(s) 22-28 is/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.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. O’Neil et al. (US 2018/0000526A1) and Arts et al. (US 2010/0057078A1) discloses surgical instruments including a plurality of instruments capable of being deployed and retracted.
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/JOCELIN C TANNER/Primary Examiner, Art Unit 3771