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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 01/15/2026, 10/02/2025, 06/24/2025, 03/04/2025, 12/16/2024, are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
The information disclosure statement (IDS) submitted on 09/26/2024 is not in compliance with the provisions of 37 CFR 1.97 because the document number for U.S. patents has not been filled correctly. Accordingly, the information disclosure statement is not being considered by the examiner.
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:
first and second grabbing mechanisms; a radially expandable blocking element, recited in claim 1.
a radial expander, recited in claim 14.
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.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims.
Claim 1 recites, “the second grabbing mechanism being attached to an outer element configured to at least partially surround the device, the first and second grabbing mechanisms being axially movable with respect to each other along the gastrointestinal tract; and a radially expandable blocking element disposed proximal to the first grabbing mechanism and movable with the first grabbing mechanism with respect to the second grabbing mechanism, the blocking element being adapted to move tissue of the intestinal tract with respect to the second grabbing mechanism when the blocking element is moved toward the second grabbing mechanism,” in lines 6-13.
FIG. 35A shows vacuum ports including coils for flexibility. FIG. 34C shows distal vacuum port including extending arms. FIG. 21B shows coil 2072 that extends partially around the endoscope. However, the arrangement and/or structure of the second grabbing mechanism (vacuum port) being attached to an outer element configured to at least partially surround the device, and radially expandable blocking element and as recited in claim 1 is not shown in figures.
Therefore, the arrangement and/or structure of the second grabbing mechanism (vacuum port) being attached to an outer element configured to at least partially surround the device, and radially expandable blocking element and as recited in claim 1 must be shown in figures. No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim 14 encompasses similar defects.
Appropriate correction is required.
Claim Objections
Claim 14 is objected to because of the following informalities:
Claim 14 recites a “radially expander.” Instead, this should be recited as a “radial expander”
Appropriate correction is required.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 4, 5, 6, 14, 17, are 18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3, 4, 5-7 of U.S. Patent No. 1,121,9351. Although the claims at issue are not identical, they are not patentably distinct from each other. See the claim comparison below –
Instant application 18/780,429
US Patent 11,219,351
1.An apparatus for advancing a device through a gastrointestinal tract, the apparatus comprising:
1. An apparatus for advancing through a gastrointestinal tract, the apparatus comprising:
first and second grabbing mechanisms adapted to grab and release tissue of the gastrointestinal tract,
the first grabbing mechanism being releasably attachable to the device,
the second grabbing mechanism being attached to an outer element configured to at least partially surround the device,
the first and second grabbing mechanisms being axially movable with respect to each other along the gastrointestinal tract; and
first and second grabbing mechanisms adapted to grab and release tissue of the gastrointestinal tract,
the first and second grabbing mechanisms being axially movable with respect to each other along the gastrointestinal tract; and
a radially expandable blocking element disposed proximal to the first grabbing mechanism and movable with the first grabbing mechanism with respect to the
second grabbing mechanism,
the blocking element
being adapted to move tissue of the intestinal tract with respect to the second grabbing mechanism when the blocking element is moved toward the second grabbing mechanism.
a radially expandable blocking element disposed proximal to the first grabbing mechanism and movable with the first grabbing mechanism,
wherein the blocking element
is configured to slide over at least a portion of the second grabbing mechanism, the blocking element being adapted to enable tissue of the intestinal tract to move axially with respect to second grabbing mechanism.
3.The apparatus of claim 1, wherein the first grabbing mechanism is attachable to an inner element and the second grabbing mechanism is attached to an outer element configured to at least partially surround the inner element.
4. The apparatus of claim 3, further comprising a connecting mechanism configured to releasably attach the first grabbing mechanism to the inner element.
4. (New) The apparatus of claim 1, wherein the device comprises an endoscope.
5. The apparatus of claim 3, wherein the inner element comprises an endoscope.
5. (New) The apparatus of claim 1, wherein the outer element comprises an overtube.
6. The apparatus of claim 3, wherein the outer element comprises an overtube.
6. (New) The apparatus of claim 5, wherein the overtube supports actuator lines extending to the first and second grabbing mechanisms.
7. The apparatus of claim 6, wherein the overtube supports actuator lines extending to the first and second grabbing mechanisms.
14. (New) An apparatus for advancing a device through a gastrointestinal tract, the apparatus comprising:
1. An apparatus for advancing through a gastrointestinal tract, the apparatus comprising:
a first set of vacuum ports and a second set of vacuum ports adapted to grab and release tissue of the gastrointestinal tract, the first set of vacuum ports being releasably attachable to the device,
the second set of vacuum ports being attached to an overtube configured to at least partially surround the device,
the first set of vacuum ports and the second set of vacuum ports being axially movable with respect to each other along the gastrointestinal tract; and
first and second grabbing mechanisms adapted to grab and release tissue of the gastrointestinal tract, the first and second grabbing mechanisms being axially movable with respect to each other along the gastrointestinal tract; and
a radially expander disposed proximal to the first set of vacuum ports and movable with the first set of vacuum ports with respect to the second set of vacuum ports, the radial expander being adapted to move tissue of the intestinal tract with respect to the second set of vacuum ports when the radial expander is moved toward the second set of vacuum ports.
a radially expandable blocking element disposed proximal to the first grabbing mechanism and movable with the first grabbing mechanism,
wherein the blocking element
is configured to slide over at least a portion of the second grabbing mechanism, the blocking element being adapted to enable tissue of the intestinal tract to move axially with respect to second grabbing mechanism.
3.The apparatus of claim 1, wherein the first grabbing mechanism is attachable to an inner element and the second grabbing mechanism is attached to an outer element configured to at least partially surround the inner element.
4. The apparatus of claim 3, further comprising a connecting mechanism configured to releasably attach the first grabbing mechanism to the inner element.
6. The apparatus of claim 3, wherein the outer element comprises an overtube.
17. (New) The apparatus of claim 14, wherein the device comprises an endoscope.
5. The apparatus of claim 3, wherein the inner element comprises an endoscope.
18. (New) The apparatus of claim 14, wherein the overtube supports actuator lines extending to the first and second grabbing mechanisms.
7. The apparatus of claim 6, wherein the overtube supports actuator lines extending to the first and second grabbing mechanisms.
Allowable Subject Matter
Claims 1, 14, would be allowable if theses claims overcome the double patenting rejection; and objections set forth above.
Claim 1
The following is an examiner’s statement of reasons for allowance:
The prior art of record fails to explicitly teach or fairly suggest, alone or in combination, an apparatus for advancing a device through a gastrointestinal tract, the apparatus comprising:
a radially expandable blocking element disposed proximal to the first grabbing mechanism and movable with the first grabbing mechanism with respect to the second grabbing mechanism, the blocking element being adapted to move tissue of the intestinal tract with respect to the second grabbing mechanism when the blocking element is moved toward the second grabbing mechanism, along with the remaining features of claim 1.
The closest art Abrams (US 7141055) teaches first (aperture 70) and second grabbing mechanisms (apertures 65), the first and second grabbing mechanisms being axially movable with respect to each other along the gastrointestinal tract (vacuum apertures 65, 70 are moveable with respect to each other), and a radially expandable blocking element (proximal portion 15 includes spring-biased or spring-type movable portions 160) disposed proximal to the first grabbing mechanism and movable with the first grabbing mechanism (arrangement allows the blocking element 55 to be moveable with aperture 70 in parallel) with respect to the second grabbing mechanism. However, since the blocking element is attached with the second grabbing element, in Adams, the blocking element is not allowed to move towards the second grabbing mechanism to meet all the features of claim 1.
Butler (US 20030083546) teaches suction apertures 8 and outwardly moveable members, such as the inflatable balloon 21. However, Butler does not teach the first and second grabbing mechanisms being axially movable with respect to each other along the gastrointestinal tract.
Kinney (US 20060264707) provides multiple grabbing mechanism 20, but these grabbing mechanism do not move relative to each other.
Roth (US 20060106288) teaches cylindrical pods (vacuum ports) 228, 226, but does not provide moveable and expandable blocking element. In Roth, there is no motivation to provide a blocking element such as balloon to move the tissue of the intestinal track by moving the second grabbing mechanism.
Wendlandt (US 20020107478) teaches suction ports 25 and flexible tubular catheter 2, the suction ports 25 assist the movement of the tubular catheter 2 within the intestine. Wendlandt does not teach blocking element and releasably attachable grabbing mechanism.
Accordingly, claim 1 is considered to have allowable subject matter if this claim overcomes any outstanding rejections and objections.
Claim 14 encompasses similar inventive features.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHANKAR R GHIMIRE whose telephone number is (571)272-0515. The examiner can normally be reached 8 AM - 5 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Anhtuan Nguyen can be reached on 571-272-4963. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SHANKAR RAJ GHIMIRE/Examiner, Art Unit 3795
/ANH TUAN T NGUYEN/Supervisory Patent Examiner, Art Unit 3795 03/19/2026