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 .
This action is in response to the Election/Restriction response filed on 06/22/2026. Claims 1-10 and 21-30 are pending. Claim 1 is independent. Claims 11-20 are canceled.
Examiner’s Note
The text of the canceled claims 11-20 should be deleted.
Election/Restrictions
Applicant’s election without traverse of Invention I (claims 1-10 and the newly added claims 21-30) in the reply filed on 06/05/2026 and 06/22/2026 is acknowledged.
Furthermore, the restriction requirement among the species has been withdrawn because only Species AA (Figures 32A-32B) is recited in the pending claims.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 120 as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed applications, Application No. 17/750,630, Application No. 16/929,522, Application No. 14/864,146, Application No. 62/063,848, Application No. 62/056,983, fail to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application.
The disclosure of the prior-filed applications, Application No. 17/750,630, Application No. 16/929,522, Application No. 14/864,146, Application No. 62/063,848, Application No. 62/056,983, fail to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for the claim limitation “a second surface that faces and is in intimate contact with the first surface” in claim 1. Although Fig. 32B shows that the second face is positioned next to the first surface, but it is not sufficient to provide support for the second surface being in intimate contact with the first surface. The specifications of the prior-filed applications are completely silent on that.
The disclosure of the prior-filed applications, Application No. 17/750,630, Application No. 16/929,522, Application No. 14/864,146, Application No. 62/063,848, Application No. 62/056,983, fail to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for the claim limitation “wherein the collar assembly is configured such that rotation of the second tube that is different than a rotation of the first tube causes relative axial motion between the body portion and the tendon actuation structure as the peaks and valleys of the first surface slide over the peaks and valleys of the second surface, thereby causing the proximal collar portion to act upon the first set of tendons to cyclically open and close the first articulable beak” in claim 2. The disclosures of the prior-filed applications are completely silent on that.
The disclosure of the prior-filed applications, Application No. 17/750,630, Application No. 16/929,522, Application No. 14/864,146, Application No. 62/063,848, Application No. 62/056,983, fail to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for the claim limitation “wherein rotation of the second tube that is the same as a rotation of the first tube maintains the first articulable beak in an open configuration, a closed configuration or an intermediate configuration between open and closed” in claim 3. The disclosures of the prior-filed applications are completely silent on that.
The disclosure of the prior-filed applications, Application No. 17/750,630, Application No. 16/929,522, Application No. 14/864,146, Application No. 62/063,848, Application No. 62/056,983, fail to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for the claim limitation “wherein rotation of the second tube that is different than a rotation of the first tube causes both first and second articulable beaks to cyclically open and close together” in claim 7. The disclosures of the prior-filed applications are completely silent on that.
Therefore, the effectively filing date of claims 1-10, 21,22, and 30 is determined to be 07/23/2024. Newly added claims 23-29 raise new matter issues as explained below.
Claim Objections
Claims 9, 10, and 30 are objected to because of the following informalities:
Claim 9, line 2 (in two different places of line 2), the limitation “scoop-like” should be amended to --scoop-shaped-- to avoid 35 U.S.C. 112 indefinite issue on the term “-like.”
Claim 10, line 2, the limitation “scoop-like” should be amended to --scoop-shaped-- to avoid 35 U.S.C. 112 indefinite issue on the term “-like.”
Claim 30, line 2, the limitation “scoop-like” should be amended to --scoop-shaped-- to avoid 35 U.S.C. 112 indefinite issue on the term “-like.”
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 23-29 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claim 23, the disclosure of the pending application and the disclosures of its prior-filed applications, Application No. 17/750,630, Application No. 16/929,522, Application No. 14/864,146, Application No. 62/063,848, Application No. 62/056,983 are completely silent on the limitation “wherein the peaks and valleys of the first surface and the corresponding peaks and valleys of the second surface are configured to maintain a nested configuration when the first tube and the second tube are rotated together.” Therefore, the limitation is considered as new matter.
Regarding claim 24, the disclosure of the pending application and the disclosures of its prior-filed applications, Application No. 17/750,630, Application No. 16/929,522, Application No. 14/864,146, Application No. 62/063,848, Application No. 62/056,983 are completely silent on the limitation “wherein the peaks and valleys of the first surface and the corresponding peaks and valleys of the second surface are configured to ride over one another during relative rotation of the first tube and the second tube to convert the relative rotation into reciprocating axial motion of the proximal collar portion relative to the distal-most collar portion.” Therefore, the limitation is considered as new matter.
Regarding claim 25, the disclosure of the pending application and the disclosures of its prior-filed applications, Application No. 17/750,630, Application No. 16/929,522, Application No. 14/864,146, Application No. 62/063,848, Application No. 62/056,983 are completely silent on the limitation “wherein the reciprocating axial motion of the proximal collar portion cyclically applies tension to and releases tension from the first set of tendons.” Therefore, the limitation is considered as new matter.
Regarding claim 26, the disclosure of the pending application and the disclosures of its prior-filed applications, Application No. 17/750,630, Application No. 16/929,522, Application No. 14/864,146, Application No. 62/063,848, Application No. 62/056,983 are completely silent on the limitation “wherein the cyclic application and release of tension causes the first articulable beak to flex toward and away from a longitudinal axis of the rotatable first tube.” Therefore, the limitation is considered as new matter.
Regarding claim 27, the disclosure of the pending application and the disclosures of its prior-filed applications, Application No. 17/750,630, Application No. 16/929,522, Application No. 14/864,146, Application No. 62/063,848, Application No. 62/056,983 are completely silent on the limitation “wherein the collar assembly is configured to actuate the first articulable beak without allowing distal tip portions of the first articulable beak to twist in relation to one another.” Therefore, the limitation is considered as new matter.
Regarding claim 28, the disclosure of the pending application and the disclosures of its prior-filed applications, Application No. 17/750,630, Application No. 16/929,522, Application No. 14/864,146, Application No. 62/063,848, Application No. 62/056,983 are completely silent on the limitation “wherein the proximal collar portion is attached to the tendon actuation structure and is configured to move axially relative to the body portion to actuate the first set of tendons.” Therefore, the limitation is considered as new matter.
Regarding claim 29, the disclosure of the pending application and the disclosures of its prior-filed applications, Application No. 17/750,630, Application No. 16/929,522, Application No. 14/864,146, Application No. 62/063,848, Application No. 62/056,983 are completely silent on the limitation “wherein the collar assembly and the flexible portion of the rotatable second tube are configured to translate rotation along a length of the rotatable second tube to the middle collar portion to remotely actuate the first articulable beak at a distal end of the device” Therefore, the limitation is considered as new matter.
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 1-10 and 21-30 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.
a) Claim 1 recites the limitation "the body portion of the first articulate beak" in line 9 of the claim. There is insufficient antecedent basis for this limitation in the claim. Line 3 of the claim provides the antecedent basis for the body portion of the distal portion of the rotatable first tube, not the body portion of the first articulate beak. Claims 2-10 and 21-30 are rejected because they depend on claim 1.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US 20030153843 A1 Nishtalas, Srinivas et al. discloses an endoscopic biopsy device.
US 20130096459 A1 VETTER; James William discloses a soft tissue coring biopsy device.
US 4368734 A Banko; Anton discloses a surgical instrument having rotatable jaws/beaks
US 5251641 A Xavier; Alfredo F. discloses a biopsy needle.
US 6416484 B1 Miller; Michael E. et al. discloses a biopsy extractor.
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/JING RUI OU/ Primary Examiner, Art Unit 3771
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