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 .
Election/Restrictions
Newly submitted claims 21-30 are directed to an invention that is independent or distinct from the invention originally claimed for the following reasons: the group of claims 21-30 requires “another medical device” not found in the group of claims 1 and 3-9. Conversely, the group of claims 1 and 3-9 requires “the free end of the tether is configured to be releasably attached to the handle of the first part” not found in the group of claims 21-30.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 21-30 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Status of Claims
Claims 1 and 3-30 are pending, claims 21-30 have been withdrawn from consideration, and claims 1 and 3-9 are currently under consideration for patentability under 37 CFR 1.104. Previous objections to the drawings are withdrawn in light of Applicant’s amendment.
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) 1, 3, and 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Klinker (U.S. 2022/0095902) in view of Knapp II et al. (U.S. 2006/0114986).
With respect to claim 1, Klinker teaches a medical device, comprising:
a first part having a handle(15/15”), a shaft attached to the handle (154), and a distal assembly at a distal end of the shaft (para [0026]); and
an umbilicus (170/370’ and 500) attached to the handle of the first part (FIG. 3A), wherein the umbilicus includes a main body (170/370’) and a tether (500/600), and wherein the free end of the tether is configured to be releasably attached to the handle of the first part (at 259 for example).
While Klinker refers to reference 156 as a port and teaches the umbilicus 170 is connected to the port, which would suggest some sort of removable relationship, Klinker does not explicitly state the umbilicus is releasably attached to the handle.
With respect to claim 1, Knapp et al. teaches an umbilicus (230) releasably attached to a handle of a first part (FIG. 3), wherein the umbilicus includes a main body (230 to 234) and a tether (cable of 236) that branches off of the main body to a free end (FIG. 3).
Therefore, it would have been prima facie obvious to one of ordinary skill in the art at the time of the effective filing date to modify the umbilicus of Klinker to be releasable in the manner taught by Knapp et al. in order to allow for a less expensive endoscope by moving processor components to the adapters (para [0033]-[0034] of Knapp et al.).
With respect to claim 3, Klinker teaches the tether includes at least one button (251) at the free end of the tether (FIG. 1, 3A), wherein the at least one button is configured to control an imaging function of the medical device (wherein actuating controls imaging direction and therefore field of view).
With respect to claim 9, Knapp et al. teaches the umbilicus is configured to connect to the handle at a connection point via a mating, physical and electrical connection that securely and releasably attaches the umbilicus to the handle. (FIG. 3).
With respect to claim 21, Klinker teaches a medical device, comprising:
a handle (15/15”);
a shaft attached to the handle (154); and
an umbilicus (170/370’ and 500/600), wherein the umbilicus includes a main body (170/370’) and a tether (500/600) that branches off from the main body to a free end, and wherein the free end of the tether includes a button (251) configured to control an imaging function of the medical device (wherein actuating controls imaging direction and therefore field of view).
While Klinker refers to reference 156 as a port and teaches the umbilicus 170 is connected to the port, which would suggest some sort of removable relationship, Klinker does not explicitly state the umbilicus is releasably attached to the handle.
Claim(s) 4-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Klinker (U.S. 2022/0095902) in view of Knapp II et al. (U.S. 2006/0114986) as applied to claim 2 above and further in view of Yoshinaga et al. (U.S. 2020/0214542).
Klinker in view of Knapp et al. teaches a medical device as set forth above. However, Klinker in view of Knapp et al. does not teach an engagement feature.
With respect to claim 4, Yoshinaga et al. teaches an analogous device the free end of the tether includes an engagement feature (16) for securably and releasably engaging the handle of the first part.
With respect to claim 5, Yoshinaga et al. teaches the engagement feature is configured to securably and releasably engage multiple different positions of the handle (16).
With respect to claim 6, Yoshinaga et al. teaches the tether has a shape or a protrusion to engage a correspondingly-shaped portion in a body of the handle, wherein the protrusion is a snap-fit engagement, a friction-fit engagement, or a relative sliding engagement that securely holds the tether to the handle and permits release after use (para [0043]).
With respect to claim 7, Yoshinaga et al. teaches the engagement feature includes a magnet that attaches to the handle via a metal feature of the handle (para [0043]).
With respect to claim 8, Yoshinaga et al. teaches the engagement feature includes a c-shaped connector (para [0043]).
Therefore, it would have been prima facie obvious to one of ordinary skill in the art at the time of the effective filing date to modify Klinker to utilize an engagement feature in the manner taught by Yoshinaga et al. so that a surgeon can smoothly perform an inspection and a treatment using the mother-baby endoscope apparatus and hence, an inspection time period and a treatment time period can be shortened (para [0100] of Yoshinaga et al.).
Response to Arguments
Applicant's arguments filed 08/12/2026 have been fully considered but they are not persuasive.
In response to applicant's argument that Klinker does not teach umbilicus 500 branches off from primary 370, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). Knapp et al. is relied upon to teach this limitation.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/ALEXANDRA L NEWTON/Primary Examiner, Art Unit 3799
