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 .
Claim Objections
Claim 8 is objected to because of the following informalities: on line 4, “a center axis” should be –the center axis--. 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.
Claims 3-5 and 19-20 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 3 recites “a distal end side of the coil sheath” in line 2, it is unclear to the examiner if this is the same or different than the “distal end of the coil sheath” introduced in claim 1 line 8. For purposes of this office action they will be interpreted as being the same.
Claim 5 recites the limitation "the proximal end of the coil sheath connection portion" in line 3. There is insufficient antecedent basis for this limitation in the claim.
The “coil sheath connection portion” and "the proximal end of the coil sheath connection portion" are introduced in claim 3 not in claim 1. It appears to the examiner that the claim should be dependent of claim 3.
Claim 19 recites “a distal end side of the coil sheath” in line 2, it is unclear to the examiner if this is the same or different than the “distal end of the coil sheath” introduced in claim 1 line 8. For purposes of this office action they will be interpreted as being the same.
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) 1-4, 6-11, 13-15, and 17-20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ouchi (6,033,424).
Ouchi discloses the following claimed limitations:
Claim 1: An endoscopic treatment instrument comprising: a coil sheath (2) (Fig. 1 and Col. 2 Lines 54-56); a wire (6) (Fig. 1 and Col. 3 Lines 16-18) provided in the coil sheath (Fig. 1-4 and Col. 3 Lines 16-18) and configured to move in a longitudinal direction of the coil sheath relative to the coil sheath (Fig. 1-4 and Col. 3 Lines 16-26); a wire connection portion (13) connected to a distal end side of the wire (Fig. 1-4 and Col. 3 Lines 16-26); and an end effector (forceps 5a and 5b as seen in Fig. 1-4) configured to switch between an open state (Fig. 4) and closed state (Fig. 1) in response to movement of the wire (Fig. 1-4 and Col. 3 Lines 16-26), wherein when the end effector is in the closed state, a proximal end of the wire connection portion is located proximally relative to a distal end of the coil sheath (Fig. 1 where the distal end of the sheath is connected to part 1 as seen in Fig. 1).
Claim 2: wherein when the end effector is in the open state (Fig. 4), the proximal end of the wire connection portion is located distally relative to the distal end of the coil sheath (Fig. 4).
Claim 3: further comprising: a coil sheath connection portion (1) connected to a distal end side of the coil sheath (Fig. 1 and Col. 2 Lines 55-60), wherein when the end effector is in the closed state (Fig. 1), the proximal end of the wire connection portion is located proximally relative to a proximal end of the coil sheath connection portion (Fig. 1).
Claim 4: wherein when the end effector is in the open state (Fig. 4), the proximal end of the wire connection portion is located distally relative to the proximal end of the coil sheath connection portion (Fig. 4).
Claim 6: wherein the coil sheath includes a first inner surface (see figure below) and a second inner surface (see figure below) located proximally relative to the first inner surface (see figure below), and wherein the second inner surface is closer to a center axis (see figure below) of the coil sheath than the first inner surface (see figure below).
Claim 7: wherein the coil sheath includes an inclined inner surface (see figure below) inclined relative to a center axis (see figure below) of the coil sheath, and wherein the inclined inner surface faces distally (see figure below).
Claim 8: wherein the inclined inner surface comprises a first inclined inner surface (see figure below), wherein the coil sheath includes a second inclined inner surface (see figure below) facing distally (see figure below), and wherein the first inclined inner surface opposes to the second inclined inner surface with respect to a center axis of the coil sheath (see figure below).
Claim 9: wherein the coil sheath includes a plurality of inclined inner surfaces (see figure below).
Claim 10: wherein the coil sheath comprises: a first inclined inner surface (see figure below) facing distally (see figure below), wherein the first inclined inner surface includes a first inner surface and a second inner surface located proximally relative to the first inner surface (see figure below), wherein the second inner surface is located closer to a center axis of the coil sheath than the first inner surface (see figure below); and a second inclined inner surface (see figure below) facing distally (see figure below), wherein the second inclined inner surface includes a third inner surface (see figure below) and a fourth inner surface (see figure below) located proximally relative to the third inner surface (see figure below), wherein the fourth inner surface is located closer to the center axis than the third inner surface (see figure below), and wherein the second inner surface is closer to the center axis than the third inner surface (see figure below).
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Claim 11: wherein the wire connection portion has a first outer diameter (Fig. 1), wherein the coil sheath has a first inner diameter (Fig. 1), and wherein the first outer diameter is smaller than the first inner diameter (Fig. 1 where it is smaller since it fits inside the coil sheath).
Claim 13: wherein the wire has a first diameter (Fig. 1), and wherein the wire connection portion has a second diameter (Fig. 1) larger than the first diameter (Fig. 1 where it is larger since the wire fits inside the wire connection portion).
Claim 14: wherein the end effector comprises a first arm (5a) and a second arm (5b), in the closed state (Fig. 1), the first arm is in contact with the second arm or a distance between a distal end of the first arm and a distal end of the second arm is zero (Fig. 1).
Claim 15: wherein the end effector is forceps (Fig. 1-4 and Col. 2 Line 51).
Claim 17: wherein the coil sheath includes a first outer surface (see figure below) and a second outer surface (see figure below) located proximally relative to the first outer surface (see figure below), and wherein the second outer surface is located closer to a center axis (see figure below) of the coil sheath than the first outer surface (see figure below).
Claim 18: wherein the coil sheath includes an inclined outer surface (see figure below), wherein the inclined outer surface faces proximally to a proximal end of the coil sheath (see figure below).
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Claim 19: further comprising: a coil sheath connection portion (1) connected to a distal end side (see figure below) of the coil sheath (Fig. 1 and Col. 2 Lines 55-60), wherein the coil sheath connection portion includes a first portion (see figure below) and a second portion (see figure below), wherein the first portion is located distally relative to the second portion (see figure below), wherein the first portion has a first length (see figure below) between a center axis of the coil sheath and an outer surface of the coil sheath connection portion (see figure below), and wherein the second portion has a second length (see figure below) between the center axis of the coil sheath and the outer surface of the coil sheath connection portion (see figure below), the second length is smaller than the first length (see figure below), wherein, and wherein the coil sheath includes a third potion having a third length between the center axis of the coil sheath and an outer surface of the coil sheath (see figure below), wherein the third length is equal to or smaller than the second length (see figure below).
Claim 20: wherein the coil sheath includes a fourth portion (see figure below) provided proximally relative to the third portion (see figure below), the fourth portion has a fourth length between the center axis of the coil sheath and the outer surface of the coil sheath (see figure below), wherein the fourth length is smaller than the third length (see figure below).
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Claim Rejections - 35 USC § 103
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 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) 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over by Ouchi (6,033,424).
Ouchi discloses the claimed invention except for a distance between the coil sheath and the wire connection portion in a radial direction is 0.02 mm or more and 0.2 mm or less. It would have been obvious to one having ordinary skill in the art at the time the invention was filed to have the distance between the coil sheath and the wire connection portion in a radial direction is 0.02 mm or more and 0.2 mm or less, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Claim(s) 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over by Ouchi (6,033,424) in view of Sase (2023/0030901).
Ouchi teaches all the limitations discussed above including that the coil sheath comprises a winding wire (Fig. 1-4 and Col. 2 Lines 51-59), however Ouchi is silent to the winding wire having an elliptical cross-sectional shape.
Sase discloses another well-known endoscopic treatment instrument comprising a coil sheath (Wf) (Fig. 2) comprises a winding wire (Fig. 2), and wherein the winding wire can have an elliptical cross-sectional shape (Fig. 2 and [0067]) or a rounded shape ([0067]). Thus, Sase discloses that these arrangements for the winding wire is well known equivalents in the art.
Therefore, it would have been obvious to one of ordinary skill in the art to modify the winding wire cross-sectional shape of Ouchi to be have an elliptical cross-sectional shape, as taught by Sase, since it has been held that a simple substitution of one known element for another will yield predictable results. KSR International Co. v. Teleflex Inc., 550 U.S. 398, 82, USPQ2d 1385 (2007).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The cited prior art appears to teach the claimed limitations when considered alone or in combination.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DIANNE DORNBUSCH whose telephone number is (571)270-3515. The examiner can normally be reached Monday-Wednesday 9 am-3 pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Elizabeth Houston can be reached at (571) 272-7134. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DIANNE DORNBUSCH/Primary Examiner, Art Unit 3771
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