DETAILED ACTION
Claims 1-15 are pending and hereby under examination.
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 .
Specification
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided.
The abstract of the disclosure is objected to because of undue length. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
Claim Objections
Claims 1-15 are objected to because of the following informalities:
Claim 1, line 1, “A gun …” should read “An automatic gun …” for consistent language used with the preambles of the dependent claims.
Claims 2-14 should read “The automatic gun according to claim ...”.
Claims 6-8 refer to a “vertex (18)”; however, the specification points to a “vertex 17”. Applicant should update the claim language to match the specification, or amend the claim to remove the character reference.
Claim 15, line 1 “Use of the gun” should read “Use of the automatic gun” for consistent language used with the preambles of claims 1-14.
Appropriate correction is required.
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.
“elastic means” recited in claim 1 is interpreted as a coil spring (Page 15, line 15).
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:
“elastic element” first recited in claim 11.
The identified structure of the correspond element is identified as:
“elastic element” is identified as “a coil spring” (Page 11, lines 24-25).
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.
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.
Claim 2 is 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.
Claim 2 recites a semiconductor device, wherein the electrode for suppressing the channel current is an EQR electrode. There is no disclose of an electrode, an EQR electrode, or a semiconductor anywhere in the specification. It appears Applicant has accidentally included this limitation in claim 3. However, the claim still contains subject matter not described in the specification.
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 2 is 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.
Regarding claim 2, the claim recites “3. (Original) The semiconductor device according to claim 2, wherein the electrode for suppressing the channel current is an EQR electrode” in lines 6-7. It is unclear if these lines are supposed to be a separate claim for 16 claims total or is unrelated to the instant application. As there is no “semiconductor device” or “electrode” recited in any of the other claims, it appears these lines were improperly added to the claim. Thus, these limitations will not be examined within claim 2.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 3-4 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 1 uses the term “respectively” to link the slider engaging the first branch in response to the retraction of the thrust element with the resulting retraction of the second carriage. Likewise, the term “respectively” links the slider engaging the second branch in response to the retraction of the thrust element with the resulting retraction of the first carriage.
Claim 3 refers to the retracted position of the thrust element with the slider engaged in the first branch of the longitudinal guide corresponding to the second carriage in the retracted position. Claim 1 requires that the body comprises a longitudinal guide branched into a first and second branch, wherein the slider engages the first branch in response to the retraction of the thrust element, thus resulting in the retraction of the second carriage. Claim 3 repeats the language of claim 1, albeit in a different way. However, the limitation recited in claim 3 is already interpreted to be in claim 1.
Claim 4 refers to the retracted position of the thrust element with the slider engaged in the second branch of the longitudinal guide corresponding to the first carriage in the retracted position. Claim 1 requires that the body comprises a longitudinal guide branched into a first and second branch, wherein the slider engages the second branch in response to the retraction of the thrust element, thus resulting in the retraction of the first carriage. Claim 4 repeats the language of claim 1, albeit in a different way. However, the limitation recited in claim 4 is already interpreted to be in claim 1.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Allowable Subject Matter
The following is a statement of reasons for the indication of allowable subject matter:
The prior art of record discloses analogous devices to the instant application.
With regard to claim 1, Bacon (US 20090299221) discloses an automatic gun (Fig. 1, biopsy device 10) for biopsies, comprising:
a body (Fig. 4, outer housing 40) that can be held by an operator, a first carriage and a second carriage housed in the body (Figs. 3-5, wherein outer housing 40 includes a right housing shell 52 and a left housing shell 54 that holds a cannula carriage 120 and a stylet carriage 122, see also Figs. 17A-C), elastic means combined with the first carriage and the second carriage (Fig. 3, cannula spring 124 and stylet spring 126; Paragraph 0048, “The spring guide 128 mounts the springs 124, 126, which act to bias the cannula and stylet carriages 120, 122 to a fired position”; Examiner interprets the elastic means to be a spring, as disclosed on page 15, line 15 of the specification of the instant application), a loading mechanism of the gun (Fig. 3, cocking/operation assembly 42), and at least one button for triggering or firing the gun (Fig. 3, buttons 252 and 254), and a needle that extends in a cantilevered way from the body along a longitudinal axis (Figs. 1-2, cannula assembly 12; While Bacon does not explicitly disclose a “needle”, cannula assembly 12 has a cutting edge 30 and penetration tip 34, which Examiner interprets as a needle structure),
wherein the needle comprises a stylet constrained to the first carriage and a cannula constrained to the second carriage (Fig. 2, cannula assembly 12 comprising cannula 20 and stylet 22; Paragraph 0048, “a cannula carriage 120 which carries the cannula 20, a stylet carriage 122 which carries the stylet 22”),
wherein the stylet has a pointed end at which there is a collecting hollow for collecting a tissue sample (Fig. 2; Paragraph 0040, “The stylet 22 is an elongated, usually solid, cylindrical member comprising a stylet body 32 terminating in a pointed distal penetration tip 34 … The stylet body 32 can include a notch 36 near the distal penetration tip 34”), and
wherein the stylet is housed in the cannula, which can slide therein (Paragraph 0040, “The stylet body 32 has a constant outer diameter 38 which is somewhat smaller than the inner diameter 28 of the cannula 20 so that the stylet 22 is slidably received within the lumen 26 of the cannula 20”), in such a way that the collecting hollow can come out of the cannula and retract therein with a guillotine effect (Paragraph 0074, “For example, the user may fire the stylet 22, confirm that the notch 36 is in the desired location within the tissue mass 16 by some imaging technique, such as ultrasound, and then fire the cannula 20 to sever the tissue sample from the tissue mass 16”), and
wherein the first carriage is movable in the body in a longitudinal direction between a forward position (Paragraph 0048, “The spring guide 128 mounts the springs 124, 126, which act to bias the cannula and stylet carriages 120, 122 to a fired position”), at which the stylet is completely extended from the body and comes out at least partially of the cannula (Paragraph 0074, wherein firing the stylet 22 extends the stylet from the body past the cannula), and a retracted position, at which the stylet is partially inserted in the body and the collecting hollow is in the cannula (Paragraph 0004, “The stylet is retained within the lumen of the outer cannula such that the pointed end of the stylet closes off the open end of the cannula”, as the pointed end closes the open end of the cannula, the notch of the stylet would be in the cannula), and
wherein the second carriage is movable in the body in a longitudinal direction between a forward position (Paragraph 0048, “The spring guide 128 mounts the springs 124, 126, which act to bias the cannula and stylet carriages 120, 122 to a fired position”), at which the cannula is completely extended from the body, and a retracted position, at which the cannula is partially inserted in the body (Fig. 12C, wherein the cannula is moved rearwardly such that it is partially inserted in the body of biopsy device, revealing the stylet with notch 36), and
wherein the elastic means exert a thrust on the first carriage and on the second carriage in the direction of the respective forward position (Fig. 3, cannula spring 124 and stylet spring 126; Paragraph 0048, “The spring guide 128 mounts the springs 124, 126, which act to bias the cannula and stylet carriages 120, 122 to a fired position”), and
wherein the loading mechanism comprises a thrust element for both the first carriage and the second carriage (Fig. 3, cocking/operation assembly 42 engages the carriages via spring guide 128 using cocking element 116), which is constrained to the body and can be moved by the operator with respect to the body, in a longitudinal direction, between an inactive position and a loading position (Paragraph 0048, “The cocking element 116 is slidably mounted to the outer housing 40 for movement between a first position (FIG. 12A) and a second position (FIG. 12C)”), and wherein the displacement of the thrust element into the loading position results in the retraction of at least one of the first carriage and the second carriage into the retracted position (Paragraph 0048, “The spring guide 128 mounts the springs 124, 126, which act to bias the cannula and stylet carriages 120, 122 to a fired position”; Figs. 12A-C and paragraph 0066, “under continued rearward pulling of cocking element 116 to the second position, the cannula carriage 120 moves rearwardly relative to the cannula retainer 256”),
characterized in that the loading mechanism comprises a slider slidably mounted on the thrust element (Fig. 3, cocking element 116 with catch 148) and movable with respect thereto orthogonally to the longitudinal axis (Paragraph 0050, “The shaft 142 can be configured to be flexible or resilient such that the catch 148 can be displaced or deflected laterally from the operational axis X in the direction A or B, shown in FIGS. 13B and 13E”).
While Bacon discloses that the carriages may retract separately (Figs. 17A-C), Bacon fails to explicitly disclose a branched longitudinal guide branched into a first and second branch, wherein the slider selectively engages the branches on a longitudinal guide for retracting the carriages.
Musicco (WO 2017021826 – cited by Applicant) discloses an automatic biopsy gun (abstract) with separately retracting carriages (Fig. 11, assemblies 11 and 12 retracted using loading stud 3). The loading stud travels from the forward position to the rearward position first to arm the first pushing member, and a second travel from the forward to the rearward position to arm the second pushing member. The load stud is then pushed forward once to shoot the second pushing member, and it is pushed again to shoot the first pushing member to collect the sample tissue (Page 9, line 22 – Page 10, line 29). Musicco fails to disclose a branched guide or slot for selectively arming one of the pushing members.
Swick (US 20150148704 – cited by Applicant) discloses a biopsy device (Abstract), wherein a shaft 100 with extending arms 136/138 are configured to interact with the cannula and needle carriages (Paragraph 0100). While the shaft is branched into extending arms, there is no suggestion or disclosure of a branched guide for a slider to selectively engage the branches. With regard to claim 15, the prior art of record identified above fails to disclose or suggest a method of pushing a thrust element to slide a slider into a first branch of a longitudinal guide to retract a second carriage, returning the thrust element to then push the thrust element a second time to slide the slider into the second branch for retraction of the first carriage.
Thus, the prior art of record, alone or in combination, fails to teach or provide an obviousness rationale to combine the prior art to read on the claims. Claims 1 and 5-15 are allowed.
Claim 2 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Conclusion
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/NOAH M HEALY/Examiner, Art Unit 3791
/ADAM J EISEMAN/Primary Examiner, Art Unit 3791
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