DETAILED ACTION1
The following is a quotation of 35 U.S.C. 112:
(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.
Claim 8 is rejected under 35 U.S.C. 112 (b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention.
Claim 8 recites a second member partially sandwiched. Parent claim 1 already introduces a second member. It is therefore indefinite if claim 8 is referring to this member or introducing another member.
REJECTIONS UNDER 35 USC 102
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-3, 6-7, 9-12, 14, & 16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by JP 2003 093403 to Olympus Optical Co. (hereafter Olympus).
Claim 1 recites a retraction mechanism. Olympus relates to such a mechanism. See Olympus pg. 5, ll. 44-462 and Fig. 14-15. Figure 15 of Olympus shows the mechanism has a first member (138); a second member (133); a first structure (139) that biases the first member toward the second member to stop the first member. Specifically, tool (138) is being pulled upward by the magnet (139) in arm (133). See Olympus pg. 5m ll. 44-53. Olympus further teaches both a second structure…and a third structure in the form of two springs (147) attached between the receiving member (145) and box (146). See Olympus Fig. 15. These two springs both cancel the stop of the first member by the first structure. Because the two springs act in concert they both cancel the stop caused by the force applied to the first member as well as the force applied to the second member that may be lateral.
Claim 2 recites that the first structure biases the first member in a first direction toward the second member. This feature is taught in several ways. Figure 15 shows the magnet (139) to the side of tool (138). Thus, some of the movement is lateral. This lateral movement is toward the spring on that side. The spring on that side will resist force in the lateral direction. Which will be a second direction opposite to the first direction.
Alternately, magnet (139) can be placed over the tool (138) and push the tool by reversing the magnetic polatity. This force is also bias[ed]…toward[s] the springs. The springs will resist force due to compression in an opposite direction.
Claim 3 recites that a first characteristic in which the first structure generates a first force… is different from a second characteristic in which the second structure generates a second force… and from a third characteristic in which the third structure generates a third force. Grammatically, claim 3 is read that the first force characteristic is different from the second and third characteristics, but that the second and third need not be different from each other. The first structure in Olympus generates a magnetic force. This is the characteristic and it is different from the spring force characteristic of the other two.
Regarding claim 6, Olympus teaches two springs which are both elastic bod[is] that bias. They are both springs as recited by claim 7. Claim 9 recites the second structure includes a structure of exerting traction on the first member in the second direction. A spring force when the spring is extended may be considered a tracti[ve] force and it operates on first member in the second direction. Claim 10 recites the same features as claim 9 and is rejected for the same reasons. Claim 10 further recites that there is a treatment unit attached to the second member. Olympus relates to a medical treatment device that is connected (electrically) to the magnetic control device. See Olympus, pg. 6 ll. 4-5. (Examiner would like applicant to confirm that claims 10 and 12 are intended to recite that the different members are attached to the treatment unit.) Regarding claim 11, the second spring also exert[s] traction on the second member. Regarding claim 12, Olympus relates to a medical treatment device that is connected to the tool. See Olympus, pg. 6 ll. 4-5. Regarding claim 14, Olympus teaches an adjustment mechanism (137) controlling current to the magnet (138) to adjust the force with which the second structure biases the first member in the second direction. See Olympus pg. 6, ll. 10-14. Finally, regarding claim 16, figure 15 shows the two springs, which are the second structure and the third structure are identical.
REJECTIONS UNDER 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 of this title, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious3 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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103(a) are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over JP 2003 093403 to Olympus Optical Co. (hereafter Olympus)
Claim 5 recites the first structure includes a first magnet being a fixed magnet. Magnet (139) is fixed within structure (133). See Olympus Fig. 15. Claim 5 further recites a second magnet…fixed to the first member that is movable in the first direction with respect to the first magnet. Olympus does not explicitly teach a magnet in tool (138). It is silent as to whether the magnetic attraction between magnet (138) is due to the material of the tool or a magnet in the tool. But Examiner takes Official Notice that one way to create magnetic attraction is to place a magnet in both elements. Thus, it would have been obvious to modify Olympus to fix a second magnet…to the first member because it is obvious to apply a known technique to a known product or method, ready for improvement, to yield predictable results. See MPEP 2143(D). This configuration would render the second magnet capable of movable in the first direction as recited.
ALLOWABLE SUBJECT MATTER
Claims 4, 13, & 15 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claim 4 is allowable because Olympus does not teach non-linear versus linear force change with distance and movement of the members. Claim 13 is allowable because there is no teaching of a third magnet and given that even a second magnet would be a modification, there is no suggestion for a third one in any form. Finally, claim 15 is allowable because the springs in Olympus are fixed. There is no teaching of an adjustment mechanism that adjusts an attachment position of the…elastic body. This feature is, however, interpreted in view of 112f and the corresponding structure is the slider (51) from the instant specification.
Claim 8 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.
If claim 8 is referring to the same second member, then the prior art does not teach the second member being sandwiched between a first fixed magnet and a second movable magnet.
CONCLUSION
Any inquiry concerning this communication should be directed to Moshe Wilensky whose telephone number is 571-270-3257. Mr. Wilensky’s supervisor, Sunil Singh can be reached at 571-272-3460. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Examiner interviews are available via telephone or video conferencing using a USPTO supplied web-based collaboration tool. Applicant may also use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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/MOSHE WILENSKY/
Primary Examiner, Art Unit 3726
1 The following conventions are used in this office action. All direct claim quotations are presented in italics. All non-italic reference numerals presented with italicized claim language are from the cited prior art reference. All citations to “specification” are to the applicant’s published specification unless otherwise indicated. The use of the phrase “et al.” following a reference is used solely to refer to subsequent modifying references, and not to other listed inventors of the cited reference.
2 All citations are to the attached English translation of Olympus obtained from espacenet.com.
3 Hereafter all uses of the word “obvious” should be construed to mean “obvious to one of ordinary skill in the art at the time the invention was filed.”
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