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 .
Response to Amendment
The addition of claims 25-28 in the response filed on 06/22/2026 are acknowledged.
Claims 1-28 remain pending in the application
Claims 1-28 are examined.
Response to Arguments
Applicant's arguments filed 06/22/2026 have been fully considered but they are not persuasive.
Applicant argues that Bouchard does not teach “a second device support connected to the mounting interface” because neither 92 nor 134 is connected to the clamping system 36.
Applicant’s arguments on pages 6-10 are not persuasive. Both 92 and 134 (second device support) are part of frame 22. Frame 22 is connected to clamping system 36 (mounting interface), which connects to patient transport system 14. This is clearly shown throughout the specification in the paragraphs below:
[0124]-mounting apparatus 10 comprises a frame-like structure (frame 22) which can be pivotably attached to the patient transport system 14,
[0127]- The mounting apparatus 10 also has a clamping system 36 for removeably attaching the frame 22 to the patient transport system 14
[0144] -The frame 22 is removable from the clamping system by removing the pivot pin 88 from the elongate slot 84.
The second device support (19, 134) is clearly connected to the mounting interface (36) through pin 88. Furthermore, the claim does not state that the second device support cannot be detachably or removably connected to the mounting interface. Additionally, the claim does not recite how the second device support and the mounting interface are connected. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Therefore, Bouchard does teach the limitation as recited in claim 1.
Applicant argues that the stated rationale is improper because it only address attaching the apparatus to a bed. Applicant also argues that the combination is improper because the cited references solve different problems than Applicant’s invention.
This is not persuasive. 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). Steppe explicitly teaches a tool holder positioned at the end of an articulated arm connected to a stand. Bouchard explicitly teaches a tool holder positioned at the end of an articulated arm and connected to a bed. Modifying the device of Steppe in view of the teaching of Bouchard would result in the articulated arm being connected to the bed instead of the stand for the purpose of “transporting equipment associated with the patient” ([0002] of Bouchard) and to “secure the medical equipment in a manner which allows for secure restraint, ease of access, as well as quick and easy release” ([0005] of Bouchard).
In addition, mere recognition of latent properties in the prior art does not render nonobvious an otherwise known invention.
Therefore Steppe, in view of Bouchard, does teach the limitation as recited in claim 1.
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) 1, 3-6, 9, 12, 15-24 is/are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Publication No. 2008/0308698 to Steppe in view of U.S Publication No. 2024/0108519 to Bouchard.
Regarding claim 1, Steppe discloses an apparatus for securing surgical instruments to make them accessible by a surgeon while performing an operation on a patient, the apparatus comprising: a. an articulated positioning arm (90, Fig. 11, [0032]) comprising a first arm section (left side of 90, Fig. 11, [0032]) and a second arm section (right side of 90, Fig. 11, [0032]); wherein the first arm section is oriented in a substantially horizontal position (Fig. 11) and the second arm section can be oriented in multiple positions (claim 7); b. an instrument support surface (92, Fig. 11, [0032]) extending from the second arm section of the articulated positioning arm (Fig. 11)wherein the instrument support surface can be oriented in multiple positions (claim 7); wherein the mounting interface is connected to the articulated positioning arm (Fig. 11); and
Steppe fails to expressly teach c. a mounting interface that is capable of mounting the apparatus on a surgical bed; d. a second device support connected to the mounting interface; wherein the second device support is configured to support one or more surgical tools.
However, Bouchard teaches of an apparatus (Fig. 6) including a mounting interface (36, Fig. 6, [0127]) that is capable of mounting the apparatus on a surgical bed (14, Fig. 6, Fig. 17A, [0126]- [0127]); d. a second device support connected to the mounting interface (92, 134, Fig. 17B, [0147]); wherein the second device support is configured to support one or more surgical tools ([0022], [0142]-[0143]).
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the device of Steppe to utilize a mounting interface in the manner as taught by Bouchard. It would have been advantageous to make the combination for the purpose of removeably attaching to the bed ([0127] of Bouchard).
Regarding claim 3, Steppe, in view of Bouchard, teaches the apparatus of claim 1 wherein the instrument support surface comprises at least one removeable tool support (60, Fig. 6, Fig. 9, [0031]).
Regarding claim 4, Steppe, in view of Bouchard, teaches the apparatus of claim 3 wherein the instrument support surface is configured to support endoscopic surgical tools (40, 92, Fig. 1, [0030]).
Regarding claim 5, Steppe, in view of Bouchard, teaches the apparatus of claim 1 wherein the instrument support surface further comprises a surgical instrument tray (10, Fig. 11, [0028]), wherein the surgical instrument tray includes features that align and secure surgical instruments (40, 42, 44, Fig. 5, [0030]).
Regarding claim 6, Steppe, in view of Bouchard, teaches the apparatus of claim 1 wherein the instrument support surface is adjustable (Claim 7).
Regarding claim 9, Steppe, in view of Bouchard, teaches the apparatus of claim 1 wherein the second device support is configured to support one or more endoscopic surgical tools (12, 92, 134, Fig. 11, [0117]).
Regarding claim 12, Steppe, in view of Bouchard, teaches the apparatus of claim 11 wherein the endoscopic instruments comprise microlaryngoscopic instruments (Streppe: [0015]).
Regarding claim 15, Steppe, in view of Bouchard, teaches the apparatus of claim 1 wherein the instrument support surface further comprises features that extend from the surgical instrument tray which are capable of aligning surgical instruments and arresting any undesired lateral motion (42, 44, Fig. 5, [0030]).
Regarding claim 16, Steppe, in view of Bouchard, teaches the apparatus of claim 1 wherein the instrument support surface further comprises one or more flexible protrusions that are capable of supporting the surgical instruments (Steppe: 40, 42, 44, Fig. 5, [0030]).
Regarding claim 17, Steppe, in view of Bouchard, teaches the apparatus of claim 1 wherein the apparatus is capable of being sterilized via autoclave (Steppe: 20, Fig. 1, [0029]).
Regarding claim 18, Steppe, in view of Bouchard, teaches the apparatus of claim 1 wherein the apparatus is capable of being sterilized using ethylene oxide (Steppe: 20, Fig. 1, [0029]).
Regarding claim 19, Steppe, in view of Bouchard, teaches the apparatus of claim 1 wherein the apparatus is capable of being sterilized via gamma radiation (Steppe: 20, Fig. 1, [0029]).
Regarding claim 20, Steppe, in view of Bouchard, teaches the apparatus of claim 1 wherein the surgical instruments are neurosurgical instruments (Steppe: [0015]).
Regarding claim 21, Steppe, in view of Bouchard, teaches the apparatus of claim 1 wherein the surgical instruments are ophthalmic instruments (Steppe: [0015]).
Regarding claim 22, Steppe, in view of Bouchard, teaches the apparatus of claim 1 wherein the surgical instruments are laparoscopic instruments (Steppe: [0015]).
Regarding claim 23, Steppe, in view of Bouchard, teaches the apparatus of claim 1 wherein the surgical instruments are otolaryngologic instruments (Steppe: [0015]).
Regarding claim 24, Steppe, in view of Bouchard, teaches the apparatus of claim 1 wherein the articulated positioning arm further comprises bend-and-stay arms, counterbalancing arms or combinations thereof (Steppe: Claim 7).
Claim(s) 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over Steppe in view of Bouchard and further in view of U.S. Patent No. 4,548,373 to Komura.
Regarding claim 2, Steppe, in view of Bouchard, teaches the apparatus of claim 1.
Steppe, in view of Bouchard, fails to expressly teach wherein the first arm section of the articulated positioning arm and the second arm section of the articulated positioning arm are connected at a perpendicular angle.
However, Komura teaches of an apparatus wherein the first arm section of the articulated positioning arm and the second arm section of the articulated positioning arm are connected at a perpendicular angle (2, 3, Fig. 1, Col. 3 lines 17-48).
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the device of Steppe, in view of Bouchard, to utilize an arm section in the manner as taught by Komura. It would have been advantageous to make the combination for the purpose of adjusting the position of the arm (Komura: Col. 3 lines 17-48).
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the device of Steppe, in view of Bouchard, to utilize a mounting interface in the manner as taught by Bouchard. It would have been advantageous to make the combination for the purpose of removeably attaching to the bed ([0127] of Bouchard).
Claim(s) 7, 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Steppe in view of Bouchard and further in view of U.S. Patent No. 5,681,018 to Hoftman.
Regarding claim 7, Steppe, in view of Bouchard, teaches the apparatus of claim 1.
Steppe, in view of Bouchard, fails to expressly teach wherein the instrument support surface can be positioned at an angle of from about 5 degrees to about 80 degrees from horizontal.
However, Hoftman teaches of an apparatus (Hoftman: Fig. 1) wherein the instrument support surface can be positioned at an angle of from about 5 degrees to about 80 degrees from horizontal (Hoftman: 34, 14, Fig. 1, Col. 4, lines 30-26).
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the device of Steppe, in view of Bouchard to utilize an instrument support surface in the manner as taught by Hoftman. It would have been advantageous to make the combination for the purpose of being positioned at a convenient distance (Hoftman: Col. 4, lines 30-26).
Regarding claim 8, Steppe, in view of Bouchard, teaches the apparatus of claim 1.
Steppe, in view of Bouchard, fails to expressly teach wherein the instrument support surface can be positioned at an angle of from about 10 degrees to about 45 degrees from horizontal.
However, Hoftman teaches of an apparatus (Hoftman: Fig. 1) wherein the instrument support surface can be positioned at an angle of from about 10 degrees to about 45 degrees from horizontal (Hoftman: 34, 14, Fig. 1, Col. 4, lines 30-26).
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the device of Steppe, in view of Bouchard, to utilize an instrument support surface in the manner as taught by Hoftman. It would have been advantageous to make the combination for the purpose of being positioned at a convenient distance (Hoftman: Col. 4, lines 30-26).
Regarding claim 11, Steppe, in view of Bouchard, teaches the apparatus of claim 1.
Steppe, in view of Bouchard, fails to expressly teach wherein the surgical instruments are endoscopic instruments and the second device support is an endoscopic tool holder.
However, Bouchard further teaches wherein the surgical instruments are endoscopic instruments and the second device support is an endoscopic tool holder (Bouchard: 92, 134, Fig. 17B, [0063]).
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the device of Steppe, in view of Bouchard to utilize surgical instruments in the manner as taught by Bouchard. It would have been advantageous to make the combination for the purpose of providing tools ([0063] of Bouchard).
Claim(s) 10, 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Steppe in view of Bouchard and further in view of U.S. Publication No. 2020/0352676 to Schlosser et al. (hereinafter “Schlosser”).
Regarding claim 10, Steppe, in view of Bouchard, teaches the apparatus of claim 1.
Steppe, in view of Bouchard, fails to expressly teach wherein the second arm section of the articulated positioning arm comprises at least two ball joints.
However, Schlosser teaches of an apparatus (Schlosser: Fig. 1) wherein the second arm section of the articulated positioning arm comprises at least two ball joints (Schlosser: 7,8, 31, 32, Fig. 4, [0063]).
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the device of Steppe, in view of Bouchard, to utilize a second arm in the manner as taught by Schlosser. It would have been advantageous to make the combination for the purpose of rotating the arm (Schlosser: [0063])
Regarding claim 13, Steppe, in view of Bouchard, teaches the apparatus of claim 1.
Steppe, in view of Bouchard, fails to expressly teach further comprising control surfaces that facilitate repositioning of the instrument support surface while maintaining sterility.
However, Schlosser teaches of an apparatus (Schlosser: Fig. 1) teach further comprising control surfaces that facilitate repositioning of the instrument support surface while maintaining sterility (Schlosser: [0103]).
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the device of Steppe, in view of Bouchard, to utilize control surfaces in the manner as taught by Schlosser. It would have been advantageous to make the combination for the purpose of sterilization ([0103] of Schlosser).
Claim(s) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Steppe in view of Bouchard and further in view of U.S. Publication No. 2020/0107920 to DeBord.
Regarding claim 14, Steppe, in view of Bouchard, teaches the apparatus of claim 1.
Steppe, in view of Bouchard, fails to expressly teach wherein the instrument support surface further comprises flexible negative features that are capable of capturing distal portions of surgical instruments.
However, DeBord teaches of an apparatus (DeBord: Fig. 1) wherein the instrument support surface further comprises flexible negative features that are capable of capturing distal portions of surgical instruments (DeBord: 402, Fig. 11, [0079]).
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the device of Steppe, in view of Bouchard, to utilize a surface in the manner as taught by DeBord. It would have been advantageous to make the combination for the purpose of identifying the correct tool ([0004] of DeBord).
Claim(s) 25 is/are rejected under 35 U.S.C. 103 as being unpatentable over Steppe in view of Bouchard and further in view of U.S Publication No. 2026/0207192 to Sauer.
Regarding claim 25, Steppe, in view of Bouchard, teaches the apparatus of claim 1, but Steppe, in view of Bouchard, fails to expressly teach wherein the second device support comprises a tool cradle and a positioning arm extending from the mounting interface, the positioning arm comprising an adjustment knob, at least two ball joints, and a pair of arm segments that clamp on the at least two ball joints, the pair of arm segments being tightenable via the adjustment knob.
However, Sauer teaches of an analogous device (Fig. 1a) wherein the second device support comprises a tool cradle and a positioning arm extending from the mounting interface, the positioning arm comprising an adjustment knob (18), at least two ball joints (11 and ball joint under 20), and a pair of arm segments that clamp on the at least two ball joints (16a, 16 b), the pair of arm segments being tightenable via the adjustment knob (18).
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the device of Steppe, in view of Bouchard, to utilize the second device support, as taught by Sauer. It would have been advantageous to make the combination for the purpose of allowing irregularly shaped objects to be quickly and easily securely grasped during a procedure ([0004] of Sauer).
Claim(s) 26 is/are rejected under 35 U.S.C. 103 as being unpatentable over Steppe in view of Bouchard and further in view of Schlosser and U.S. Publication No. 2026/0207192 to Sauer.
Regarding claim 26, Steppe, in view of Bouchard and Schlosser teaches the apparatus of claim 10, but Steppe, in view of Bouchard and Schlosser fails to expressly teach wherein the second arm section of the articulated positioning arm further comprises an adjustment knob and a pair of arm segments that clamp on the at least two ball joints, the pair of arm segments being tightenable via the adjustment knob.
However, Sauer teaches of an analogous device (Fig. 1a) wherein the second arm section of the articulated positioning arm further comprises an adjustment knob (18) and a pair of arm segments that clamp on the at least two ball joints (16a, 16b), the pair of arm segments being tightenable via the adjustment knob (18).
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the device of Steppe, in view of Bouchard, to utilize the second arm section, as taught by Sauer. It would have been advantageous to make the combination for the purpose of allowing irregularly shaped objects to be quickly and easily securely grasped during a procedure ([0004] of Sauer).
Claim(s) 27, 28 is/are rejected under 35 U.S.C. 103 as being unpatentable over Steppe in view of Bouchard and further in view of U.S. Publication No. 2022/0304762 to Jackson et al. (hereinafter “Jackson”).
Regarding claim 27, Steppe in view of Bouchard, teaches the apparatus of claim 3, but Steppe in view of Bouchard fails to expressly teach wherein the at least one removeable tool support comprises silicone.
However, Jackson teaches of an analogous device (Fig. 1) wherein the at least one removeable tool support comprises silicone (20, Fig. 1, [0069]).
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the device of Steppe in view of Bouchard, to utilize a removeable tool support that comprises silicone, as taught by Jackson. It would have been advantageous to make the combination for the purpose of imparting various desirable characteristics, such as rigidity, and resilience ([0071] of Jackson).
Regarding claim 28, Steppe in view of Bouchard teaches the apparatus of claim 3, but Steppe in view of Bouchard fails to expressly teach wherein the at least one removeable tool support comprises a first removeable tool support configured to receive a proximal end of a surgical instrument and a second removeable tool support configured to receive and retain a distal end of the surgical instrument.
However, Jackson teaches of an analogous device (Fig. 1) wherein the at least one removeable tool support comprises a first removeable tool support configured to receive a proximal end of a surgical instrument (28, Fig. 4, [0059]) and a second removeable tool support configured to receive and retain a distal end of the surgical instrument (the other 28, Fig. 4, [0059]).
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the device of Steppe in view of Bouchard, to utilize a removeable tool support that comprises silicone, as taught by Jackson. It would have been advantageous to make the combination for the purpose of providing contour and support to at least a portion of the endoscope coiled between all or a portion of the at least two upstanding elements ([0059] of Jackson).
Conclusion
THIS ACTION IS MADE FINAL. 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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/C.A.S./Examiner, Art Unit 3795
/MICHAEL J CAREY/Supervisory Patent Examiner, Art Unit 3795
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