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 amendment filed 6/3/2026 has been received and made of record. As requested, claims 1, 4-13, 27-29, and 32-37 are currently pending and are being examined.
Response to Arguments
Applicant’s amendments have overcome the previous objection to the specification, rejection under 112, rejections under 101, and rejections under 102. Therefore, these objections/rejections have been withdrawn.
Applicant’s amendments have overcome the previous rejection under 35 USC 102 as being anticipated by Jacobs and the rejection has been dropped. Jacobs, however, is still applicable under 35 USC 103 and a new rejection has been presented (see below) as necessitated by applicant’s amendments. It is agreed that Jacobs does not disclose 3 ports. Newly applied prior art to Pickels however teaches this limitation as presented below.
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 32 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. New claim 32 recites “wherein at least one port of the three or more instrument ports comprises two downward grooves, including the downward groove of the top opening, configured to receive and hold the handle of the laparoscopic hand instrument resting in the at least one port, wherein the downward groove of the top opening is arranged in a front wall of the at least one port, and wherein a further downward groove of the two downward grooves is arranged in a side wall of the at least one port”. Applicant’s specification does not support a second downward groove in a side wall of the port.
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 1, 4-13, 27-29, 32-37 are rejected under 35 U.S.C. 103 as being unpatentable over Jacobs (US 2018/0214230 A1) in view of Pickels Jr (US 5,533,618).
Regarding claim 1, Jacobs discloses an apparatus (Figures 1-5, Figures 20-25 or Figures 29a-c) comprising: one or more instrument ports (main body 12 forming housing 20, Figures 1-5; 61 and 63, Figures 20-25, [0038]; see port formed by 8, 60, [0042], Figures 29a-c) configured to hold respectively one or more laparoscopic instruments during a surgery ([0028], [0036], [0046]) performed by a surgeon, wherein each instrument port of the one or more instrument ports comprise a top opening (21, Figures 1-5; top opening of cavity 63, Figures 20-25; top opening in Figures 29a-c) having a downward groove (Formed where 52 meets 46 and 48, Figures 1-5 and 20-25; formed where scalloped surface 76 defines a notch or bearing surface 78, Figures 29a-c, [0043]) configured to receive and hold a handle of a laparoscopic hand instrument, the downward groove arranged such that, when the laparoscopic hand instrument rests in the instrument port, the handle is oriented towards a surgeon's location during the surgery during use (intended use; angled scalloped surface defines at least one notch or bearing surface to support a medical device disposed within the hold [0030], [0038], [0043], [0046] Figures 1-5, 20-25, and 29a-c would allow the instrument handle to be oriented toward a surgeon), wherein downward grooves one or more instrument ports are oriented such that handles of laparoscopic instruments resting in the adjacent ports are guided toward the surgeon and thus away from each other to avoid overlapping with each other (see grooves on opposite sides that guide instruments away from each other at 46 and 48 in Figures 20-25; at 76, 78 on opposing sides in Figures 29a-c), and wherein each downward groove comprises at least two edges having opposite slopes meeting at a low point or line of the downward groove (where 46 and 48 meet 52, Figures 1-5; see grooves on opposite sides that guide instruments away from each other at 46 and 48 in Figures 20-25; at 76, 78 on opposing sides in Figures 29a-c), the at least two edges configured such that, when the laparoscopic hand instrument rests in the instrument port, the handle of the laparoscopic hand instrument is urged towards the low point or line by gravity, thereby orienting the handle toward the surgeon's location (opposite slopes of 46 or 48 meeting at a low point 50 or line 52, Figures 4-5; similar structure in Figures 21-23 and 29a-c). Jacobs does not disclose three or more instrument ports wherein downward grooves of adjacent ports of the three or more instrument ports are oriented such that handles of laparoscopic hand instruments resting in the adjacent ports are guided away from each other to avoid overlapping with each other. Pickels Jr teaches a surgical holster for holding instruments comprising three or more instrument ports (Figures 1-5). It would have been obvious to one of ordinary skill in the art at the time of filing to provide three of the ports of Jacobs as taught by Pickels for the purpose of holding multiple instruments and since it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art. St. Regis Paper Co. v. Bemis Co., 193 USPQ 8. The downward grooves of Jacobs which has instruments capable of facing toward the surgeon is capable of, when three are provided, handles of laparoscopic instruments resting in the adjacent ports are guided toward the surgeon and thus away from each other to avoid overlapping with each other and as further shown in Pickels as not overlapping (Figure 4).
Regarding claim 4, Jacobs discloses wherein the downward grooves comprises a V-shaped groove formed by two straight edges or a U-shaped groove formed by at least one curved edges (Figures 7, 10, or 17).
Regarding claim 5, Jacobs discloses wherein each instrument port includes walls, including lower walls formed of water-proof material and a rigid material ([0036], [0039]) wherein each instrument port includes a lower portion that is enclosed by the lower walls to hold a distal end of the laparoscopic hand instrument resting in the instrument port in a sterile manner, the distal end including a tip (at 32 or 70 Figures 27 and 29a-c).
Regarding claim 6, Jacobs discloses wherein each instrument port comprises a throat that swallows a rotation wheel of the laparoscopic hand instrument resting in the instrument port, such that, when the laparoscopic hand instrument is inserted into the instrument port, the rotation wheel falls below the top opening of the instrument port (intended use, see throats along inside of holder cavities, Figures 1-5, 26, and 29a-c), and wherein the throat is fractionally larger than the rotation wheel such that the rotation wheel is held laterally by upper walls of the instrument port when in a holder, wherein at least one of the instrument ports is configured to hold a rotation wheel with a radius of substantially 40 to 50 mm (intended use, see throats along inside of holder cavities, Figures 1-5, 26, and 29a-c).
Regarding claim 7, Jacobs does not disclose wherein each instrument port has a rectangular cross section has a length measured along a direction towards a surgeon's location during the surgery, and a width measured perpendicular to the length and shorter than the length. Pickels teaches each instrument port has a rectangular cross section has a length measured along a direction towards a surgeon's location during the surgery, and a width measured perpendicular to the length and shorter than the length (Figures 1-3). It would have been obvious to one of ordinary skill in the art at the time of filing to provide the device of Jacobs having the rectangular cross section as taught by Pickels for holding instruments and since applicant has not disclosed that such solve any stated problem or is anything more than one of numerous shapes or configurations a person ordinary skill in the art would find obvious for the purpose of providing a forming edge in the heating portion or clamp. In re Dailey and Eilers, 149 USPQ 47 (1966).
Regarding claim 8, Jacobs discloses wherein the instrument ports comprise injection moulded plastic ([0028], [0031]).
Regarding claim 9, Jacobs discloses wherein the top opening of each instrument port of the one or more instrument ports includes at least one angled guide to guide a distal end of the laparoscopic hand instrument into a throat of the instrument port when the laparoscopic hand instrument is being inserted into the instrument port during use (Figures 1-5, 20-25, 29a-c).
Regarding claim 10, Jacobs discloses wherein the at least one angled guide provides an inward tapering opening to each instrument port, configured to assist a manual insertion of the laparoscopic hand instrument into the instrument port (Figures 1-5, 20-25, 29a-c).
Regarding claim 11, Jacobs discloses wherein the at least one angled guide includes: a shelf projecting from the top opening and configured to be oriented towards the surgeon during surgery (56 Figures 1-5; alternatively 10 capable of being oriented towards the surgeon depending on where they are standing).
Regarding claim 12, Jacobs discloses the shelf includes each of the downward grooves of the port.
Regarding claim 13, Jacobs discloses a leg curve (52) capable of projecting from top openings of the one or more instrument ports away from the surgeon when in use and around, over, or towards a leg of a patient to rest partially on an upper leg of the patient (Figures 1-5, 20-25; alternatively see 10 that is capable of use so as to project away from the surgeon and over/towards a leg of a patient).
Regarding claim 27, Jacobs discloses wherein the one or more instrument ports includes a plurality of ports (Figures 20-25 and 29a-c), and wherein adjacent ones of the plurality of ports are connected at least at their top openings to resist the surgeon manually inserting a laparoscopic instrument between the adjacent ones of the plurality of ports during use (Figures 20-25 and 29a-c). Alternatively, Pickels teaches the ports are connected (via 12) to resist instruments being inserted between the adjacent ports (given the small space, it would at least partially “resist” instruments, Figure 3).
Regarding claim 28, Pickels discloses wherein each pair of adjacent ports are separated by a separating wall (12) that provides a wall for each port of the pair of adjacent ports (Figures 1-3).
Regarding claim 29, Jacobs discloses wherein the device is of a rigid plastic which is waterproof material but not transparent. Pickels teaches a surgical holster comprising transparent plastic (Abstract). It would have been obvious to one of ordinary skill in the art at the time of filing to provide the device of Jacobs of a transparent material as taught by Pickels to allow visual inspection.
Regarding claim 32, Jacobs discloses wherein at least one port of the three or more instrument ports comprises two downward grooves, including the downward groove of the top opening, configured to receive and hold the handle of the laparoscopic hand instrument resting in the at least one port, wherein the downward groove of the top opening is arranged in a front wall of the at least one port, and wherein a further downward groove of the two downward grooves is arranged in a side wall of the at least one port (61 and 63, Figures 20-25, [0038]; see two support chambers formed by coupling support members 68 and 70 together with wall 86, [0046], Figures 29a-c).
Regarding claim 33, Jacobs discloses wherein the rigid material comprises a hard plastic ([0036], [0039]).
Regarding claim 34, Jacobs discloses wherein the lower portion includes a sealed bottom (at 32 or 70 Figures 27 and 29a-c).
Regarding claim 35, Jacobs discloses wherein a length of each instrument port extending from the top opening of the instrument port to a sealed bottom of the instrument port, is configured such that the instrument port holds hand instruments with lengths of substantially 250 mm, 330 mm and/or 430 mm (intended use; Figures 1-5).
Regarding claim 36, Pickels teaches wherein the three or more instrument ports include 3, 4, or 5 ports (Figures 1-5).
Regarding claim 37, Jacobs discloses wherein walls of the ports are substantially vertical when in use, including an inward taper from the top opening to a bottom (Figures 1-5, 20-23, 29a-c).
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Kari Rodriquez whose telephone number is 571-270-1909. The examiner can normally be reached Monday-Friday 6-3 EST.
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/KARI K RODRIQUEZ/ Primary Patent Examiner, Art Unit 3786
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