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 .
Priority
The withdrawal of priority to AU2021901689 (filed 06/07/2021) in form PCT/IB/317 is acknowledged. Therefore, the earliest effective filing date for purposes of examination is the filing date of PCT/AU2022/050555 filed on 6/7/2022.
Election/Restrictions
Applicant’s election without traverse of Group I in the reply filed on 2/9/2026 is acknowledged.
Claims 1-13 and 27-29 are currently pending and being examined.
Specification
The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed.
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 5-6 and 28 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 5 recites “a rigid material, e.g., a hard plastic”. It is unclear if the limitations “e.g., a hard plastic” are required.
Claim 6 recites “a throat that swallows a rotation wheel of the laparoscopic hand instrument such that the rotation wheel falls below the top opening when being inserted into the instrument port… the throat is fractionally larger in cross section than the rotation wheel such that the rotation wheel is held laterally by upper walls of the instrument port when in a holder, including for wheels with radii of substantially 40 to 50 mm” which positively recites the laparoscopic tool and appears to be method steps of using the device which is unclear. For purposes of examination, it is being interpreted as and is suggested the claim be amended to recite –configured to—or similar language to clarify this is intended use.
Claim 28 recites “a separating wall (“dividing wall”)” which is unclear. It is suggested removing the recitation of “(“dividing wall”)”.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Section 33(a) of the America Invents Act reads as follows:
Notwithstanding any other provision of law, no patent may issue on a claim directed to or encompassing a human organism.
Claims 3, 7, 10, 11, and 13 are rejected under 35 U.S.C. 101 and section 33(a) of the America Invents Act as being directed to or encompassing a human organism. See also Animals - Patentability, 1077 Off. Gaz. Pat. Office 24 (April 21, 1987) (indicating that human organisms are excluded from the scope of patentable subject matter under 35 U.S.C. 101).
Claim 3 recites “thus orienting the handle toward the surgeon”.
Claim 7 recites “it spans further from a patient than parallel to a longitudinal axis of the patient”.
Claim 10 recites “making it easier for the surgeon to manually insert the laparoscopic hand instrument into the instrument port”.
Claim 11 recites “a shelf projecting from the top opening towards the surgeon when in use in a first direction; and/or a leg curve projecting from the top opening away from the surgeon when in use in a second direction and around/over/towards a leg of a patient.”
Claim 13 recites “projecting… away from the surgeon when in use and around/over/towards a leg of a patient to rest partially on an upper leg of the patient.”
These limitations positively recite the human body. It is suggested applicant use “configured to” or similar language to overcome the rejections.
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.
Claims 1-13 and 27-28 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Jacobs (US 2018/0214230 A1).
Regarding claim 1, Jacobs discloses an apparatus (Figures 1-5, Figures 20-25 or Figures 29a-c) including: one or more instrument ports (main body 12 forming housing 20, Figures 1-5; 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) configured to hold respectively one or more laparoscopic instruments during surgery ([0028], [0036], [0046]), wherein a top opening (21, Figures 1-5; top opening of cavities 61 and 63, Figures 20-25; two top openings in Figures 29a-c) of each instrument port of the one or more instrument ports includes 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 resting in the instrument port such that the handle is oriented towards a surgeon during 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).
Regarding claim 2, Jacobs discloses wherein the one or more instrument ports includes a plurality of ports (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), and the downward grooves of adjacent ports are oriented around their respective top openings such that handles of adjacent hand instruments, when in the adjacent ports, are guided away from overlapping 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).
Regarding claim 3, Jacobs discloses wherein the downward groove includes at least two edges having opposite slopes meeting at a low point or line of the downward groove when in use such that the handle is urged towards a low point/line by gravity, thus orienting the handle toward the surgeon (opposite slopes 52 and 46 or 48 meeting at a low point or groove 50, Figures 4-5; similar structure in Figures 21-23 and 29a-c).
Regarding claim 4, Jacobs discloses wherein the downward groove is a V groove formed of two straight edges or a U groove formed of curved edges (see Figures 21-23 or Figures 29a-c; V groove formed by two straight edges).
Regarding claim 5, Jacobs discloses wherein each instrument port of the one or more instrument ports includes walls, including lower walls formed of water-proof material and a rigid material, e.g., a hard plastic, ([0036], [0039]) wherein each instrument port of the one or more instrument ports includes a lower portion that is enclosed by the lower walls to hold a distal end of the laparoscopic hand instrument including a tip in a sterile manner, wherein the lower portion includes a sealed bottom (at 32 or 70 Figures 27 and 29a-c).
Regarding claim 6, Jacobs discloses wherein each instrument port of the one or more instrument ports has a throat that swallows a rotation wheel of the laparoscopic hand instrument such that the rotation wheel falls below the top opening when being inserted into the instrument port (intended use, see throats along inside of holder cavities, Figures 1-5, 26, and 29a-c), and/or wherein the throat is fractionally larger in cross section than the rotation wheel such that the rotation wheel is held laterally by upper walls of the instrument port when in a holder, including for wheels with radii 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 discloses wherein each instrument port of the one or more instrument ports has a rectangular cross section such that it spans further from a patient than parallel to a longitudinal axis of the patient when in use, and/or wherein walls of the one or more instrument 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).
Regarding claim 8, Jacobs discloses wherein the one or more instrument ports include disposable materials ([0028], [0031]), wherein the one or more instrument ports include injection moulded plastic ([0028], [0031]), and/or wherein the one or more instrument ports include 2, 3, 4 or 5 hand instrument ports (Figures 20-25, 29a-c).
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 the each instrument port of the one or more instrument ports, making it easier for the surgeon to manually insert 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 towards the surgeon when in use in a first direction (56 Figures 1-5; alternatively 10 capable of being oriented towards the surgeon depending on where they are standing).
Regarding claim 11-12, Jacobs discloses wherein the at least one angled guide includes: a shelf projecting from the top opening towards the surgeon when in use in a first direction wherein the shelf includes the downward groove of each port (see shelf 52 that includes groove at 50 where 52 meets 46/48; Figures 1-5).
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/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).
Regarding claim 28, Jacobs discloses wherein the adjacent ones of the one or more instrument ports form one or more pairs of adjacent ports, and the adjacent ports in each pair of the one or more pairs of adjacent ports are separated by a separating wall ("dividing wall") that provides a wall for both of the adjacent ports (59, Figures 20-25; 86 Figures 29a-c).
Regarding claim 28, Jacobs discloses wherein each instrument port of the one or more instrument ports includes a window of transparent, waterproof material configured to display a distal end of the laparoscopic hand instrument in the instrument port, including a tip of the laparoscopic hand instrument, to the surgeon to allow the surgeon to see the tip of the laparoscopic hand instrument when the laparoscopic hand instrument is resting in the instrument port.
Claim Rejections - 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, 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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 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 29 is rejected under 35 U.S.C. 103 as being unpatentable over Jacobs (US 2018/0214230 A1) in view of Reaux (US 6,827,212 B2).
Regarding claim 29, Jacobs discloses that as applied wherein the device is made of a rigid plastic which is a waterproof material but does not disclose a window of transparent material. Reaux teaches a survival instrument holder wherein all or a potion of the material that defines the recessed areas (14) are transparent to allow visual inspection into the interior (Col. 2, lines 1-7). 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 Reaux to allow visual inspection into the interior.
Conclusion
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Alireza Nia can be reached at (571) 270-3076. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KARI K RODRIQUEZ/Primary Patent Examiner, Art Unit 3786