DETAILED ACTION
This Office Action is a Response to Applicant’s Arguments and Amendment submitted 04/16/2026.
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 .
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.
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(s) 1, 3-6, 7, 9-12, 13, and 15-17 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 2006/0079884 A1 to Manzo et al. (hereinafter “Manzo”) in view of US 2008/0300629 A1 to Surti (hereinafter “Surti”) (both references previously of record).
Regarding claim 1, Manzo discloses (see abstract; Figs. 1-9C; and [0029]-[0060]) a forceps device (see Figs. 4-6C) comprising: a distal end part (Figs. 5A-B) including a treatment part (28) for treating an object; a columnar member (29, including 29B, see Fig. 5A/6B) connected to the distal end part (see [0038]); a pipe (23) connected to the columnar member on a side thereof opposite a side with which the distal end part is connected (see [0038]-[0041] and Figs. 5A-6C); a cover (38) mounted over the distal end part and the columnar member (see Figs. 5A-C and [0041]-[0042]); and an enlarged-diameter portion (stop shoulder 56) having a larger diameter than an end face, on a side closer to the pipe, of the cover that is mounted over the columnar member (see Figs. 5A-C and [0042]), wherein the enlarged-diameter portion is located at a position covering the end face (see Figs. 5B-C).
Manzo further discloses (claim 4) wherein the enlarged-diameter portion is provided at the pipe (see Figs. 5A-C and [0042]); (claim 5) wherein a diameter of the enlarged-diameter portion on a columnar member side is smaller than an inner diameter of a trocar into which the forceps device is configured to be inserted (inserting into a trocar is an intended use recitation, however, if the forceps device is inserted into a trocar, the diameter of the enlarged-diameter portion would have to be smaller than the inner diameter of the trocar for the device to actually be inserted into the trocar); (claim 6) a wire (68) connected to the treatment part for causing the treatment part to operate (see [0048]), wherein the columnar member comprises a through-hole through which the wire extends (see Figs. 8A-9C).
Manzo fails to specifically disclose, with respect to claim 1, wherein the enlarged-diameter portion has a tapered shape in which a diameter of the enlarged-diameter portion decreases from an end adjacent to the columnar member toward an end adjacent to the pipe, although Mando does disclose with respect to claim 3 wherein a diameter of the enlarged-diameter portion at the end adjacent to the pipe is smaller than a diameter of the pipe (see Figs. 5A-C and [0042]). Manzo teaches that the enlarged-diameter portion is a stop shoulder (see [0042]). Surti discloses (see Figs. 3/6, [0021], [0024], [0030]) the known use in the field of surgery of a stop shoulder (40) comprising an enlarged-diameter portion having a tapered shape (48) in which a diameter of the enlarged diameter portion decreases (see Figs. 3/6) which acts to limit the further movement of a sleeve (24) by abutting the proximal end surface of the sleeve (see [0030]). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention, as a matter of combining prior art elements according to known method to yield predictable results (see KSR International Co. v. Teleflex Inc., 550 U.S. 398,82 USPQ2d 1385,1395- 97(2007)), to obtain the predictable result of a tapered stop shoulder instead of a straight stop shoulder, since Manzo teaches a straight stop shoulder which functions to abut the proximal end of cover 38 and prevent further proximal movement thereof (see [0042]), and Surti discloses a tapered stop shoulder which functions to abut the proximal end of the sleeve 24 to prevent further proximal movement thereof (see [0030]), and therefore it would have been predictable to one of ordinary skill in the art to use a tapered stop shoulder instead of a straight stop shoulder since they both provide the same predictable function of abutting a proximal end of a sleeve/cover to prevent further proximal movement thereof.
With respect to the limitation “such that a contact position of a trocar is shifted from the end face of the cover toward the distal end part”, this limitation is a functional limitation and thus provides little patentable weight because the trocar is not positively recited as an element of the claimed forceps device and thus any interaction between an external trocar and the Manzo/Surti device is possible absent some specific teaching or suggestion that such interaction is not feasible – a user is fully capable of contacting the Manzo/Surti device with a trocar towards the distal end part by virtue of the tapered enlarged-diameter portion urging the trocar towards the distal end part if one desired to do so - note that this limitation is merely a functional limitation and does not affect the structure of the claimed invention - a claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987) - see also MPEP 2114(II), which states that the manner of operating a device does not differentiate apparatus claims from the prior art).
Regarding claim 7, Manzo discloses (see abstract; Figs. 1-9C; and [0029]-[0060]) a forceps device (see Figs. 4-6C) comprising: a distal end part (Figs. 5A-B) including a treatment part (28) for treating an object; a base cap (29, including 29B, see Fig. 5A/6B) connected proximally to the distal end part (see [0038]); a pipe (23) connected proximally to the base cap (see [0038]-[0041] and Figs. 5A-6C); a cover (38) that covers the distal end part and the base cap and has an end face at a proximal end of the base cap (see Figs. 5A-C and [0042]); and an enlarged-diameter portion (stop shoulder 56) having a diameter that is larger than a diameter of the end face of the cover (see Figs. 5A-C and [0042]).
Manzo further discloses (claim 10) wherein the enlarged-diameter portion is provided at the pipe (see Figs. 5A-C and [0042]); (claim 11) wherein the diameter of the enlarged-diameter portion is smaller than an inner diameter of a trocar into which the forceps device is configured to be inserted (inserting into a trocar is an intended use recitation, however, if the forceps device is inserted into a trocar, the diameter of the enlarged-diameter portion would have to be smaller than the inner diameter of the trocar for the device to actually be inserted into the trocar); (claim 12) a wire (68) connected to the treatment part (see [0048]), wherein the base cap comprises a through-hole through which the wire extends (see Figs. 8A-9C).
Manzo fails to specifically disclose, with respect to claim 7, wherein the enlarged-diameter portion has a tapered shape in which the diameter of the enlarged-diameter portion decreases from an end of the enlarged-diameter portion that is adjacent to the base cap toward an end of the enlarged-diameter portion that is adjacent to the pipe, although Mando does disclose with respect to claim 9 wherein the diameter of the enlarged-diameter portion at the end of the enlarged-diameter portion that is adjacent to the pipe is smaller than a diameter of the pipe (see Figs. 5A-C and [0042]). Manzo teaches that the enlarged-diameter portion is a stop shoulder (see [0042]). Surti discloses (see Figs. 3/6, [0021], [0024], [0030]) the known use in the field of surgery of a stop shoulder (40) comprising an enlarged-diameter portion having a tapered shape (48) in which a diameter of the enlarged diameter portion decreases (see Figs. 3/6) which acts to limit the further movement of a sleeve (24) by abutting the proximal end surface of the sleeve (see [0030]). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention, as a matter of combining prior art elements according to known method to yield predictable results (see KSR International Co. v. Teleflex Inc., 550 U.S. 398,82 USPQ2d 1385,1395- 97(2007)), to obtain the predictable result of a tapered stop shoulder instead of a straight stop shoulder, since Manzo teaches a straight stop shoulder which functions to abut the proximal end of cover 38 and prevent further proximal movement thereof (see [0042]), and Surti discloses a tapered stop shoulder which functions to abut the proximal end of the sleeve 24 to prevent further proximal movement thereof (see [0030]), and therefore it would have been predictable to one of ordinary skill in the art to use a tapered stop shoulder instead of a straight stop shoulder since they both provide the same predictable function of abutting a proximal end of a sleeve/cover to prevent further proximal movement thereof.
With respect to the limitation “such that a contact position of a trocar is shifted from the end face of the cover toward the distal end part”, this limitation is a functional limitation and thus provides little patentable weight because the trocar is not positively recited as an element of the claimed forceps device and thus any interaction between an external trocar and the Manzo/Surti device is possible absent some specific teaching or suggestion that such interaction is not feasible – a user is fully capable of contacting the Manzo/Surti device with a trocar towards the distal end part by virtue of the tapered enlarged-diameter portion urging the trocar towards the distal end part if one desired to do so - note that this limitation is merely a functional limitation and does not affect the structure of the claimed invention - a claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987) - see also MPEP 2114(II), which states that the manner of operating a device does not differentiate apparatus claims from the prior art).
Regarding claim 13, Manzo discloses (see abstract; Figs. 1-9C; and [0029]-[0060]) a forceps device (see Figs. 4-6C) comprising: a distal end part (Figs. 5A-B) including a treatment part (28) for treating an object; a base cap (29, including 29B, see Fig. 5A/6B) connected proximally to the distal end part (see [0038]); a pipe (23) connected proximally to the base cap (see [0038]-[0041] and Figs. 5A-6C); a cover (38) that covers the distal end part and the base cap and has an end face at a proximal end of the base cap (see Figs. 5A-C and [0042]); and a hood (stop shoulder 56) having a diameter that is larger than a diameter of the end face of the cover (see Figs. 5A-C and [0042]).
Manzo further discloses (claim 16) wherein the is mounted at the pipe (see Figs. 5A-C and [0042]); (claim 17) wherein the diameter of the hood is smaller than an inner diameter of a trocar into which the forceps device is configured to be inserted (inserting into a trocar is an intended use recitation, however, if the forceps device is inserted into a trocar, the diameter of the hood would have to be smaller than the inner diameter of the trocar for the device to actually be inserted into the trocar).
Manzo fails to specifically disclose, with respect to claim 13, wherein the hood has a tapered shape in which a diameter of the hood decreases from a first end of the hood that is adjacent to the base cap toward a second end of the hood that is adjacent to the pipe, although Mando does disclose with respect to claim 15 wherein a diameter of hood at the second end is smaller than a diameter of the pipe (see Figs. 5A-C and [0042]). Manzo teaches that the enlarged-diameter portion is a stop shoulder (see [0042]). Surti discloses (see Figs. 3/6, [0021], [0024], [0030]) the known use in the field of surgery of a stop shoulder (40) comprising an enlarged-diameter portion having a tapered shape (48) in which a diameter of the enlarged diameter portion decreases (see Figs. 3/6) which acts to limit the further movement of a sleeve (24) by abutting the proximal end surface of the sleeve (see [0030]). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention, as a matter of combining prior art elements according to known method to yield predictable results (see KSR International Co. v. Teleflex Inc., 550 U.S. 398,82 USPQ2d 1385,1395- 97(2007)), to obtain the predictable result of a tapered stop shoulder instead of a straight stop shoulder, since Manzo teaches a straight stop shoulder which functions to abut the proximal end of cover 38 and prevent further proximal movement thereof (see [0042]), and Surti discloses a tapered stop shoulder which functions to abut the proximal end of the sleeve 24 to prevent further proximal movement thereof (see [0030]), and therefore it would have been predictable to one of ordinary skill in the art to use a tapered stop shoulder instead of a straight stop shoulder since they both provide the same predictable function of abutting a proximal end of a sleeve/cover to prevent further proximal movement thereof.
With respect to the limitation “such that a contact position of a trocar is shifted from the end face of the cover toward the distal end part”, this limitation is a functional limitation and thus provides little patentable weight because the trocar is not positively recited as an element of the claimed forceps device and thus any interaction between an external trocar and the Manzo/Surti device is possible absent some specific teaching or suggestion that such interaction is not feasible – a user is fully capable of contacting the Manzo/Surti device with a trocar towards the distal end part by virtue of the tapered enlarged-diameter portion urging the trocar towards the distal end part if one desired to do so - note that this limitation is merely a functional limitation and does not affect the structure of the claimed invention - a claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987) - see also MPEP 2114(II), which states that the manner of operating a device does not differentiate apparatus claims from the prior art).
Response to Arguments
Applicant's arguments filed 04/16/2026 with respect to the claims as amended have been fully considered but they are not persuasive. In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., the tapered shape of the enlarged-diameter portion occurs with the taper starting at the columnar member terminal end and tapers along the entire length of the enlarged-diameter portion to the pipe terminal end) are not recited in the rejected claim(s). 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). The claims only require that there is a tapered shape such that the diameter decreases in the direction towards the end adjacent to the pipe – the claim does not require that the entire length of the enlarged-diameter portion has a tapered shape such that the diameter at any point along the length of the enlarged-diameter portion is different than at any other point along the length because the entire enlarged-diameter portion tapers along its whole length.
Second, as set forth above, with respect to the limitation “such that a contact position of a trocar is shifted from the end face of the cover toward the distal end part”, this limitation is a functional limitation and thus provides little patentable weight because the trocar is not positively recited as an element of the claimed forceps device and thus any interaction between an external trocar and the Manzo/Surti device is possible absent some specific teaching or suggestion that such interaction is not feasible – a user is fully capable of contacting the Manzo/Surti device with a trocar towards the distal end part by virtue of the tapered enlarged-diameter portion urging the trocar towards the distal end part if one desired to do so - note that this limitation is merely a functional limitation and does not affect the structure of the claimed invention - a claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987) - see also MPEP 2114(II), which states that the manner of operating a device does not differentiate apparatus claims from the prior art). Accordingly, Applicant’s arguments are not persuasive and the claims stand rejected.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHAUN L DAVID whose telephone number is (571)270-5263. The examiner can normally be reached M-F 10AM-6:30PM.
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/SHAUN L DAVID/Primary Examiner, Art Unit 3771
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