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 .
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.
Claim(s) 1, 4-6, 7, 10-12, 13, and 16-17 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2006/0079884 A1 to Manzo et al. (hereinafter “Manzo”).
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).
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).
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).
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(s) 2-3, 8-9, and 14-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Manzo in view of US 2008/0300629 A1 to Surti (hereinafter “Surti”).
Manzo fails to specifically disclose, with respect to claim 2, 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.
Manzo fails to specifically disclose, with respect to claim 8, 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.
Manzo fails to specifically disclose, with respect to claim 14, 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.
Conclusion
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