DETAILED ACTION
The following Office Action is in response to the Response to Restriction filed on February 11, 2026. Claims 14-26 are currently pending.
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 .
Election/Restrictions
Applicant’s election of Group I in the reply filed on February 11, 2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 27-37 were cancelled. Election was made without traverse in the reply filed on February 11, 2026.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “locking mechanism” in claim 14. The locking mechanism is disclosed as having several different structures as shown in Figures 3A-14 with descriptions of each structure disclosed in the Specification.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Objections
Claims 15, 24, and 26 are objected to because of the following informalities:
Concerning claim 15, lines 2-3 of the claim recites the phrase “a locking member configured to be into the recess”, wherein a phrase appears to be missing a word between “configured to be” and “into the recess”. For the purposes of compact prosecution, the phrase will be interpreted as reading “configured to be placed into the recess”.
Concerning claim 24, lines 5-7 of the claim recites the phrase “being compressible to a reduced diameter configuration in which the first compressible member is substantially pressed against an outer surface of the first extending member to an expanded configuration”, which essentially says “compressible to a reduced diameter configuration to an expanded configuration”, wherein it should read “from an expanded configuration”.
Concerning claim 26, lines 2-3 of the claim recites the phrase “to move the first gripping member proximally within the second tapered opening forces the radially inner surface”, wherein there appears to be the word “and” missing between “the second tapered opening” and “forces”.
Appropriate correction is required.
Claim Rejections - 35 USC § 102
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) 14-16 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Saenz Villalobos et al. (US 2023/0277194, hereinafter Saenz Villalobos).
Concerning claim 14, the Saenz Villalobos et al. prior art reference teaches a system for clipping tissue (Figures 1-17; 100), comprising: an adapter (Figure 1; 110) including a proximal portion (Figure 2; 153) configured to be mounted over a distal end of an insertion device (Figure 2; 106) and a distal portion extending distally from the proximal portion (Figure 2; 155); a clip configured to be mounted over the distal portion of the adapter (Figure 1; 102), the clip including first and second jaws (Figure 1; 114) configured to move between an insertion configuration, in which the first and second jaws extend about the adapter and are separated from one another to receive tissue therebetween ([¶ 0017]), and an initial deployed configuration, in which the clip is moved distally off of the adapter so that the first and second jaws are drawn toward one another to grip tissue received therebetween ([¶ 0017]); a first extending member releasably coupled to the clip and movably connected to the adapter (Figure 1; extending member = inner sheath 122| [¶ 0054]), the extending member extending from a proximal portion configured to remain, in an operative configuration, outside a patient’s body to a distal portion configured to be coupled to a distal end of the insertion device ([¶ 0019]); a first control wire slidably received within the first extending member (Figure 1; control wire = extending member 112) and extending to a distal end releasably coupled to the clip via a first releasable link (Figure 6; 116) being configured to release when the first control wire is subject to a force exceeding a predetermined threshold value ([¶ 0050]), and a first locking mechanism configured to selectively lock the distal portion of the first extending member against proximal movement relative to the adapter during release of the first releasable link ([¶ 0084], inner sheaths may be locked to remain stationary, therein selectively locking against all movement including proximal movement).
Concerning claim 15, the Saenz Villalobos reference teaches the system of claim 14, wherein the first extending member includes a recess (Figure 10; coil holder 182 may be interpreted as being part of the first extending member, wherein coil holder includes recess 186) and wherein the first locking mechanism includes a locking member (Figure 10; 190) configured to be pushed into the recess of the first extending member when the first extending is moved distally to a locking position (Figure 11).
Concerning claim 16, the Saenz Villalobos reference teaches the system of claim 15, wherein the first locking mechanism includes a first biasing member abutting the first locking member (Figure 14; 178), the first biasing member being biased to urge the locking member against the first extending member so that, when the first extending member is moved to the locking position, the first biasing member pushes the first locking member into the recess of the first extending member ([¶ 0087]).
Allowable Subject Matter
Claims 17-26 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The Sharma reference (US 2023/0225740) and the G et al. reference (US 2023/0181196) both teach over the scope clips that include locking mechanisms for locking extending members.
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/MARTIN T TON/Examiner, Art Unit 3771 3/4/2026