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
Claims 5-6, 20-21 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 6/18/2026.
Applicant’s election without traverse of species A in the reply filed on 6/18/2026 is acknowledged.
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, 7-19 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kozak (US 20080041195 A9; 2/21/2008; cited in IDS).
Regarding claim 1, Kozak teaches a surgical instrument driver, comprising:
a non-magnetic body having a proximal end and a distal end with a distal-facing recess configured to receive a portion of a surgical instrument, the recess including a surface configured to contact the portion of the surgical instrument disposed in the recess to impart torque thereto (Fig. 1-2; [0050]);
and a magnet disposed within the body such that the magnet is configured to extend proximal to a proximal end of a surgical instrument disposed within the recess and radially outward beyond the proximal end of the surgical instrument disposed within the recess (Fig. 1-3b).
Note that while Kozak does not explicitly teach surgical instrument this is an intended use; for the purposes of examination, Applicant is reminded that this is a product claim. Intended use/functional language does not require that reference specifically teach the intended use of the element. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. Kozak’s structure/device is capable of being used as a surgical instrument.
Regarding claim 2, Kozak teaches wherein the magnet is a cylindrical magnet and a central axis of the cylindrical magnet is substantially perpendicular to a central longitudinal axis of the body (Fig. 2-3c).
Regarding claim 3, Kozak teaches wherein the magnet is magnetized such that a radially inward portion of the magnet relative to a central longitudinal axis of the body has a first polarity and a radially outward portion of the magnet relative to the central longitudinal axis of the body has a second polarity opposite the first polarity (Fig. 2-3c; [0044]).
Regarding claim 4, Kozak teaches wherein the magnet is disposed such that a distal portion of the magnet relative to the central longitudinal axis of the body is distal to the proximal end of the surgical instrument disposed within the recess and a proximal portion of the magnet relative to the central longitudinal axis of the body is proximal to the proximal end of the surgical instrument disposed within the recess (interpreted in light of instant Fig. 8; Kozak Fig. 2-3c; [0038]).
Regarding claim 7, Kozak teaches wherein the body includes a central lumen extending from the proximal end of the body to the recess (Fig. 1-3c).
Regarding claim 8, Kozak teaches wherein the magnet is disposed outside the central lumen (Fig. 1-3c).
Regarding claim 9, Kozak teaches wherein the magnet further comprises a plurality of magnets (Fig. 1-3c).
Regarding claim 10, Kozak teaches wherein the plurality of magnets further comprises three magnets (Fig. 3c).
Regarding claim 11, Kozak teaches wherein the plurality of magnets are disposed around a circumference of the body (Fig. 1-3c).
Regarding claim 12, Kozak teaches wherein an outer surface of the body includes a feature to facilitate a user gripping the body (Fig. 1-2; Fig. 3c; [0029]; [0035]).
Regarding claim 13, Kozak teaches wherein the surface of the recess is substantially planar (Fig. 2-3c; [0031] “hexagonal…octagonal shaped cross section”).
Regarding claim 14, Kozak teaches wherein the recess is substantially hexagonal with a plurality of substantially planar surfaces forming a circumference thereof (Fig. 2-3c; [0031] “hexagonal channel…shaped cross section”).
Regarding claim 15, Kozak teaches a surgical instrument driver, comprising:
a modular handle body with a recess at a distal end of the body, the recess extending through a portion of a length of the body and configured to engage with a proximal end of a surgical instrument (Fig. 1-3c); and
a plurality of cylindrical magnets fixed within the body and configured to produce a magnetic field that urges a portion of the surgical instrument into the opening (Fig. 1-3c).
Note that while Kozak does not explicitly teach surgical instrument this is an intended use; for the purposes of examination, Applicant is reminded that this is a product claim. Intended use/functional language does not require that reference specifically teach the intended use of the element. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. Kozak’s structure/device is capable of being used as a surgical instrument.
Regarding claim 16, Kozak teaches wherein each magnet is fixed within a bore formed in a distal portion of the modular handle body to locate the magnet in radially spaced-apart relation to a central longitudinal axis of the modular handle body (Fig. 2-3c; [0044]).
Regarding claim 17, Kozak teaches wherein the recess includes a hex shaped portion at a distal end thereof (Fig. 2-3c; [0031] “hexagonal channel…shaped cross section”).
Regarding claim 18, Kozak teaches wherein the plurality of cylindrical magnets are magnetized axially such that a first circular surface of each magnet contains a magnetic charge opposing the charge of an opposing second circular surface of each magnet (Fig. 2-3c; [0038]; [0044]).
Regarding claim 19, Kozak teaches wherein a portion of the plurality of cylindrical magnets overlap the hex shaped portion of the recess along a central longitudinal axis of the modular handle body (Fig. 2-3c; [0031]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jonathan T Kuo whose telephone number is (408)918-7534. The examiner can normally be reached M-F 10 a.m. - 6 p.m. PT.
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/JONATHAN T KUO/Primary Examiner, Art Unit 3792
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