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
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 1-11, 19, 20, drawn to a surgical apparatus, classified in A61B1/05.
II. Claims 12-19, drawn to a method for passing a suture, classified in A61B17/0469.
The inventions are independent or distinct, each from the other because:
Inventions I) and II) are related as process and apparatus for its practice. The inventions are distinct if it can be shown that either: (1) the process as claimed can be practiced by another and materially different apparatus or by hand, or (2) the apparatus as claimed can be used to practice another and materially different process. (MPEP § 806.05(e)). In this case the apparatus can be used for visualizing a body cavity, while also the method can be practiced by a device where the camera is located on an arm of the device separate from the jaw.
Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply:
the inventions have acquired a separate status in the art in view of their different classification.
the inventions have acquired a separate status in the art due to their recognized divergent subject matter.
the inventions require a different field of search (e.g., searching different classes /subclasses or electronic resources, or employing different search strategies or search queries), specifically, the method claims require searching for specific processes and procedures which may not be explicitly disclosed or depicted in a result set from a structural search. Conversely, the search for a particular structure may not disclose the specific step or procedure claim required in the method claims, potentially requiring a different search strategy.
Applicant is advised that the reply to this requirement to be complete must include (i) an election of an invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
During a telephone conversation with Daniel Hoovler on 3/3/2026 a provisional election was made without traverse to prosecute the invention of I), claims 1-11, 19, 20. Affirmation of this election must be made by applicant in replying to this Office action. Claims 12-18 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
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.
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:
“actuator assembly” in claim 8.
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 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.
Claim(s) 1-8, 11, 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over LaPrade US20180280018 and further in view of Gerrah US20100198241.
LaPrade discloses for claim 1, “A surgical apparatus comprising:
an elongated probe (shaft 12; fig 1A; 0021) comprising a distal jaw (lower and upper jaw arm 14, 16) and a proximal handle portion (0021 describes handle from where the shaft 12 extends)”.
LaPrade does not disclose “an imaging device in connection with a portion of the elongated probe proximate to the distal jaw, wherein the imaging device comprises a camera configured to capture image data depicting a grasping path of the distal jaw”. Gerrah teaches in the same field of endeavor, providing a camera for real time depiction of a surgical procedure 0018. Specifically, 0074 describes locating the camera on an inferior or superior jaw arm with special consideration of locating the camera such that the functionality of the arms is not significantly reduced. The device Gerrah discloses is relevant as it is also a surgical instrument performing intricate procedures in confined spaces with a body cavity, where a camera and direct real time depiction provides significant advantages to procedures lacking such imaging. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to incorporate the modification of Gerrah into the invention of LaPrade in order to configure the surgical apparatus e.g. as claimed, specifically placing a camera on an under surface of the lower jaw and proximal of the jaw distal end because it allow direct real time viewing of the surgical procedure 0018.
LaPrade discloses for claim 2, “The surgical apparatus according to claim 1, wherein the distal jaw forms inner grasping surfaces and outer jaw surfaces opposite the inner grasping surfaces (fig 1A-D)”.
Modified LaPrade discloses for claim 3, “The surgical apparatus according to claim 2, wherein the imaging device is in connection with one of the outer jaw surfaces (Gerrah: 0074 describes locating the camera on a lower jaw on a surface that does not interfere with the functionality, e.g. an outer jaw surface)”.
Modified LaPrade discloses for claim 4, “The surgical apparatus according to claim 3, wherein the distal jaw is formed by a fixed jaw in connection with a mandible jaw, and the imaging device is in connection with the elongated probe on the outer jaw surface proximate to the fixed jaw (Gerrah: 0074 describes locating the camera on a lower jaw on a surface that does not interfere with the functionality, e.g. an outer jaw surface)”.
Modified LaPrade discloses for claim 5, “The surgical apparatus according to claim 2, wherein the outer jaw surfaces form a dorsal surface from which the mandible jaw extends and a ventral surface forming the fixed jaw, wherein the imaging device is in connection with the ventral surface (Gerrah: 0074 describes locating the camera on a lower jaw on a surface that does not interfere with the functionality, e.g. an outer jaw surface)”.
LaPrade discloses for claim 6, “The surgical apparatus according to claim 2, further comprising: a retractable needle (needle 18; fig 1A-C; 0021) selectively extended from one of the inner grasping surface of the distal jaw (needle 18; fig 1A-C; 0023 describes actuators to extend/retract the needle)”.
LaPrade discloses for claim 7, “The surgical apparatus according to claim 6, wherein the retractable needle is configured to pass a suture across opposing sides of the distal jaw (fig 1B; 0024 describes the suture procedure)”.
LaPrade discloses for claim 8, “The surgical apparatus according to claim 6, wherein the retractable needle is selectively deployed via an actuator assembly in connection with the proximal handle portion (0023 describes actuators to extend/retract the needle)”.
Modified LaPrade discloses for claim 11, “The surgical apparatus according to claim 1, wherein the imaging device captures image data in a field of view distally directed from the elongated probe (Gerrah: camera for real time depiction of a surgical procedure 0018)”.
LaPrade discloses for claim 19, “A surgical apparatus comprising:
an elongated probe (shaft 12; fig 1A; 0021) comprising a distal jaw (lower and upper jaw arm 14, 16) and a proximal handle portion (0021 describes handle from where the shaft 12 extends), wherein the distal jaw forms inner grasping surfaces and outer jaw surfaces opposite the inner grasping surfaces and the outer jaw surfaces form a dorsal surface from which the mandible jaw extends and a ventral surface forming the fixed jaw (fig 1A-D); and
an imaging device (Gerrah: 0074 describes locating the camera on an inferior or superior jaw arm with special consideration of locating the camera such that the functionality of the arms is not significantly reduced) in connection with a portion of the elongated probe proximate to the distal jaw, wherein the imaging device comprises a camera configured to capture image data depicting a grasping path of the distal jaw (Gerrah: 0018 describes a camera for real time depiction of a surgical procedure 0018), wherein the imaging device is in connection with the ventral surface (Gerrah: 0074)”.
Claim(s) 9, 10, 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Laprade and Gerrah as applied to claim 6 above, and further in view of Shelton, IV US20230049736.
LaPrade does not disclose for claim 9, “The surgical apparatus according to claim 6, further comprising: a marker positioned on one of the outer jaw surfaces in alignment with the retractable needle. Shelton teaches in the same field of endeavor, providing markers (markers 305; fig 13; 0077) on the external surface of a surgical jaw tool in order to help locate the position of the surgical procedure (fig 13; 0077, 0086), including needle drivers (0001). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to incorporate the modification of Shelton into the invention of LaPrade in order to configure the surgical apparatus e.g. as claimed because it helps to locate the position of the surgical procedure, including needle drivers (0001, 0086).
Modified LaPrade discloses for claim 10, “The surgical apparatus according to claim 9, wherein the marker is positioned on the outer jaw surface within the field of view demonstrating the marker and indicating a needle position of the retractable needle on the inner grasping surface opposite the outer jaw surface (Gerrah: a camera for real time depiction of a surgical procedure 0018. Specifically, 0074 describes locating the camera on an inferior or superior jaw arm with special consideration of locating the camera such that the functionality of the arms is not significantly reduced)”.
LaPrade discloses for claim 20, “The surgical apparatus according to claim 19, further comprising:
a retractable needle (needle 18; fig 1A-C; 0021) selectively extended from one of the inner grasping surface of the distal jaw”.
LaPrade does not disclose “a marker positioned on one of the outer jaw surfaces in alignment with the retractable needle”. Shelton teaches in the same field of endeavor, providing markers (markers 305; fig 13; 0077) on the external surface of a surgical jaw tool in order to help locate the position of the surgical procedure (fig 13; 0077, 0086), including needle drivers (0001). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to incorporate the modification of Shelton into the invention of LaPrade in order to configure the surgical apparatus e.g. as claimed because it helps to locate the position of the surgical procedure, including needle drivers (0001, 0086).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See PTO892.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAE K WOO whose telephone number is (571)272-0837. The examiner can normally be reached M-F 8:30-2:30p, 6p-9p.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Anhtuan Nguyen can be reached at (571) 272-4963. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Jae Woo/Examiner, Art Unit 3795
/ANHTUAN T NGUYEN/Supervisory Patent Examiner, Art Unit 3795
6/12/26
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