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 Interpretation
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.
No claim limitation has been interpreted under 35 U.S.C. 112(f) because each term connotes sufficient structure to a POSITA. See MPEP § 2181. If applicant contends otherwise, please point to supporting disclosure.
Election/Restrictions
Applicant’s election without traverse of Group I (claims 1-9) in the reply filed on 5 March 2026 is acknowledged.
Claim(s) 10-19 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected group, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 5 March 2026.
The requirement is still deemed proper and is therefore made FINAL.
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.
Claim(s) 1-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kese et al. (US 6,024,744, “Kese”) in view of Denslow (US 2006/0067806A1).
Regarding claim 1, Kese discloses a surgical tool including a plurality of arms (12, 14; Fig. 6; C10:L5-21), wherein each of the plurality of arms defines an aperture. The aperture is the opening/hole through which a rivet, pin or screw extends (24; C7:L3-20). The elongate pin (24) extending through the aperture of each of the plurality of arms. However, Kese does not disclose that the elongate pin has an end stop at a first end of the elongate pin, the end stop being adjacent to the aperture of a first arm of the plurality of arms, and an end portion at a second end of the elongate pin, the end portion extending beyond a second arm of the plurality of arms, a bearing plate mounted on said end portion of the pin directly adjacent to the aperture of the second arm, the bearing plate being configured to rotate freely relative to the second arm, wherein the end portion comprises a deformed region, which is deformed such that the pin forms an interference fit with the bearing plate, thereby pivotally mounting the plurality of arms relative to each other such that at least one of the plurality of arms can freely rotate about the elongate pin.
In the same field of endeavor, fasteners, Denslow teaches an elongate fastener/pin in the form of a rivet that extends through openings in a first body (12; Fig. 2; [0028]) and a second body (14). The elongate fastener has an end stop (16) at a first end of the elongate fastener. The end stop is adjacent to the aperture of a first body. An end portion (30) at a second end of the elongate fastener extends beyond a second body. A bearing plate (40; [0031]; Fig. 2) is mounted on the end portion of the fastener directly adjacent to the aperture of the second body. The end portion includes a deformed region (40; Fig. 2C; [0034]) which is deformed such that the fastener forms an interference fit with the bearing plate. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have substituted the fastener of Kese with the fastener and bearing plate, as taught by Denslow, as this modification involves the simple substitution of one means for fastening with another for the predictable result of providing means at a point of intersection for pivoting the arms between an open and closed position. With this modification, the bearing plate is capable of rotating freely relative to the second arm, thereby pivotally mounting the plurality of arms relative to each other such that at least one of the plurality of arms can freely rotate about the elongate pin.
Regarding claim 2, the combination of Kese and Denslow discloses that at least two of the plurality of arms can freely rotate about the elongate pin (C7:L2-7; Kese).
Regarding claim 3, the combination of Kese and Denslow discloses that the bearing plate defines at least one surface formation that is capable of receiving and engaging with the deformed region of the end portion of the pin (Fig. 2C; [0034]; Denslow).
Regarding claim 4, the combination of Kese and Denslow discloses that the deformed region is formed by ultrasonic staking [0036; Denslow].
Regarding claims 5 and 7, the combination of Kese and Denslow discloses that the elongate pin of the is formed of synthetic polymer, e.g. glass-filled polymer (C7:L50-55; Kese, PEEK; [0048]; Denslow).
Regarding claim 6, the combination of Kese and Denslow discloses that the deformed region is formed of thermally reshaped polymer, e.g. ultrasonic staking [0036; Denslow].
Regarding claim 8, the combination of Kese and Denslow discloses that the proximal ends of the each of the plurality of arms together define a handle (114, 116; Fig. 6; C10:L16-21) and distal ends of each of the plurality of arms together define a manipulation portion that is capable of being used in manipulating a tissue of a body (C10:L5-15; Fig. 6; Kese).
Regarding claim 9, the combination of Kese and Denslow discloses that the surgical tool is a scissors (C9:L60-67, C10:L1-3, 62-65; Kese).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Salvador et al. (US 2008/0230948A1) discloses a pin disposed between first and second arms, a bearing plate and a heat staking process.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOCELIN C TANNER whose telephone number is (571)270-5202. The examiner can normally be reached M-F 8am-4pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jackie Ho can be reached at (571)272-4696. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOCELIN C TANNER/Primary Examiner, Art Unit 3771
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