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 .
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they include the following reference character(s) not mentioned in the description: 1401, Fig. 1. Corrected drawing sheets in compliance with 37 CFR 1.121(d), or amendment to the specification to add the reference character(s) in the description in compliance with 37 CFR 1.121(b) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Objections
Claim 1 is objected to because of the following informalities: In Line 5, the words “rather than” should be replaced with the words --apart from--. In Line 9, the words --at least-- should be added before the words “one direction”. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 at Lines 1-2 recites “a jaw configured to accommodate at least one region of an operation member that is movable in at least one direction;”, at Line 4 recite “a reciprocating moving part spaced apart from the operation member,” and at Lines 7-9 recites “and a plurality of transmission gears configured to receive a driving force of a linear motion of the reciprocating moving part, perform a rotational motion, and transmit the driving force to the operation member so that the operation member is moved in the one direction.” The Applicant is required to clarify to what the claim is intended to be drawn to, i.e., either the subcombination of the end tool as recited in the preamble, or the combination of the end tool and the operation member. The Applicant sets forth the combination of the end tool and the operation member when stating that the reciprocating moving part is spaced apart from the operation member and the operation member is moved in one direction based on a driving force transmitted there to, which is inconsistent with the preamble that sets forth the subcombination of the end tool with the operation member only functionally recited as being accommodated by the jaw. Applicant is required to make the language of the claims consistent with the intent of the claims. It should also be noted that in considering the claims on the merits, the Examiner will consider the claims as drawn to the combination where the operation member is positively recited. If this is what the Applicant intends to recite, the operation member should be amended to be positively recited in the claim as a separate structural feature from the jaw. Appropriate correction is required.
Claim 3 at Line 5 recites the limitation “the driving gear” which renders the claim indefinite as it is unclear which driving dear is being recited since Claim 1 previously recites “at least one driving gear”. For purposes of examination, the limitation is being interpreted as “the at least one driving gear”. Appropriate correction is required.
Claim 4 at Lines 1-3 recites “a rotational force is transmitted to the one transmission gear connected to the at least one driving gear and the plurality of transmission gears sequentially disposed,” which renders the claim indefinite as there is insufficient antecedent basis for “the one transmission gear connected to the at least one driving gear” and “the plurality of transmission gears sequentially disposed”. Furthermore, it is not clear if the claim is intending to clarify that the plurality of transmission gears are sequentially disposed or something else. Appropriate correction is required.
Claim 11 at Lines 1-2 recites the limitation “wherein the jaw comprises a first jaw and a second jaw facing each other and configured to perform an open motion and a close motion,” which renders the claim indefinite as it is unclear if the claim is intending to recite that the jaw itself further includes a first and second jaw, or intending to clarify that the end tool comprises a first and second jaw. It appears that the Applicant is intending to recite that the end tool further comprises a second jaw, and for purposes of examination, the claim is being interpreted as follows: “further comprising a second jaw facing the first jaw and configured to perform an open motion and a close motion, wherein the first jaw comprises an accommodation part configured to accommodate a plurality of staples, and the rack member is disposed in a region opposite to a surface of the first jaw on which the accommodation part is formed.”. Appropriate correction is required.
Claim limitation “Operation member” (Claim 1) has been evaluated under the three-prong test set forth in MPEP § 2181, subsection I, but the result is inconclusive. Thus, it is unclear whether this limitation should be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the generic placeholder is modified by a word, which is ambiguous regarding whether it conveys structure or function. The boundaries of this claim limitation are ambiguous; therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
In response to this rejection, applicant must clarify whether this limitation should be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. Mere assertion regarding applicant’s intent to invoke or not invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph is insufficient. Applicant may:
(a) Amend the claim to clearly invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, by reciting “means” or a generic placeholder for means, or by reciting “step.” The “means,” generic placeholder, or “step” must be modified by functional language, and must not be modified by sufficient structure, material, or acts for performing the claimed function;
(b) Present a sufficient showing that 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, should apply because the claim limitation recites a function to be performed and does not recite sufficient structure, material, or acts to perform that function;
(c) Amend the claim to clearly avoid invoking 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, by deleting the function or by reciting sufficient structure, material or acts to perform the recited function; or
(d) Present a sufficient showing that 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, does not apply because the limitation does not recite a function or does recite a function along with sufficient structure, material or acts to perform that function.
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) 1-3 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Shelton, IV et al. (US PG Pub No. 2011/0290853).
Regarding Claims 1-3 as best understood, Shelton IV et al. discloses an end tool (5000, Figs. 99-105, Paragraphs [0295-0306]) comprising: a jaw (5070) accommodating at least one region of an operation member (5030) that is movable in at least one direction (distally toward free end of 5000 as depicted by arrow DD in Fig. 99); a reciprocating moving part (5130/5160, Fig. 102) spaced apart from the operation member (Paragraph [0296], disposed on a proximal end side (rear end of 5070) of the jaw (Fig. 100) apart from the operation member (Fig. 101), and configured to receive a driving force (via 5207) from a separate driving part (5172, Paragraphs [0303-0304]) and perform at least a linear reciprocating motion (as 5130/5160 is rotated clockwise or counterclockwise, it is translated back and forth along the long. axis of 5000); and a plurality of transmission gears (driven gears 5174, 5176, Fig. 99, Paragraph [0303]) configured to receive a driving force of a linear motion of the reciprocating moving part (via rotary drive bar 5160), perform a rotational motion, and transmit the driving force to the operation member so that the operation member is moved in the one direction (Paragraphs [0303-0306]); further comprising at least one driving gear (5138, Fig. 99) comprising a plurality of teeth (Fig. 99) and configured to come into contact with a region of the reciprocating moving part (the proximal end region of 5130), perform a rotational motion by the reciprocating moving part, and transmit the rotational motion to one transmission gear among the plurality of transmission gears (Paragraphs [0303-0306]); wherein the reciprocating moving part comprises a main body (shaft of 5130) and at least one contact part (proximal end 5137, Fig. 99) extending from the main body in a direction toward the operation member (distal portion of 5137 faces 5030), and the at least one contact part is configured to come into contact (@ 5160, Fig 99) with the at least one driving gear and transmit a force so that the driving gear is rotated (Paragraph [0303-0306]).
Allowable Subject Matter
Claims 4-20 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: Shelton IV et al. discloses the claimed invention as stated above, except wherein, when the at least one driving gear is rotated, a rotational force is transmitted to the one transmission gear connected to the at least one driving gear and the plurality of transmission gears sequentially disposed, so that the plurality of transmission gears are rotated, wherein the at least one contact part of the reciprocating moving part comprises a first contact part and a second contact part that extend from the main body, are spaced apart from each other, and have different lengths, wherein a rack member is disposed in at least one region of the jaw, the rack member is configured to engage with the plurality of transmission gears, the rack member is configured to be moved forward and backward by a driving force of the plurality of transmission gears, and the operation member is configured to be moved by the rack member, and a driving gear comprising a concavo-convex portion having a plurality of teeth on an outer circumferential surface thereof and a non-formation area which is adjacent to the concavo-convex portion and in which teeth are not formed, the driving gear being in contact with one region of the reciprocating moving part and being configured to perform a rotation motion by the reciprocating moving part and transmit the rotation motion to one transmission gear among the plurality of transmission gears. Furthermore, there is no reason to modify Shelton, IV with the claimed features without destroying the invention.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JESSICA WEISS whose telephone number is (571) 270-5597. The examiner can normally be reached Monday through Friday, 8:00 am to 4:00 pm EST. If attempts to reach the examiner by telephone are unsuccessful, please contact the examiner’s supervisor, KEVIN T. TRUONG, at 571-272-4705. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JESSICA WEISS/Primary Examiner, Art Unit 3775
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