DETAILED ACTION
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.
Claim Rejections - 35 USC § 103
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 2-9, 11 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Albrecht et al U.S 2007/0213675 in view of Paolitto et al U.S Pat 6,547,725.
Claim 2: Albrecht et al disclose a cannula assembly 210 comprising: a cannula 250 having a proximal end, a distal end opposite the proximal end, and a lumen 258 extending from the proximal end to the distal end along a longitudinal axis, the lumen configured to receive a surgical instrument therein, the cannula comprising: a generally tubular cannula body 252 having an exterior surface and a first outer diameter; and an interface surface (it is noted that the area right below area 382, fig. 18 is considered an interface surface) defined in the exterior surface of the cannula body adjacent the distal end of the cannula, the interface surface having a second outer diameter smaller than the first outer diameter of the cannula body; and a sleeve 300 having a proximal end and a distal end, the sleeve disposed around the cannula 250 from adjacent the proximal end of the cannula to the interface surface, the sleeve comprising: an elongate tubular body 302; a balloon 400 positioned distal the elongate tubular body; and a bonding segment (see paragraph 60) at the distal end of the sleeve, but is silent regarding the interface surface comprising a textured surface. Paolitto et al, in the same field of endeavor, Paolitto et al teach the use of texture to enhance friction between two elements (see col. 14, lines 15-20). It would have been obvious to one having ordinary skill in the art at the time the invention was made to modify Albrecht et al with the interface surface comprising a textured surface as taught by Paolitto et al in order to enhance friction and further both with the attachment mechanism to achieve the same predictable result to enhance coupling between two elements and a simple substitution of one known element for another to obtain predictable results is obvious (MPEP 2143 A and B).
Claims 3-4: Albrecht et al disclose wherein the bonding segment is
coupled to the cannula at the interface surface of the cannula; wherein the bonding segment is coupled to the interface surface of the cannula with an adhesive (see paragraphs 60,62).
Claim 5: Albrecht et al disclose a retention disc 410 positioned proximal the balloon 400 around the elongate tubular body of the sleeve 300.
Claims 6-9, 11: Albrecht et al in view of Paolitto et al disclose the claimed invention but is silent regarding a conditioning aid removably positioned around the balloon; wherein the conditioning aid is configured to constrict the balloon into an insertion configuration; wherein the conditioning aid comprises a hollow tubular segment. , wherein the conditioning aid comprises a smooth interior surface; wherein the conditioning aid is configured to prevent proximal movement of the conditioning aid past the balloon. However, it is well known the device that including a conditioning aid removably positioned around the balloon; wherein the conditioning aid is configured to constrict the balloon into an insertion configuration; wherein the conditioning aid comprises a hollow tubular segment. , wherein the conditioning aid comprises a smooth interior surface; wherein the conditioning aid is configured to prevent proximal movement of the conditioning aid past the balloon in order to prevent the movement of the aid that past the balloon so that the Albrecht et al in view of Paolitto would too have this advantage (it is an evidence in the same field of invention-Shluzas et al U.S 2005/0075540, teach he expandable conduit 1020 is inserted into the patient and sleeve 1032 is removed, the skirt portion 1024 expands to a point where the outward resilient expansion of the skirt portion is balanced by the force of the surrounding tissue. The surgical space defined by the conduit may be sufficient to perform the surgical procedures (see fig. 33, paragraph 228) so that Albrecht et al in view of Paolitto et al would too have this advantage.
Allowable Subject Matter
Claim 10 is 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
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/VI X NGUYEN/Primary Examiner, Art Unit 3771
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