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 .
Election/Restrictions
Applicant’s election of invention I species D in the reply filed on 07/21/2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 20-21 withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention II, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 07/21/2026.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 2-7, 9, 11-16, and 18 are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Agrurre er al. (WO 2016056908 A1).
Regarding claim 2 Agrurre discloses (fig. 1-4) an apparatus, comprising:
a shaft 2 having a distal end portion and a proximal end portion and defining a longitudinal axis between the distal end portion and the proximal end portion (see fig. 1), the distal end portion of the shaft including a ground portion 8 (see fig. 1);
a first tool member 4 having a first engagement portion (portion of 4 engaging 9, see fig. 3) and a first actuation portion 6’, the first actuation portion configured to receive a first actuation force (see pg. 7 ln. 12-20);
a second tool member 5 having a second engagement portion (portion of 5 engaging 9, see fig. 3) and a second actuation portion 7’, the second actuation portion configured to receive a second actuation force (see pg. 7 ln. 12-20); and
a flexure assembly (deformable portion of 6 and 7) disposed entirely between a proximal end of the first actuation portion of the first tool member and a distal end of the first actuation portion of the first tool member (in the configuration of fig. 4 the deformable portion of 6 and 7 is entirely disposed between the proximal and distal end of 6’),
a first portion 6’ of the flexure assembly configured to deform elastically when the first actuation force is exerted on the first actuation portion of the first tool member 4 such that the first tool member 4 rotates relative to the shaft 2 (see fig. 1-4 and pg. 7 ln. 4-20), a second portion 7’ of the flexure assembly configured to deform elastically when the second actuation force is exerted on the second actuation portion of the second tool member 5 such that the second tool 5 member rotates relative to the shaft 2 (see fig. 1-4 and pg. 7 ln. 4-20).
Regarding claim 11 Agrurre discloses (fig. 1-4) an apparatus, comprising:
a shaft 2 having a distal end portion and a proximal end portion and defining a longitudinal axis between the distal end portion and the proximal end portion (see fig. 1), the distal end portion of the shaft including a ground portion 8 (see fig. 1);
a tool member 4 having an engagement portion (portion of 4 engaging 9, see fig. 3) and an actuation portion 6’, the first actuation portion configured to receive a first actuation force (see pg. 7 ln. 12-20); and
a flexure assembly (deformable portion of 6) disposed entirely between a proximal-most surface of the actuation portion and the engagement portion of the tool member (in the configuration of fig. 4 the deformable portion of 6 is entirely disposed between the proximal and distal end of 6’), a portion of the flexure assembly configured to deform elastically when the actuation force is exerted on the actuation portion of the tool member 4 such that the tool member rotates relative to the shaft 2 (see fig. 1-4 and pg. 7 ln. 4-20).
Regarding claim 12 Agrurre further discloses (fig. 1-4) the tool member 4 is a first tool member, the engagement portion is a first engagement portion, the actuation force is a first actuation force (see fig. 1), the apparatus further comprises: a second tool member 5 having a second engagement portion (portion of 5 engaging 9, see fig. 3) and a second actuation portion 7’, the second actuation portion configured to receive a second actuation force (see pg. 7 ln. 12-20), the first tool 4 member is configured to rotate relative to the second tool member 5 such that the first engagement portion and the second engagement portion together exert an engagement force on a target structure disposed between the first engagement portion and the second engagement portion (see fig. 1-4 and pg. 7 ln. 4-20).
Regarding claim 3 Agrurre further discloses (fig. 1-4) the first tool member 4 is configured to rotate relative to the second tool member 5 such that the first engagement portion and the second engagement portion together exert an engagement force on a target structure disposed between the first engagement portion and the second engagement portion (see fig. 2-3 and pg. 9 ln. 13-24).
Regarding claims 4 and 13 Agrurre further discloses (fig. 1-4) the first engagement portion includes a first engagement surface (surface of 4 engaging 9, see fig. 3); and the second engagement portion includes a second engagement surface (surface of 5 engaging 9, see fig. 3), the first engagement surface and the second engagement surface configured to together exert an engagement force on a target structure disposed between the first engagement portion and the second engagement portion (see pg. 7 ln. 4-20 and 9 ln. 13-24), a first engagement plane defined by the first engagement surface and a second engagement plane defined by the second engagement surface each intersecting a pivot axis about which the first tool member and the second tool member rotate (see annotated fig. 4 below).
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Regarding claims 5 and 14 Agrurre further discloses (fig. 1-4) the first engagement portion includes a first engagement surface (surface of 4 engaging 9, see fig. 3); and the second engagement portion includes a second engagement surface (surface of 5 engaging 9, see fig. 3), the first engagement surface and the second engagement surface configured to together exert an engagement force on a target structure disposed between the first engagement portion and the second engagement portion (see pg. 7 ln. 4-20 and 9 ln. 13-24), an angle defined by the first engagement surface and the second engagement surface when the engagement force is exerted (see fig. 4) being less than five degrees through an angular range of motion of the first tool member and the second tool member. The language, "an angle defined by the first engagement surface and the second engagement surface when the engagement force is exerted being less than five degrees through an angular range of motion of the first tool member and the second tool member" merely recites intended uses of the apparatus. The claim, however, is an apparatus claim, and is to be limited by structural limitations. The Office submits that the device of Agrurre meets the structural limitations of the claim, and is capable of having the angle defined by the first engagement surface and the second engagement surface when the engagement force is exerted be less than five degrees because the angle formed between the first and second engagement surfaces is based on the thickness of the object being grasped. An object of the correct thickness would result in an angle of less than 5 degrees, for example a very thin object would result in a small near zero angle.
Regarding claims 6 and 15 Agrurre further discloses (fig. 1-4) the angular range of motion is at least +/- 45 degrees from the longitudinal axis (the scope of +/- 45 degrees encompasses 0 degrees to 360 degrees, and an angular range of motion can be seen that is between 0 and 360 degrees; see fig. 1-4).
Regarding claims 7 and 16 Agrurre further discloses (fig. 1-4) the angular range of motion is at least +/- 75 degrees from the longitudinal axis (the scope of +/- 75 degrees encompasses 0 degrees to 360 degrees, and an angular range of motion can be seen that is between 0 and 360 degrees; see fig. 1-4).
Regarding claims 9 and 18 Agrurre further discloses (fig. 1-4) the ground portion 8 of the shaft 2 is between the first engagement portion and a proximal-most surface of the first actuation portion 6 (see fig. 1-2; a portion of 8 is positioned between the proximal end of 6 and portion of 4 engaging 9).
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.
Claims 10 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Agrurre.
Regarding claims 10 and 19, Agrurre discloses the claimed invention substantially as claimed, as set forth above for claims 2 and 11. Agrurre further discloses (fig. 1-4) the first actuation portion 6’ is configured to receive the first actuation force at a first attachment point (see annotated fig. 4 below), the first actuation portion 6’ configured such that the first attachment point is spaced apart from a pivot axis defined by the flexure assembly in a direction normal to the longitudinal axis by a moment distance (see annotated fig. 4 below).
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Agrurre is silent regarding the moment distance varying by less than ten percent through an angular range of motion of the first tool member.
However, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the device of Agrurre to have the moment distance varying by less than ten percent through an angular range of motion of the first tool member since it has been held that “where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device” Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 SPQ 232 (1984). In the instant case, the device of Agrurre would not operate differently with the claimed movement distance as the deformable portions would still be able to deform and apply pressure as intended. Further, applicant places no criticality on the range claimed, indicating simply that the movement distance “can” be within the claimed range or in a higher range (specification [0124]).
Claims 8 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Agrurre in view of Balazs (US 5,964,780).
Regarding claims 8 and 17, Agrurre discloses the claimed invention substantially as claimed, as set forth above for claims 2 and 11. Agrurre is silent regarding the first actuation portion is coupled to an actuation cable that exerts the first actuation force.
However Balazs, in the same field of endeavor, teaches (fig. 1A and 2A) a first actuation portion (52 sub 1) is coupled to an actuation cable (wire) that exerts the first actuation force (see col. 3 ln. 34-43).
Therefore it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify Agrurre to have the first actuation portion is coupled to an actuation cable that exerts the first actuation force as taught by Balazs, for the purpose of being able to connect the handle actuator to the actuation portion so the user can actuate the device with the handle (see Balazs col. 3 ln. 34-43).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KATHERINE H MENDEZ whose telephone number is (571)272-9503. The examiner can normally be reached Monday - Friday 8 am-4:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Darwin Erezo can be reached at (571) 272-4695. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KATHERINE H MENDEZ/Primary Examiner, Art Unit 3771
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