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 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.
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: “an operation member…wherein the operation member is configured to be rotationally moved in a first direction about an axis of the endoscopic treatment equipment” in claim 1 and “a power transmission element that mechanically connects at least the operation member and the treatment part” in claim 3.
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 § 102
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 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 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.
Claims 1-6, 11, 13-14, 16-19 and 21-26 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Mark (US Pub No. 2015/0190159).
Regarding claim 1, Mark discloses (Figures 7-10) an instrument (200) fully capable in being used as an endoscopic treatment equipment to be used by being introduced into a treatment tool inlet port of an endoscope, the endoscopic treatment equipment comprising: a distal end portion (from 226 to the distal end 220) that includes a treatment part (Figure 11); a proximal end portion (from 235 to the proximal end 214) that is provided at a proximal end of the endoscopic treatment equipment (Figure 8); an operation member (206) that is provided between the distal end portion and the proximal end portion (Figure 10) and that is mechanically connected to the treatment part (Paragraphs 0058 and 0068); a first connecting member (240) that connects the distal end portion and the operation member (Figure 10); and a second connecting member (228) that connects the operation member and the proximal end portion and that is different from the first connecting member (clearly shown in Figure 10) (Paragraph 0068), wherein the operation member is configured to be rotationally moved in a first direction about an axis of the endoscopic treatment equipment, and the treatment part is configured to be rotationally moved in the first direction by a rotational movement of the operation member (Paragraphs 0068, 0074 and 0076).
Regarding claim 2, wherein a position of the operation member in an axial direction of the endoscopic treatment equipment is fixed to the first connecting member and the second connecting member (Figure 10).
Regarding claim 3, further comprising: a power transmission element (208) that mechanically connects at least the operation member and the treatment part (Figure 10) (Paragraph 0068), wherein the operation member is configured to be rotationally moved in the first direction with respect to the first connecting member (Paragraph 0068), and the endoscopic treatment equipment is configured such that a rotational movement force in a case where the operation member is moved rotationally is transmitted to the treatment part via the power transmission element (Paragraph 0068).
Regarding claim 4, wherein the first connecting member (240) has a tubular shape in which the power transmission element is provided (clearly shown in Figure 10).
Regarding claim 5, wherein the power transmission element is provided to further extend from the operation member to the proximal end portion and mechanically connects the proximal end portion and the treatment part (Figure 10) (Paragraph 0068), and the second connecting member has a tubular shape in which the power transmission element is provided (clearly shown in Figure 10).
Regarding claim 6, wherein inside the first connecting member, the operation member and the second connecting member, the power transmission element is provided to be movable in the axial direction (clearly shown in Figure 10) (Paragraphs 0073-0076).
Regarding claim 11, further comprising: a transmission element (212) that is provided to extend from the proximal end portion to the treatment part (Figures 10-11), wherein the second connecting member is a solid structure (partially solid as shown in Figure 10) in which the transmission element is provided (clearly shown in Figure 10).
Regarding claim 13, wherein the operation member is fixed to the first connecting member (Paragraph 0068), and the endoscopic treatment equipment is configured such that a rotational movement force in a case where the operation member is moved rotationally is transmitted to the treatment part via the first connecting member (Paragraphs 0074-0076).
Regarding claim 14, further comprising: a transmission element (212) that is provided to extend from the proximal end portion to the treatment part (Figures 10-11), wherein the first connecting member and the second connecting member each have a columnar shape in which the transmission element is provided (clearly shown in Figure 10).
Regarding claim 16, wherein stiffness of the first connecting member against a force in the first direction and stiffness of the second connecting member against a force in the first direction are different [Stiffness against a force in the first direction would be different since the first connecting member and the second connecting member each have a different shape and thickness as shown in Figure 10. Also, Paragraph 0066 disclose that the first connecting member is made of a compliant material having some memory that may be selectively deformed which would have a different stiffness against a force in the first direction compared to the second connecting member].
Regarding claim 17, wherein stiffness of the first connecting member against a force in an axial direction of the endoscopic treatment equipment and stiffness of the second connecting member against a force in the axial direction of the endoscopic treatment equipment are different [Stiffness against a force in an axial direction of the endoscopic treatment equipment would be different since the first connecting member and the second connecting member each have a different shape and thickness as shown in Figure 10. Also, Paragraph 0066 disclose that the first connecting member is made of a compliant material having some memory that may be selectively deformed which would have a different stiffness against a force in an axial direction of the endoscopic treatment equipment compared to the second connecting member].
Regarding claim 18, wherein the proximal end portion and the second connecting member are connected to be movable rotationally relative to each other (Paragraph 0074).
Regarding claim 19, Mark discloses (Figures 7-10) an instrument (200) fully capable in being used as an endoscopic treatment equipment to be used by being introduced into a treatment tool inlet port of an endoscope, the endoscopic treatment equipment comprising: a distal end portion (from 226 to the distal end 220) that includes a treatment part (Figure 11); a proximal end portion (from 235 to the proximal end 214) that is provided at a proximal end of the endoscopic treatment equipment (Figure 8); a first member (208) that extends from the distal end portion to the proximal end portion along an axial direction of the endoscopic treatment equipment (Figures 10-11); and a tubular member (240) in which a part of the first member is provided and that extends from the distal end portion to a position between the distal end portion and the proximal end portion (Figure 10), wherein the treatment part is configured to be rotationally moved in a first direction about an axis of the endoscopic treatment equipment by a rotational movement of the tubular member in the first direction (Paragraphs 0068, 0074 and 0076).
Regarding claim 21, further comprising an operation member (206) that is fixed to the tubular member (Paragraphs 0068, 0074 and 0076).
Regarding claim 22, further comprising: a transmission element (212) that is provided to extend from the proximal end portion to the treatment part (Figures 10-11).
Regarding claim 23, wherein the first member (208) has a tubular shape (clearly shown in Figures 10-11), and inside the first member, the transmission element is provided to be movable in the axial direction (Figures 10-11) (Paragraphs 0073-0075).
Regarding claim 24, wherein the first member is a solid structure in which the transmission element is provided (Figure 11).
Regarding claim 25, wherein stiffness of the first member against a force in the first direction and stiffness of the tubular member against a force in the first direction are different [Stiffness against a force in the first direction would be different since the first member and the tubular member each have a different size and thickness as shown in Figure 10. Also, Paragraph 0066 disclose that the tubular member is made of a compliant material having some memory that may be selectively deformed which would have a different stiffness against a force in the first direction compared to the first member].
Regarding claim 26, wherein the first member has higher stiffness against the force in the axial direction than the stiffness of the tubular member against the force in the axial direction [Stiffness against a force in the axial direction would be different since the first member and the tubular member each have a different size and thickness as shown in Figure 10. Also, Paragraph 0066 disclose that the tubular member is made of a compliant material having some memory that may be selectively deformed which would have a different stiffness against a force in the axial direction compared to the first member].
Allowable Subject Matter
Claims 7-10, 12, 15 and 20 are 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.
The following is an examiner’s statement of reasons for indicating allowable subject matter in the dependent claims:
The prior art of record fails to disclose or render obvious the combination of features as claimed. In particular, the prior art of record fails to wherein the operation member is configured to be rotationally moved in the first direction with respect to the first connecting member and the second connecting member (claim 7), wherein the operation member is configured to be rotationally moved in the first direction with respect to the second connecting member (claim 12), wherein the transmission element includes a power transmission element that mechanically connects the proximal end portion and the treatment part, the first connecting member has a first tubular member and a second tubular member provided on an outer periphery of the first tubular member, inside the first tubular member, the power transmission element is provided to be movable in the axial direction, and the first tubular member has higher stiffness against a force in the axial direction than stiffness of the second tubular member against a force in the axial direction (claim 15) and wherein the tubular member is configured to be rotationally moved in the first direction with respect to the first member (claim 20).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MAJID JAMIALAHMADI whose telephone number is (571) 270-0172. The examiner can normally be reached on Monday-Friday 7am-5pm EST.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Darwin Erezo can be reached on (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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/MAJID JAMIALAHMADI/Primary Examiner, Art Unit 3771
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