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 Objections
Claim 91 is objected to because of the following informalities: Applicant uses the term “the shaft component”. This should read “the shaft”. Appropriate correction is required.
Claim 105 is objected to because of the following informalities: Applicant uses the term “the hollow portion”. This should read “the hollow interior portion”. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 88-107 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claims 88 and 104, Applicant recites that the multi-tool comprises “a body that extends from a proximal end to a distal end and includes a hollow interior portion…a first arm extending from the body defined by an exterior sidewall having a reduced diameter relative to the body, and having a first lumen that leads into the hollow interior portion of the body…a throughbore formed in the body that is in communication with the hollow interior portion; a shaft having an elongate body that defines a central longitudinal axis extending from a proximal end to the distal tip, the shaft being configured to pass through each of the first lumen, the throughbore, and the hollow interior portion; a second arm extending from the body having a second lumen that leads into the hollow interior portion of the body; and a button received in the throughbore…”
Applicant’s specification fails to provide support for all of these features with a single embodiment of their disclosure. It appears Applicant’s is mixing features of the embodiment of figures 91-97 with that of figures 107-111B. The embodiment of figures 91-97 teaches the use of a button (712) as well as two arms (706’s) however only one of the arms has a lumen which leads into the hollow interior portion of the body (see figure 94A and 96, “left” arm 706 does not have a lumen leading into the hollow interior portion of the body. Additionally, the embodiment of figures 107-11B does have two arms with respective lumens that lead into the hollow interior portion of the body (see figures 108-109). However, this embodiment lacks a button received in the through bore, the button having a bore formed therein to allow the shaft to extend therethrough as required by the claims. The embodiment of figures 107-111B uses a knob (1230) which in light of Applicant’s specification, is not the same as a button.
Claims 89-103 and 105-107 are rejected under 35 U.S.C. 112(a) as they depend form a rejected base claim and do not rectify the issue at hand.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW JAMES LAWSON whose telephone number is (571)270-7375. The examiner can normally be reached Mon - Fri 6:30-3:00.
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/MATTHEW J LAWSON/Primary Examiner, Art Unit 3619