DETAILED ACTION
This Office Action is in response to the Amendment filed 21 November 2025. Claim(s) 1-20 are currently pending. The Examiner acknowledges the amendments to claim(s) 3, 5, 12, and 13.
Claim Interpretation
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 Objections
Claim 12 is objected to because of the following informalities: please change “wedge” to “wedged” in line 9. Appropriate correction is required.
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 (i.e., changing from AIA to pre-AIA ) 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.
Claim(s) 17-20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Bimbo et al. (US 5,728,121, “Bimbo”).
Regarding claim(s) 17-20, Bimbo discloses a laparoscopic tool capable of assisting in positioning at least one of a first magnetic implant and a second magnetic implant capable of forming an anastomosis between two adjacent walls of a digestive tract of a patient. It is noted that the first and second magnetic implants are not positively recited. The laparoscopic tool includes an elongated member sized and configured to have at least a portion thereof to be capable of being inserted laparoscopically into an abdominal cavity of the patient (C2;L10-15). A tong-shaped distal end including a pair of branches (20,22) capable of grasping a bowel therebetween and constraining the bowel to a dimension smaller than a cross-sectional profile of the at least one of a first magnetic and a second magnetic implant to enable displacement of the at least one of a first magnetic implant and a second magnetic implant within a lumen of the bowel. The laparoscopic tool is non-magnetic and has a fixed shape, wherein the branches do not include elements that expand or inflate (Fig. 2). The pair of branches are actuatable between open and closed configurations (Fig. 2).
Terminal Disclaimer
The terminal disclaimer filed on 21 November 2025 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of US 11,534,171 has been reviewed and is accepted. The terminal disclaimer has been recorded.
Allowable Subject Matter
Claim(s) 1-16 is/are allowed.
Regarding claim 1, the prior art of record does not disclose or suggest a positioning wand including an elongated member configured to be inserted into an abdominal cavity, a distal tip at a distal end of the elongated member, the distal tip configured for placement against an outer surface of a wall of the digestive tract, the distal tip including a guide magnet, the distal tip pivotally engageable with the elongated member via a pin and having a cylindrical shape with a central cylindrical longitudinal ais coinciding with the pin such that the distal tip is rotatable about the central cylindrical longitudinal axis, in combination with the other claimed limitations.
Regarding claim 3, the prior art of record does not disclose or suggest a positioning wand including an elongated member configured to be inserted into an abdominal cavity, a distal tip at a distal end of the elongated member, the distal tip configured for placement against an outer surface of a wall of the digestive tract, the distal tip operatively engaged with a distal end of the elongated member, the distal tip including a plurality of guide magnets and a flexible housing receiving the plurality of guide magnets, in combination with the other claimed limitations.
Regarding claim 12, the prior art of record does not disclose or suggest a positioning wand including an elongated member configured to be inserted into an abdominal cavity, a distal tip at a distal end of the elongated member, the distal tip configured for placement against an outer surface of a wall of the digestive tract, the distal tip including a wedged portion provided at a distal end of the distal tip, the wedged portion converging toward a central axis of the distal tip, a guide magnet, in combination with the other claimed limitations.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Bressi, Jr et al. (US 5,443,479) discloses a pair of branches used in laparoscopic procedures.
Response to Arguments
Applicant’s arguments, filed 21 November 2025, with respect to Gagner, Lukin and Rodriguez-Navarro have been fully considered and are persuasive. The rejections of Gagner, Lukin and Rodriguez-Navarro have been withdrawn. It is further noted that the rejection heading citing Sato was inadvertently labeled with the incorrect name of the reference and claims rejected as deduced by the limitations in the rejection. The correct reference is Bimbo et al. (US 5,728,121) directed to claims 17-20. The Examiner apologizes for the confusion and has corrected the heading.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Palese et al. (US 2013/0066136A1) discloses a magnetic based device for retrieving articles.
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/JOCELIN C TANNER/Primary Examiner, Art Unit 3771