DETAILED ACTION
This Office Action is in response to the Amendment filed 8 June 2026. Claim(s) 1-19 are currently pending. The Examiner acknowledges the amendments to claim(s) 5, 8, 9,12, and 17 and cancelled claim 20.
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.
No claim limitation has been interpreted under 35 U.S.C. 112(f) because each term (e.g., ‘elongated member’) connotes sufficient structure to a POSITA. See MPEP § 2181. If applicant contends otherwise, please point to supporting disclosure.”
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) 17-19 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Bhatta et al. (US 5,254,115, “Bhatta”).
Regarding claim(s) 17-19, Bhatta 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 (C10; L15-18) includes an elongated member (15; Fig. 1) sized and configured to have at least a portion thereof to be capable of being inserted laparoscopically into an abdominal cavity of the patient (C10; L15-18). A tong-shaped distal end including a pair of branches (25, 50; Figs. 1, 3) fixed relative to one another and 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 the first magnetic and that second magnetic implant to translate the at least one of the first magnetic implant and the second magnetic implant within a lumen of the bowel. The laparoscopic tool is non-magnetic and the branches have a fixed shape, wherein the branches do not include elements that expand or inflate (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.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-19 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Klotz et al. (US 2004/0267243A1, “Klotz”) and Wittenberger et al. (US 2004/0254607A1, “Wittenberger”) disclose a laparoscopic tool having an elongated member and a tong-shaped distal end including a pair of branches fixed relative to one another.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOCELIN C TANNER whose telephone number is (571)270-5202. The examiner can normally be reached M-F 8am-4pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jackie Ho can be reached at (571)272-4696. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JOCELIN C TANNER/Primary Examiner, Art Unit 3771
Prosecution Insights