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 1 is objected to because of the following informalities:
On page 1 line 10, “provided on the outer wall” should be –provided on an outer wall—
On page 1 line 12, “to the outer tube body outlet” should be -- to an outer tube body outlet—
On page 1 line 13, “the outer diameter of the outer tube connector” should be -- an outer diameter of the outer tube connector—
On page 1 line 14, “the inner diameter of the outer tube inner passage within” should be -- an inner diameter of an outer tube inner passage within—
On page 1 line 21, “provided on the outer wall” should be –provided on an outer wall—
On page 2 line 1, “the inner tube body outlet” should be –an inner tube body outlet—
On page 2 line 2, “the outer diameter of the inner tube connector” should be -- an outer diameter of the inner tube connector—
On page 2 line 3, “the inner diameter of the inner tube connector” should be –an inner diameter of the inner tube connector—
On page 2 line 6, “the outer diameter of the basket tube” should be –an outer diameter of the basket tube—
On page 2 line 12, “the outer diameter of the rod body” should be –an outer diameter of the rod body—
Appropriate correction is required.
Claim 2 is objected to because of the following informalities: on page 2 line 16, “an outer tube inner passage” should be – the outer tube inner passage--. Appropriate correction is required.
Claim 3 is objected to because of the following informalities: on page 3 line 1, “the outer side” should be –an outer side--. Appropriate correction is required.
Claim 5 is objected to because of the following informalities: on page 3 lines 13-14, “the terminal opening” should be –a terminal opening--. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-9 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites the limitation "the second outer tube opening of the outer tube column" on page 1 lines 14-15. There is insufficient antecedent basis for this limitation in the claim.
It is unclear to the examiner if applicant is referring to a new second outer tube opening which is part of the outer tube column or it is referring to the second outer tube opening of the outer tube connector as introduced on page 1 lines 7-8.
For purposes of this action, it appears t o the examiner that it is the second outer tube opening of the outer tube connector and it will be interpreted in this manner.
Claim 4 recites the limitation "a rod bending zone " on page 3 line 11. It is unclear to the examiner if this is the same or different than the bending zone introduced in claim 1.
For purposes of this action it will be interpreted as being the same.
Claim Rejections - 35 USC § 103
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 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.
Claim(s) 1-7 and 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bonnette et al. (2010/0268264) in view of Miyamoto et al. (2008/0033467).
Claim 1:
Bonnette discloses an outer tube (combination 18 and 12) (Fig. 1 and [0086]), an inner tube (combination 20 and 16) (Fig. 1 and [0086]) configured to be sleeved within the outer tube (Fig. 1 and [0086]), and a stone removal basket (combination 22, 24, and 26) (Fig. 1 and [0086]) configured to be sleeved within the inner tube (Fig. 1 and [0089]); wherein the outer tube comprises an outer tube connector (56 of part 18) (Fig. 5) and an outer tube body (12) (Fig. 1 and 5) detachably fixed to the outer tube connector (Fig. 1 and 5); the outer tube connector includes a first outer tube opening (see figure below) at its left end (see figure below) and a second outer tube opening (see figure below) at its right end (see figure below), the first outer tube opening and the second outer tube opening are connected by an outer tube column (see figure below), and an outer tube thread (see figure below) is provided on the outer wall of the first outer tube opening (see figure below); the outer tube body is a long slender tube (Fig. 1) with an outer tube connector engagement end (see figure below) at its left end (Fig. 1 and figure below), extending longitudinally to the outer tube body outlet at its right end (distal end where part 18, 14, and 22 extend out of as seen in Fig. 1 and 7), the outer diameter of the outer tube connector engagement end is slightly smaller than the inner diameter of the outer tube inner passage within the second outer tube opening of the outer tube column (Fig. 5 where it is smaller since it fits in it), allowing it to be sleeved and secured therein (Fig. 5); the inner tube comprises an inner tube connector (56 of part 20) and an inner tube body (16) detachably fixed to the inner tube connector (Fig. 1 and 5); the inner tube connector includes a first inner tube opening (see figure below) at its left end (see figure below) and a second inner tube opening (see figure below) at its right end (see figure below), the first inner tube opening extends towards the second inner tube opening (see figure below), forming an inner tube column (see figure below), an inner tube thread (see figure below) is provided on the outer wall of the first inner tube opening (see figure below), the inner tube column of the second inner tube opening is configured to be sleeved within the first outer tube opening of the outer tube connector (Fig. 1 and 5); the inner tube body is a long slender tube (Fig. 1) with an inner tube connector engagement end (see figure below) at its left end (see figure below), extending longitudinally to the inner tube body outlet end at its right end (see figure below), the outer diameter of the inner tube connector engagement end is slightly smaller than the inner diameter of the inner tube connector (Fig. 5 where it is smaller since it fits in it), allowing it to be sleeved and secured therein (Fig. 5), the inner tube body is longer than the outer tube body (Fig. 1); the stone removal basket comprises a basket tube body (220) and a basket (24, 26) extending from the distal end of the basket tube body (Fig. 1), the outer diameter of the basket tube body is slightly smaller than the inner diameter of the inner tube body (Fig. 1 where it is smaller since it fits in it), allowing it to move freely within the inner tube body (Fig. 1 and 6-9), the basket tube body is longer than the inner tube body (Fig. 1), the basket has a bag-shaped mesh structure forming several basket openings (Fig. 4).
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Bonnette teaches all the limitations discussed above, however Bonnette is silent with regards to the stone crushing rod as claimed.
Miyamoto discloses another stone removal basket where the device has both the stone removal basket and the crushing rod into one single device (1) (Fig. 1) where it is inserted in the body through an outer tube (30) as seen in Fig. 9.
Miyamoto further discloses the stone removal basket (combination 12 and 6) (Fig. 1 and 24) comprises a basket tube body (12) and a basket (6) extending from the distal end of the basket tube body (Fig. 1 and 24), the basket has a bag-shaped mesh structure (72) (Fig. 24) forming several basket openings (Fig. 24); and the stone-crushing rod (combination 11 and 2, 46, 51, 56) comprises a handle ring (22) at its left end (Fig. 1) and an elongated stone-crushing rod body (16, rod extending from parts 2, 46, 51, 56) extending distally (Fig. 1, 19-21, and 24), with a rod bending zone (part where it bens as seen in Fig. 21 or where it loops as seen in Fig. 1) formed near its distal end (Fig. 1 and 21).
It would have been obvious to one of ordinary skill in the art to modify the stone removal basket of Bonnette to have both the stone removal basket and the crushing rod, as taught by Miyamoto, since it has been held that a simple substitution of one known element for another will yield predictable results. KSR International Co. v. Teleflex Inc., 550 U.S. 398, 82, USPQ2d 1385 (2007).
The combination of Bonnette with Miyamoto would have instead of the rod (22) with the basket (24, 26) going through it, it would have the device (1) of Miyamoto going through the inner tube. Therefore the combination would have the outer diameter of the basket tube body is slightly smaller than the inner diameter of the inner tube body allowing it to move freely within the inner tube body (Fig. 1 and 6-9 of Bonnette where it would be inserted through it) and the outer diameter of the rod body is slightly smaller than the inner diameter of the inner tube body (Fig. 1 of Miyamoto where it would be smaller to fit through it), allowing it to move freely within the inner tube body , the rod body is longer than the inner tube body (Fig. 12-17 of Miyamoto).
Claim 2:
Bonnette in view of Miyamoto discloses all the claimed limitations discussed above, however Bonnette in view of Miyamoto does not have inner passages of the inner tube column or the outer tube column with two sections of differing diameters as claimed.
It would have been obvious to one having ordinary skill in the art at the time the invention was made to have differing inner diameters of the inner passage of the outer column and inner column as claimed, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Claim 3: Bonnette further discloses that the outer side of the outer tube column near the second outer tube opening has a handheld tab extending outwardly in a sheet-like form (see figure above).
Claim 4: Bonnette in view of Miyamoto further discloses that the right end of the outer tube body includes an outer tube bending zone (zone where it beds around distal portion as seen in Fig. 1 of Bonnette), extending a distance to the outer tube body outlet (Fig. 1 of Bonnette); the right end of the inner tube body includes an inner tube bending zone (zone where it beds around distal portion as seen in Fig. 1 of Bonnette), extending a distance to the inner tube body outlet end (Fig. 1 of Bonnette); when the inner tube body is sleeved within the outer tube body, the inner tube body outlet end protrudes beyond the outer tube body (Fig. 1 of Bonnette) and the right end of the stone-crushing rod includes a rod bending zone (part where it bends as seen in Fig. 21 or where it loops as seen in Fig. 1 of Miyamoto) that can protrude beyond the inner tube body (Fig. 1 and 21 of Miyamoto where it would protrude in the same manner as the basket in Fig. 1 of Bonnette).
Claim 5: Bonnette discloses that the terminal opening of the outer tube body outlet and/or the inner tube body outlet end is a rounded arc closure (Fig. 1).
Claim 6: the combination of Bonnette in view of Miyamoto would have a fluid suction hole is configured to the outer tube body between the outer tube bending zone and the outer tube body outlet since Miyamoto discloses the suction holes as stated in [0084].
Claim 7:
Bonnette in view of Miyamoto discloses the claimed invention except for the outer tube and the inner tube is colorless or colored polyvinyl chloride (PVC), polycarbonate (PC), or polyethylene (PE); and the stone removal basket and the stone-crushing rod are stainless steel.
It would have been obvious to one having ordinary skill in the art at the time the invention was made to have the outer tube and the inner tube is colorless or colored polyvinyl chloride (PVC), polycarbonate (PC), or polyethylene (PE); and the stone removal basket and the stone-crushing rod are stainless steel since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
Claim 9: Bonnette further discloses that when the stone removal basket is sleeved within the inner tube body and the outer tube body, pulling the basket tube body does not cause the inner tube body and the outer tube body to bend (Fig. 6-9).
Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bonnette et al. (2010/0268264) in view of Miyamoto et al. (2008/0033467) and further in view of Nageswaran et al. (2020/0390457).
Bonnette in view of Miyamoto teaches all the claimed limitations discussed above however, Bonnette in view of Miyamoto does not disclose wherein: a material of the outer tube body and/or the inner tube body contains a contrast agent.
Nageswaran discloses the use of radiopaque material on the device 100 which act as a contrast agent in order to facilitate visualization via radiographic imaging ([0594]).
It would have been obvious to a person having ordinary skill in the art at the time the invention was filed to provide Bonnette in view of Miyamoto with contrast agents in view of the teachings of Nageswaran, in order to facilitate visualization via radiographic imaging ([0594]).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The cited prior art appears to teach the claimed limitations when considered in combination.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DIANNE DORNBUSCH whose telephone number is (571)270-3515. The examiner can normally be reached Monday-Wednesday 9 am-3 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Elizabeth Houston can be reached at (571) 272-7134. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DIANNE DORNBUSCH/Primary Examiner, Art Unit 3771
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