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 .
Election/Restrictions
Applicant’s election of Species J, FIGS. 24A-24D, in the reply filed on 16 April 2026, is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claim 31 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Species K, there being no allowable generic or linking claim.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 120 as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed applications, Application Nos. 15/914,041, 15/914,028, and 15/914,060, fail to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application. The prior-filed applications fail to provide adequate support for, at least, first and second diaphragms, as claimed in claims 22 and 30.
The priority date is 12 September 2019.
Claim Objections
Claims 28, 30, and 32-35 are objected to because of the following informalities: improper antecedence and grammar. Appropriate correction is required. The following amendments are suggested:
Claim 28 / line 2: “the at least one of the diaphragms”
Claim 30 / lines 9-10: “wherein at least one port is formed on the casing, and the at least one port [[is]] fluidly connects the outer membrane to the lumen,”
Claim 35 / line 1: “wherein [[the]] at least one”
Claim Rejections - 35 USC § 102
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 22-26 are rejected under 35 U.S.C. 102(a)(1)/(2) as anticipated by U.S. Patent No. US 9,314,269 to Webb et al. (hereinafter, “Webb”).
As to claim 22, Webb discloses a cannula (col. 14 / lines 54-65), FIGS. 20a-20d, comprising: a casing (710) defining a lumen (508) sized and dimensioned to receive one or more medical instruments, a first diaphragm (502) positioned at a first location (at the proximal end of the casing when assembled) on the casing of the cannula, FIGS. 20a-20b, and a second diaphragm (504) positioned at a second location on the casing of the cannula, FIG. 20b, wherein the first and second locations are spaced apart from each other and wherein the first and/or second diaphragm closes the lumen (the diaphragms close the lumen at least when an instrument is inserted therethrough, col. 2 / lines 63-65, col. 15 / line 56 – col. 16 / line 8).
As to claim 23, Webb discloses the cannula of claim 22, wherein the first diaphragm is positioned proximate to a proximal end of the casing and the second diaphragm is positioned proximate to a distal end of the casing (the second diaphragm is closer to the distal end of the casing than the first diaphragm is), FIG. 20b.
As to claim 24, Webb discloses the cannula of claim 23, wherein the first diaphragm is positioned on a cap (402), FIGS. 20b-20d.
As to claim 25, Webb discloses the cannula of claim 22, wherein at least one of the diaphragms comprises a first member (502) with a center hole (slits 596 form a small center hole at their point of intersection, and/or the slits themselves form a hole or opening/negative space which is at the center of the first member).
As to claim 26, Webb discloses the cannula of claim 22, wherein at least one of the diaphragms (504) comprises a second member with slits (509; described in another embodiment, col. 10 / lines 16-18).
As to claim 22, in another embodiment, Webb discloses a cannula, FIGS. 26d, comprising: a casing (2210) defining a lumen (2213) sized and dimensioned to receive one or more medical instruments, a first diaphragm (proximal two 2222) positioned at a first location on the casing of the cannula, and a second diaphragm (distal two 2222) positioned at a second location on the casing of the cannula, wherein the first and second locations are spaced apart from each other and wherein the first and/or second diaphragm closes the lumen (the diaphragms close the lumen at least when an instrument is inserted therethrough, col. 2 / lines 63-65, col. 15 / line 56 – col. 16 / line 8).
Claim Rejections - 35 USC § 103
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 27-29 are rejected under 35 U.S.C. 103 as being anticipated by Webb, or in the alternative, as unpatentable over Webb.
As to claim 27, in the another embodiment, Webb discloses the cannula, FIGS. 26d, of claim 22, wherein at least one of the diaphragms comprises a first member (one of the two 2222) with a center hole (2624; slits form a hole or opening/negative space is seen at the center of 2222 in FIG. 26d) and a second member (other of the two 2222) with slits (2624; col. 18 / lines 30-35).
As to claim 28, Webb discloses the cannula of claim 27, wherein the first member and the second member of the at least one diaphragms are spaced apart, FIG. 26d.
As to claim 29, Webb discloses the cannula of claim 27, wherein both the first and second diaphragms comprise the first and second members, FIG. 26d.
Assuming arguendo, Webb discloses slitting the second member but does not specify plural slits.
Webb does contemplate any number of slits (col. 18 / lines 30-35), and in another embodiment, shows a member (504) having three slits (509), FIGS. 7a-7b.
Accordingly, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to provide Webb’s second member with plural slits, to better mold around an instrument inserted therethrough to better prevent passage of fluid therethrough.
Allowable Subject Matter
Claims 30 and 32-35 are allowed.
REASONS FOR ALLOWANCE
The following is an examiner’s statement of reasons for allowance: None of the searched, pertinent prior art clearly shows by itself, or in combination with each other, a cannula as recited in claim 30. The closest prior art, US Patent Application Publication No. US 2016/0331401 to Dreyfuss et al. discloses a cannula comprising a casing with a port 28 that allows insufflation fluid to enter an outer membrane 18 (par. [0045]), FIGS. 4-5, but is silent as to a cap that moves in a distal direction to fluidically isolate the port from the outer membrane to further pressurize the outer membrane.
US Patent Application Publication No. US 2009/0275898 to Wenchell discloses a cannula comprising a casing 102,104 comprising a port 142 fluidly connecting an inflatable membrane 24 to insufflation fluid (par. [0032]-[0033]), but is silent as to a cap that moves in a distal direction to fluidically isolate the port from the membrane to further pressurize the membrane.
U.S. Patent No. US 6,276,661 to Laird discloses a cannula comprising a casing 84 and a cap 86 that is moved relative to the casing to vary a volume of a chamber (col. 7 / lines 49-54), FIGS. 5A-5B.
U.S. Patent No. US 9,149,576 to Bullington et al. discloses a casing with a port 636 that can be opened or closed by translating a cap 650, FIGS. 28-30.
U.S. Patent No. US 9,254,148 to Hart discloses a cannula comprising a casing with a port 206 formed on the casing, and a cap 200 that can be rotated to fluidically isolate the port (col. 8 / lines 5-35), but is silent as to an inflatable outer membrane, and moving the cap distally to fluidically isolate the port from the outer membrane to further pressurize the membrane.
It would not have been obvious in view of the cited art to make modifications to resolve the above deficiencies and arrive at the claimed invention.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TRACY L KAMIKAWA whose telephone number is (571)270-7276. The examiner can normally be reached M-F 10:00-6:30 PM.
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/TRACY L KAMIKAWA/Examiner, Art Unit 3775
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