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 Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
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.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “retrieval element” in claim 16, 17, 23, and 26.
The specification of the present invention discloses the equivalent structure capable of performing the function of a retrieval element is a basket defining a containment volume ([0059] and FIG 4).
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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) 16-24 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Dostal et al. (US 9,480,491).
Regarding claim 16, Dostal et al. discloses a retrieval group (FIG 1) for a surgical device comprising: a retrieval element (60, 70, FIG 1, 2, and 4) configured to receive one leading end of a suture thread (Col 6 lines 27-35 discloses basket 60 is configured for “entrapping objects when open”. The shape of the basket and spacing of wires 61a-d is configured for receiving a suture thread); a switch (30, FIG 2) configured to switch the retrieval element between a non- operational configuration (FIG 3), wherein the retrieval element is in a retracted position and does not intercept the leading end of the suture thread (In the retracted/closed basket position of FIG 3, the retrieval element is not exposed and therefore it is non-operational for intercepting a suture thread), and a semi-operational configuration (FIG 4), wherein the retrieval element in an extracted position to intercept said leading end (FIG 4 shows the basket in the extended/open position. In this position, the retrieval element is at least configured to receive a suture thread passing therethrough. Examiner notes the suture thread is not positively recited in the claim and therefore description of the retrieval element in relation to a suture thread is interpreted as an intended use of the device. Further, switch 30 is used to switch between the non-operational and the semi-operational configuration by partially retracting the thumb pad 31, col 9 line42-col 10 line 15), and between the semi-operational configuration and an operational configuration, wherein the retrieval element is in the retracted position and holds said leading end (Col 10 lines 16-34 describe a position where the retrieval element has been used to contact an object and then closed in order to trap the object for removal. This position could be achieved wherein the suture thread is the object), and at least one attachment element (81, FIG 1-2; the distal end of the handle base 10 is interpreted as an attachment element because it could be inserted into a correspondingly tapered shape opening such as the port of a trocar) configured to reversibly connect the retrieval group to an insertion arm of a pointer (the distal end of the handle base is at least configured to be connected to an insertion arm of a pointer having an appropriate size and shape. Examiner notes the insertion arm is not positively recited element of the claim), said pointer comprising an insertion arm that has a folded contact end configured to abut the surgical device against a patient's bone, and a handle connected to a connection end of the insertion arm opposite to said folded contact end, and extending transversely to said insertion arm (the preceding limitations further define the pointer, which is not positively recited and therefore need not be explicitly disclosed in the prior art. The device of Dostal is at least configured such that it could be used in combination with another surgical instrument having such features).
Regarding claim 17, Dostal et al. discloses a containment channel (50, FIG 2) of the retrieval element (FIG 7), wherein said retrieval element is located completely inside of said containment channel (Col 6 line 4-30) in the retracted position (FIG 3) and emerges at least partially beyond an outlet section of said containment channel in the extracted position (FIG 4).
Regarding claim 18, Dostal et al. discloses said retrieval element is a basket made of flexible material (Col 6 lines 27-63), wherein the basket defines a containment volume (FIG 1-2 and 7 show the area formed by the basket wires) suitable for receiving said leading end of the suture thread (The area provides sufficient space for a suture thread to pass therethrough).
Regarding claim 19, Dostal et al. discloses said containment volume is configured to expand in transition from the retracted position to the extracted position (“The user then pulls the thumb back toward the hand, sliding thumb pad 31 back toward proximal end 15 of wide portion of slot 14b (arrow 55a). This action pulls sheath 50 back relative to drive wire 70 and basket 60 (arrow 55b). Basket 60 is then exposed and resumes its expanded shape, as shown in FIGS. 1 and 4”) and to shrink in transition from the extracted position to the retracted position (“longitudinal movement of sheath 50 relative to basket 60, forcing basket 60 to collapse and become enclosed within sheath 50”).
Regarding claim 20, Dostal et al. discloses the basket is a cage defined by a plurality of threads (61a-d) spaced apart by interstices (FIG 1-2 show the interstices between each thread. Also shown in FIG 4b and 9), said interstices configured to enable passage of the suture thread (These spacings are at lease sized and configured to enable passage of a suture thread).
Regarding claim 21, Dostal et al. discloses said basket is made of a shape memory material (Col 6 lines 31-35).
Regarding claim 22, Dostal et al. discloses s said basket is made of Nitinol (Col 6 lines 31-35).
Regarding claim 23, Dostal et al. discloses the switch comprises a slider (Thumb slide 30) configured to move the retrieval element (col 5 lines 16-49 and col 9 lines 42-65).
Regarding claim 24, Dostal et al. discloses the slider is a sliding block (FIG 2, the combination of 31 and 33 is interpreted as a sliding block).
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) 25 is/are rejected under 35 U.S.C. 103 as being unpatentable over Dostal et al. (US 9,480,491) in view of Mercereau et al. (US 2003/0109889).
Regarding claim 25, Dostal et al. discloses the invention substantially as claimed, as set forth above for claim 23.
Dostal et al. is silent regarding the slider being a castor.
However, Mercereau et al. teaches in the same field of endeavor a retrieval element (82, 84, 64, 66, 70a-d, [0074-0076]) which can be extended (FIG 17) and retracted (FIG 16) using a switch (18) comprising a slider ([0070-0072, [0076]) which is a castor (drum 52 is interpreted as a castor, [0076-0084]).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to modify the switch of Dostal to comprise a castor, as taught by Mercereau et al., for the purpose of configuring the slider switch with the additional ability to articulate the retrieval element.
Claim(s) 26 is/are rejected under 35 U.S.C. 103 as being unpatentable over Dostal et al. (US 9,480,491) in view of Teague et al. (US 2004/0215212).
Regarding claim 26, Dostal et al. discloses the invention substantially as claimed, as set forth above for claim 16.
Dostal et al. is silent regarding a spring connected to the switch and configured to keep the retrieval element in the retracted position.
However, Teague et al. teaches in the same field of endeavor a retrieval element (34, [0039-0044]) which can be extended (FIG 4) and retracted (FIG 2) using a switch (74) and a spring (170) connected to the switch (FIG 9C, [0058]) and configured to keep the retrieval element in the retracted position ([0058], the spring biases the slider 74 towards a retracted position of the retrieval element).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to modify the switch of Dostal to be connected to a spring configured to keep the retrieval element in the retracted position, as taught by Teague et al., for the purpose of configuring the switch to be biased towards a retracted position of the retrieval element.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BROOKE N LABRANCHE whose telephone number is (571)272-9775. The examiner can normally be reached M-F 8-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Elizabeth Houston can be reached at 5712727134. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BROOKE LABRANCHE/Primary Examiner, Art Unit 3771
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