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 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 1-6 and 8-14 are rejected under 35 U.S.C. 102a1/a2 as being anticipated by Yamane (US 2012/0253128).
Regarding Claim 1, Yamane discloses:
An attachment for an endoscope, the attachment comprising:
a housing (plug 50, see Figs. 17-21 in particular) including one or more angled locking members (57) extending radially-inwardly from an inner surface of the housing (shown in Figs. 17-19), and one or more stabilizing members (64) extending radially-inwardly from the inner surface of the housing, the one or more angled locking members being configured to engage a biopsy port of the endoscope (57 engages with port 49), wherein at least one of the one or more angled locking members includes a first angled locking member including a bent region (several bent portions of 57 are shown in Figs. 17-19); and
a sealing member (33) disposed within the housing.
Regarding Claim 2, Yamane further discloses wherein at least one of the one or more angled locking members is a first angled locking member disposed on a first side of the inner surface of the housing, and the one or more angled locking members include a second angled locking member disposed on a second side of the inner surface of the housing (as shown in Figs. 17-19 there are two locking members 57).
Regarding Claim 3, Yamane further discloses wherein the bent region of the at least one of the one or more angled locking members is substantially V-shaped (as shown in Figs. 17-19, the ends of the locking members 57 are angled in a substantially V-shaped manner).
Regarding Claim 4, Yamane further discloses wherein at least one of the one or more angled locking members is substantially rigid (see Fig. 17, at least a portion of 57, like the distal bent section, is substantially rigid so that it can engage the port 49).
Regarding Claim 5, Yamane further discloses wherein at least one of the one or more angled locking members is resiliently deflectable (see Figs. 20-21 and Paragraphs 0112-0114).
Regarding Claim 6, Yamane further discloses wherein: the one or more angled locking members are positioned to engage a neck region of the biopsy port formed on the handle of the endoscope (see Fig. 17 showing 57 engaging the top of the neck region of the port); the stabilizing members are positioned to engage the neck region (see Fig. 17 showing 64 engaging the bottom of the neck region of the port) and/or the radially-outward periphery of a flanged region proximal to the neck region of the biopsy port formed on the handle of the endoscope.
Regarding Claim 8, Yamane discloses:
An attachment for an endoscope, the attachment comprising:
a housing (87, see Figs. 34-44 in particular);
one or more locking members (101) extending radially-inwardly from an inner surface of the housing (shown in Figs. 36), the one or more locking members including at least one angled locking member extending in a proximal direction to engage a distally facing surface of a flanged region of a biopsy port of the endoscope (101 engages with port portion 89; see Fig. 36 for example); and
one or more stabilizing members (97) extending radially-inwardly from the inner surface of the housing (shown in Fig. 35) and circumferentially spaced apart from the locking members to stabilize a lateral position of the attachment with respect to the biopsy port (see Figs. 38-39, for example, showing the spacing between 97 and 101).
Regarding Claim 9, Yamane further discloses wherein the at least one angled locking member is positioned to seat underneath the flanged region of the biopsy port (see Paragraph 0140 and Fig.36).
Regarding Claim 10, Yamane further discloses wherein the one or more stabilizing members are positioned to engage the neck region (97 engages the neck at 88; see Paragraph 139) and/or the radially-outward periphery of the flanged region proximal to the neck region of the biopsy port.
Regarding Claim 11, Yamane further discloses wherein the at least one angled locking member includes a bent region (see 101 near 101a).
Regarding Claim 12, Yamane further discloses wherein the at least one angled locking member is substantially V-shaped (see Fig. 36 showing 101 having a V-shape at the bent region).
Regarding Claim 13, Yamane further discloses wherein the at least one angled locking member is resiliently deflectable to be moved distally over and distal to the flanged region of the biopsy port (see Paragraph 0153 discussing deflecting 101).
Regarding Claim 14, Yamane further discloses wherein the one or more stabilizing members are positioned to support a biopsy cap within the housing, the biopsy cap including a seal positioned and designed to contact and seal against a proximal end of the biopsy port (the Examiner considers this functional language because it is a wherein clause and does not specifically include the biopsy cap as part of the attachment; the prior art is capable of supporting a cap).
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.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Yamane (US 2012/0253128) in view Ouchi et al. (US 5,993,379).
Yamane discloses the invention substantially as claimed as stated above, but does not explicitly disclose wherein the sealing member is disposed within the housing to contact and seal against the biopsy port. Ouchi teaches positioning a sealing member such that it contacts and seals against the biopsy port (see 82, for example, with seal 11/11a in the claimed position). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify Yamane’s seal to be positioned as shown in Ouchi. Such a modification helps prevent fluid from going between the seal, the housing, and the port.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,256,895. Although the claims at issue are not identical, they are not patentably distinct from each other because the patent anticipates the application’s claims. The differences are minor and mostly focused on functional language. The patent claims the housing, locking members, and stabilizing members. The dependent claims include the details related to these members.
Allowable Subject Matter
Claims 15-20 are allowable but for the Double Patenting Rejection.
Claim 15 requires the pair of circumferentially spaced apart locking members and stabilizing members wherein the stabilizing members are disposed adjacent to and circumferentially spaced apart from the locking members. The Examiner does not consider Yamane to disclose this feature. There being no clear reason in the art to modify Yamane to include such a feature, the claim overcomes the closest prior art.
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 TIMOTHY JAY NEAL whose telephone number is (313)446-4878. The examiner can normally be reached Mon-Fri 7:30-5:30.
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, Anhtuan Nguyen can be reached at (571)272-4963. 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.
/TIMOTHY J NEAL/ Primary Examiner, Art Unit 3795
Prosecution Insights