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 .
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they do not include the following reference sign(s) mentioned in the description: “132”. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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, 4, 7-12 and 15-16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 3 and 12 of U.S. Patent No. 11,399,702 to Tah. Although the claims at issue are not identical, they are not patentably distinct from each other because all elements in the application claims are covered by the patented claims. Except for minor differences in terminology, it is clear that all elements of claims 1, 4, 7-12 and 15-16 are found in claims 3 and 12 of the patent. The difference between the claims of the application and the claims of the patent lies in the fact that the patent claims include more elements and is, thus, more specific. The invention of claims 3 and 12 of the patent is in effect a “species” of the “generic” invention of claims 1, 4, 7-12 and 15-16 of the application. It has been held that the generic inventio is “anticipated” by the “species”. See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Since claims 1, 4, 7-12 and 15-16 are anticipated by claims 3 and 12 of the patent, they are not patentably distinct from the patented claims.
Claims 1, 4-5, 7-12 and 14-17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 5 and 13 of U.S. Patent No. 12,256,900 to Tah. Although the claims at issue are not identical, they are not patentably distinct from each other because all elements in the application claims are covered by the patented claims. Except for minor differences in terminology, it is clear that all elements of claims 1, 4-5, 7-12 and 14-17 are found in claims 5 and 13 of the patent. The difference between the claims of the application and the claims of the patent lies in the fact that the patent claims include more elements and is, thus, more specific. The invention of claims 5 and 13 of the patent is in effect a “species” of the “generic” invention of claims 1, 4-5, 7-12 and 14-17 of the application. It has been held that the generic inventio is “anticipated” by the “species”. See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Since claims 1, 4-5, 7-12 and 14-17 are anticipated by claims 5 and 13 of the patent, they are not patentably distinct from the patented claims.
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: “an actuation assembly”, “an operating member” and “a locking portion” in claims 1-20.
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 § 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 1-20 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. Independent claims 1, 11 and 18 each recite “an operating member coupled to structure at the distal end of the shaft’. It is unclear what “structure” the operating member is coupled to as the distal end of the shaft. Is it a joint ring, a wire, or something else? One is left to wonder, which renders the claim indefinite. Appropriate correction is required.
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) 1, 4-12 and 14-17 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Konstorum (US 8,864,656 B2).
Regarding claim 1, Konstorum discloses a medical device (110; Fig. 12) comprising: a shaft (112; Fig. 12) extending from a proximal end to a distal end; and a handle (114; Fig. 12) coupled to the proximal end of the shaft (112) and including an actuation assembly (132; Fig. 12), the actuation assembly including: an operating member (132/134; Fig. 12) operably coupled to structure at the distal end of the shaft (112); and a locking portion (136; Fig. 12) configured to move between an engaged state (col. 7, ll. 3-28) and a released state (col. 7, ll. 29-35), wherein, in the engaged state, the locking portion (136) is engaged with an engagement feature (54/58; Fig. 12) on an outer surface of the handle (114) preventing movement of the operating member (132) relative to the outer surface of the handle (114; col. 7, ll. 3-28), wherein, in the released state, the locking portion (136) is released from the engagement feature (54/58; Fig. 12) permitting movement of the operating member (132) relative to the outer surface of the handle (114; col. 7, ll. 29-35), wherein the engagement feature (54/58) is a serrated section (interpreted as notched) including a plurality of indentations (58), and wherein each indentation (58) of the plurality of indentations is configured to receive the locking portion (136) therein when the locking portion is in the engaged state (col. 7, ll. 3-28).
Regarding claim 4, Konstorum discloses the medical device of claim 1, wherein the locking portion (136) is biased toward the engaged state (col. 7, ll. 3-28).
Regarding claim 5, Konstorum discloses the medical device of claim 4, wherein the actuation assembly (132) includes a spring (col. 6, ll. 64-66 and col. 7, ll. 3-28) configured to bias the locking portion (136) toward the engaged state.
Regarding claim 6, Konstorum discloses the medical device of claim 1, wherein the operating member (132/134) has an arced shape (Fig. 12).
Regarding claim 7, Konstorum discloses the medical device of claim 1, wherein the serrated section (interpreted as notched; 54/58) extends along a rounded portion of the handle (114; Fig. 12).
Regarding claim 8, Konstorum discloses the medical device of claim 1, wherein the operating member (132/134) is configured to rotate proximally or distally relative to the outer surface of the handle (133; Fig. 12; col. 6, ll. 46-50).
Regarding claim 9, Konstorum discloses the medical device of claim 1, wherein the operating member (132/134) is configured to deflect the distal end of the shaft (col. 6, ll. 43-49).
Regarding claim 10, Konstorum discloses the medical device of claim 1, wherein the locking portion (136) is configured to rotate into and out of each indentation of the plurality of indentations (58; col. 7, ll. 3-35).
Regarding claim 11, Konstorum discloses a medical device (110; Fig. 12) comprising: a shaft (112; Fig. 12) extending from a proximal end to a distal end; and a handle (114; Fig. 12) coupled to the proximal end of the shaft (112) and including an actuation assembly (132; Fig. 12) actuatable via single finger of a user (col. 7, ll. 50-57), the actuation assembly including: an operating member (132/134; Fig. 12) operably coupled to structure at the distal end of the shaft (112), wherein the operating member (132/134) is configured to rotate relative to the handle proximally and distally (133; col. 6, ll. 46-50; Fig. 12); and a locking portion (136; Fig. 12) configured to rotate between an engaged state (col. 7, ll. 3-28) and a released state (col. 7, ll. 29-35), wherein, in the engaged state, the locking portion (136) is engaged with a serrated section (54/58; Fig. 12; interpreted as notched) on an outer surface of the handle (114) preventing rotation of the operating member (132) relative to the outer surface of the handle (114; col. 7, ll. 3-28), wherein, in the released state, the locking portion (136) is released from the serrated section (54/58; Fig. 12) permitting rotation of the operating member (132) relative to the outer surface of the handle (114; col. 7, ll. 29-35), and wherein the serrated section (54/58; interpreted as notched) extends along a rounded portion of the handle (114 Fig. 12).
Regarding claim 12, Konstorum discloses the medical device of claim 11, wherein the serrated section (54/58; Fig. 12) extends longitudinally along the outer surface of the handle (114; Fig. 120, and wherein the serrated section includes a plurality of indentations (58; col. 7, ll. 11-17).
Regarding claim 14, Konstorum discloses the medical device of claim 11, wherein the actuation assembly (132) includes a spring configured to bias the locking portion toward the engaged state (col. 6, ll. 64-66 and col. 7, ll. 3-28).
Regarding claim 15, Konstorum discloses the medical device of claim 11, wherein the operating member (132/134) and the locking portion (136) are separate parts.
Regarding claim 16, Konstorum discloses the medical device of claim 15, wherein the operating member (132/134; Fig. 12) comprises a slot extending therethrough (Fig. 12 – portion of 132 in which 136 is disposed), and the locking portion (136) is positioned within the slot (Fig. 12).
Regarding claim 17, Konstorum discloses the medical device of claim 15, wherein the actuation assembly (136) includes a spring coupled to an end of the locking portion (col. 6, ll. 64-66 and col. 7, ll. 3-28).
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) 2-3, 13 and 18-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Konstorum (US 8,864,656 B2) in view of Walish et al (US 2016/0166129 A1) in view of Barenboym et al. (US 8,992,470 B2).
Regarding claim 2, Konstorum discloses the medical device of claim 1, but does not specifically disclose wherein the operating member includes a plurality of gripping features. It is well-known in the art to provide gripping features on operating members of medical devices. Walish and Barenboym are cited as two of several references in the art that teach providing such gripping features on an operating member. Walish teaches providing gripping ridges (62; Fig. 1A; par. [0076]) on its operating member (54; Fig. 1A; par. [0076]) to aid the operator in moving the operating member. Similarly, Barenboym teaches providing gripping elements (133; col. 2, ll. 34-37; Fig. 1) on its operating member (130; Fig. 1) to facilitate secure control with the user’s finger. It would have been obvious to one having ordinary skill in the art to provide the gripping ridges on the operating member of Konstorum in order to provide tactile feedback to the user that they are contacting the operating member and to facilitate secure control of the operating member with the user’s finger, as taught by Walish and Barenboym, and as well-known in the art.
Regarding claim 3, Konstorum in view of Walish in view of Barenboym disclose the medical device of claim 2, wherein the plurality of gripping features comprises ridges or cutouts (Walish: 62; Barenboym: 133).
Regarding claim 13, Konstorum discloses the medical device of claim 11, but does not specifically disclose wherein the operating member includes a plurality of gripping features that comprise ridges or cutouts. It is well-known in the art to provide gripping features that comprise ridges or cutouts on operating members of medical devices. Walish and Barenboym are cited as two of several references in the art that teach providing such gripping features on an operating member. Walish teaches providing gripping ridges (62; Fig. 1A; par. [0076]) on its operating member (54; Fig. 1A; par. [0076]) to aid the operator in moving the operating member. Similarly, Barenboym teaches providing gripping elements including ridges (133; col. 2, ll. 34-37; Fig. 1) on its operating member (130; Fig. 1) to facilitate secure control with the user’s finger. It would have been obvious to one having ordinary skill in the art to provide the gripping ridges on the operating member of Konstorum in order to provide tactile feedback to the user that they are contacting the operating member and to facilitate secure control of the operating member with the user’s finger, as taught by Walish and Barenboym, and as well-known in the art.
Regarding claim 18, Konstorum discloses a medical device (110; Fig. 12) comprising: a shaft (112; Fig. 12) extending from a proximal end to a distal end; and a handle (114; Fig. 12) coupled to the proximal end of the shaft (112), wherein the handle includes an actuation assembly (132; Fig. 12) and a serrated section (interpreted as notched; 54/58; Fig. 12) including a plurality of indentations (58) on an outer surface of the handle (114; Fig. 12), and wherein the actuation assembly includes: an operating member (132/134; Fig. 12) operably coupled to structure at the distal end of the shaft (112); and a locking portion (136; Fig. 12), wherein the locking portion (136) is configured to rotate into an indentation of the plurality of indentations (58) to an engaged state (col. 7, ll. 3-28) to lock the operating member (132/134) in a desired position, and wherein the locking portion (136) is configured to rotate out of the indentation of the plurality of indentations (58) to a released state (col. 7, ll. 29-35), to permit rotation of the operating member relative to the outer surface of the handle (114; Fig. 12).
However, Konsotrum does not specifically disclose wherein the operating member includes a plurality of gripping features. It is well-known in the art to provide gripping features on operating members of medical devices. Walish and Barenboym are cited as two of several references in the art that teach providing such gripping features on an operating member. Walish teaches providing gripping ridges (62; Fig. 1A; par. [0076]) on its operating member (54; Fig. 1A; par. [0076]) to aid the operator in moving the operating member. Similarly, Barenboym teaches providing gripping elements (133; col. 2, ll. 34-37; Fig. 1) on its operating member (130; Fig. 1) to facilitate secure control with the user’s finger. It would have been obvious to one having ordinary skill in the art to provide the gripping ridges on the operating member of Konstorum in order to provide tactile feedback to the user that they are contacting the operating member and to facilitate secure control of the operating member with the user’s finger, as taught by Walish and Barenboym, and as well-known in the art.
Regarding claim 19, Konstorum in view of Walish in view of Barenboym disclose the medical device of claim 18, wherein the plurality of gripping features comprises ridges or cutouts (Walish: 62; Barenboym: 133).
Regarding claim 20, Konstorum in view of Walish in view of Barenboym disclose the medical device of claim 18, wherein the locking portion is biased toward the engaged state (col. 7, ll. 3-28).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RYNAE E BOLER whose telephone number is (571)270-3620. The examiner can normally be reached Mon - Fri 9:00-5:00.
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/RYNAE E BOLER/Examiner, Art Unit 3795
/ANHTUAN T NGUYEN/Supervisory Patent Examiner, Art Unit 3795
06/17/26
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