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 .
This action is in response to the amendment and remarks received on April 7, 2026.
Response to Arguments
Applicant’s arguments filed April 7, 2026 with respect to the amendment to the pending claims has been fully considered and is persuasive. Therefore, the 35 USC 102(a)(1) rejection has been withdrawn. However, upon further consideration, a new grounds of rejection is made in view of REITZE (US 4,718,803) and GOODSTEIN (US 1,910,688).
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 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.
Claims 1-6 and 9-14 are rejected under 35 U.S.C. 103 as being unpatentable over REITZE (US 4,718,803) in view of GOODSTEIN (US 1,910,688).
In reference to claim 1, REITZE discloses a staple 30 comprising: a backspan 31 extending between a first leg and a second leg 32; a first bend (see Diagram I below) between the first leg and the backspan; a second bend (see Diagram I below) between the second leg and the backspan; a first recess 33 (see Diagram I below) at the first bend; a second recess 33 (see Diagram I below) at the second bend; wherein figure 4 illustrates the surgical staple in a pre-deployed configuration where both recesses and both legs are closer to an (inner) first side of the backspan than an opposing second side of the backspan; wherein figures 1 and 2 illustrates the surgical staple in a deployed configuration in which both recesses and both legs are closer to an (inner) first side of the backspan than an opposing second side of the backspan; the first side of the backspan 31 configured to abut a substrate 20, 21 in the deployed configuration (figures 1 and 2).
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Diagram I
REITZE discloses each recess positioned at a curved section/bend of the staple rather than included within the curved section/bend. GOODSTEIN teaches a staple (figure 6) having a backspan 9 extending between a first staple leg 10 and a second staple leg 10; a first bend between the first staple leg and the backspan; a second bend between the second staple leg and the backspan; wherein each bend is includes a curved section in which each recess 15 is positioned entirely within each curved section of the bends. It would have been obvious to one having ordinary skill in the art at the time of filing the invention to have modified the position of each recess in the staple of REITZE to be within the curved section since page 3 lines 21-29 of GOODSTEIN suggests such a modification facilitates movement/formation of the staple legs relative to the backspan.
Regarding claim 2, column 2 lines 12-15 of REITZE further discloses the first recess 33 at the first bend as a configuration configured to reduce the force required to move the first leg (i.e. weaken) at the first bend (figure 2).
With respect to claim 3, figure 2 of REITZE further discloses a gap between the first and second staple legs 22 and the backspan 31 in the deployed configuration in which the substrate is supported.
In reference to claim 4 and 5, figure 2 of REITZE discloses a gap between the first and second staple legs 22 and the backspan 31 in the deployed configuration in which the substrate is supported, but does not disclose the specific dimensions of the gap.
It would have been obvious to one having ordinary skill in the art at the time the invention was filed to form the gap of less than or greater to 0.3048 millimeters since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art.1 Furthermore, it is well known in the art of stapling that the gap formed between the backspan and the legs of the staple in the deployed configuration are contingent upon the thickness of the substrate to which the staple is secured.
In reference to claim 6, figure 1 of REITZE discloses the backspan 31 having a rectilinear configuration (column 2 lines 58-65)
Regarding claims 9, 10 and 12, figure 4 of REITZE discloses the first recess formed in a curvilinear inner side of the first bend, the first bend further having an outer curvinlinear side formed from a deformation of a wire defining the staple (column 2 lines 58-61).
With respect to claim 11, figure 11 of REITZE discloses the first and second legs 32 having a rectilinear configuration (column 2 lines 58-65).
In reference to claim 13, column 3 lines 3-7 of REITZE discloses a stapler comprising a cartridge (e.g. carriage) configured to house the staple 30.
Regarding claim 14, column 3 lines 3-10 of REITZE further discloses the stapler to comprise and anvil 40 that opposes the cartridge (e.g. carriage).
Claims 13-18 are rejected under 35 U.S.C. 103 as being unpatentable over HUANG et al. (US 2016/0100837) in view of REITZE (US 4,718,803) and GOODSTEIN (US 1,910,688).
With respect to claim 13-15, HUANG et al. discloses a stapler (figure 1) comprising: a cartridge 140, 240 housing a plurality of staples 285 formed from a wire (paragraph [0047]); an anvil 130 opposing the cartridge; and a cutting mechanism (figure 2) having an elongated member 160 supporting a cutting surface 163 at a distal end of the elongated member 160, and an elongated slot (figure 5) extending a portion of the length of the elongated member at the distal end (figure 2; See Diagram II below of Figure 5). Although figure 8 of HUANG et al. discloses the wire staples 285 to have a backspan extending between a first and second bend in a pre-deployed configuration, HUANG et al. does not disclose the wire staples 285 having a recess at the bends as claimed.
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Diagram II
REITZE teaches a staple 30 comprising: a backspan 31 extending between a first leg and a second leg 32; a first bend (see Diagram I below) between the first leg and the backspan; a second bend (see Diagram I below) between the second leg and the backspan; a first recess 33 (see Diagram I below) at the first bend; a second recess 33 (see Diagram I below) at the second bend; wherein figure 4 illustrates the surgical staple in a pre-deployed configuration where both recesses and both legs are closer to an (inner) first side of the backspan than an opposing second side of the backspan; wherein figures 1 and 2 illustrates the surgical staple in a deployed configuration in which both recesses and both legs are closer to an (inner) first side of the backspan than an opposing second side of the backspan; the first side of the backspan 31 configured to abut a substrate 20, 21 in the deployed configuration (figures 1 and 2). REITZE discloses each recess positioned at a curved section/bend of the staple rather than included within the curved section/bend. GOODSTEIN teaches a staple (figure 6) having a backspan 9 extending between a first staple leg 10 and a second staple leg 10; a first bend between the first staple leg and the backspan; a second bend between the second staple leg and the backspan; wherein each bend is includes a curved section in which each recess 15 is positioned entirely within each curved section of the bends. It would have been obvious to one having ordinary skill in the art at the time of filing the invention to have modified the position of each recess in the staple of REITZE to be within the curved section since page 3 lines 21-29 of GOODSTEIN suggests such a modification facilitates movement/formation of the staple legs relative to the backspan.
It would have been further obvious to one having ordinary skill in the art at the time of filing the invention to provide the stapler of HUANG et al. with staples formed with a a first and second recess in the curved section/bends of the wire staples as modified by REITZE in view of GOODSTEIN since column 2 lines 12-15 of REITZE states such a modification weakens the wire for the purpose of forming the wire staple into the pre-deployed configuration.
In reference to claim 16, HUANG et al. further discloses the elongated slot of the elongated member 160 to have a proximal slot portion, an intermediate slot portion and a distal slot portion (figure 5); wherein the distal slot portion extends higher than the proximal slot portion (see Diagram II of figure 5 above).
Regarding claim 17, HUANG et al. discloses the stapler further comprising a clamping member 114 detachably engaged (paragraph [0028]) by the distal portion 164 of the elongated member 160.
With respect to claim 18, figure 5 of HUANG et al. discloses the stapler further comprising a staple pusher 170 detachably engaged by a distal portion 162 of the elongated member 160.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/GLORIA R WEEKS/Primary Examiner, Art Unit 3731
March 10, 2023
1 In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 198C).
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