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)(4) because:
reference characters "202b" and "202a" have both been used to designate the first arm in Figs. 6 and 7 (Examiner’s note: it appears that Figs. 6 and 7 are from a side perspective, wherein one arm should appear on top of the other arm, therefore, it is the Examiner’s perspective that only one arm should be referenced / designated in each of the Figs. 6 and 7);
reference characters "202b" and "202a" have been used to designate both the first / second arms and the tip (see Fig. 8);
reference character “203a” is missing an arrow in Fig. 14;
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.
Claim Objections
Claims 6, 14, 16, and 20 are objected to because of the following informalities:
Claim 6 recites “the one-way barb permits insertion”, although the line is understood by the Examiner to mean “the one-way barb is configured to permit insertion” as the limitation is a functional limitation in an apparatus claim, the Examiner suggests the line be amended to recite mean “the one-way barb is configured to permit insertion” for the purpose of maintaining consistent language throughout the claims;
Claim 14 recites “the proximal end” and “the distal end” in line 6, although the lines do not rise to the level of being indefinite as the lines are understood by the Examiner to mean “the proximal portion” and “the distal portion” as previously defined in the claims and defined in Applicant’s disclosure, the Examiner suggests the lines be amended to read “the proximal portion” and “the distal portion” for the purpose of maintaining consistent language throughout the claims;
Claim 16 recites “the second locking interface prevents”, although the line is understood by the Examiner to mean “the second locking interface is configured to prevent” as the limitation is a functional limitation in an apparatus claim, the Examiner suggests the line be amended to recite mean “the second locking interface is configured to prevent” for the purpose of maintaining consistent language throughout the claims;
Claim 20 recites “alignment feature” in lines 2 and 3, although the line(s) does/do not rise to the level of being indefinite as the “alignment feature” of claim 20 is understood to be a different “alignment feature” from the “alignment feature” defined in claim 14 by the Examiner, the Examiner suggests the “alignment feature” in claim 14 (and every instance thereof) be amended to read “first alignment feature” and the “alignment feature” in claim 20 (and every instance thereof) be amended to read “second alignment feature” for the purpose of further differentiating the two structures;
Appropriate correction is required.
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:
the generic placeholders are the “first” and “second” “locking interface(s)” in claims 5 and 16, which is coupled to the functional language “prevent the anti-splay wing from being withdrawn from the receiving body”, “an alignment feature” in claims 9 and 20, which is coupled to the functional language “feature that aligns ”, “an alignment feature” in claim 14, which is coupled to the functional language “maintain the alignment of the first and second arm”. Furthermore, there are no structural modifiers either preceding or following the generic placeholders within each of the claims. For the purpose of examination, the ““first” and “second” “locking interface(s)” in claims 5 and 16 will be read as a barb and a lip, respectively (which is the disclosed corresponding structure, as described in paragraph [0034] of the instant specification) or an equivalent structure (which is any structure that performs the identical function of the generic placeholder(s) specified in the claim in substantially the same way); “an alignment feature” in claims 9 and 20 will be read as a ridge and a groove (which is the disclosed corresponding structure, as described in paragraph [0031] of the instant specification) or an equivalent structure (which is any structure that performs the identical function of the generic placeholder(s) specified in the claim in substantially the same way); and the “an alignment feature” in claim 14, will be read as an anti-splay wing / bar and a receiving body / a channel (which is the disclosed corresponding structure, as described in paragraph [0034] of the instant specification) or an equivalent structure (which is any structure that performs the identical function of the generic placeholder(s) specified in the claim in substantially the same way).
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.
Claims 1 – 5, 8 – 10, 14 – 16, and 19 – 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Guo et al (CN 115281773 A) (cited translated PDF attached).
Regarding claims 1 and 2, Guo discloses a surgical instrument (hemostatic rescue device 1) (abstract, pg. 2 para. [0002], pg. 5 para. [0001] – pg. 6 para. [0002], and Fig. 1) comprising:
a first arm (designated in annotated Fig. 1) pivotably connected to a second arm (designated in annotated Fig. 1) at a pivot (designated in annotated Fig. 1), wherein the first arm and the second arm form a distal portion (see annotated Fig. 1);
a first shank (designated in annotated Fig. 1) connected to a second shank (designated in annotated Fig. 1) at the pivot (designated in annotated Fig. 1), wherein the first shank and the second shank form a proximal portion (see annotated Fig. 1);
a handle (clamp body 102 and designated in annotated Fig. 1) at an end of the proximal portion (pg. 5 para. [0001 – 0005], see annotated Fig. 1, and Fig. 2); and
a grasping tip (designated in annotated Fig. 1) at an end of the distal portion (see annotated Fig. 1), wherein:
the first shank (designated in annotated Fig. 1) includes a receiving body (arc sliding hole 1021 and power assisted spring 2; designated in annotated Fig. 1),
the second shank (designated in annotated Fig. 1) includes an anti-splay wing (arc sliding rod 1011 and designated in annotated Fig. 1),
slidable engagement of the anti-splay wing and the receiving body maintains (pg. 5 para. [0005] – pg. 6 paragraph [0001]) alignment of the first arm and the second arm as the surgical instrument transitions between an open configuration (configuration shown in Figs. 4) and a closed configuration (configuration shown in Figs. 1 – 3) (pg. 5 para. [0005] – pg. 6 paragraph [0001]) (Examiner’s note: it should be understood that the preceding limitation is an intended use limitation, which requires only that the structure of the prior art be capable of functioning as intended; with that said, the fixed path of the designated anti-splay wing through the receiving body prevents lateral movement of the shanks attached thereto, and thus the designated structures are capable of functioning as claimed), and
at least an end of the anti-splay wing (arc sliding rod 1011) is substantially contained by the receiving body (arc sliding hole 1021 and power assisted spring 2) when the surgical instrument is in the closed configuration (configuration shown in Figs. 1 - 3) and [claim 2] in the open configuration (configuration shown in Fig. 4) (Examiner’s note: the term “substantially” is a broad term, and the designated end portion, shown in annotated Fig. 1, is “substantially” contained in the spring 2 (i.e., the receiving body) as shown in Figs. 1 and 4).
Annotated Figure 1 of Guo
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Regarding claim 3, Guo discloses wherein:
the receiving body (arc sliding hole 1021 and power assisted spring 2) is an at least partially closed sleeve (power assisted spring 2) that defines a curved channel (pg. 5 paragraph [0005] and Figs. 1 – 4), and
engagement of the anti-splay wing (arc sliding rod 1011) with one or more sidewalls (sidewalls of the arc sliding hole 1021 and spring 2) of the curved channel maintains the alignment of the first arm and the second arm as the surgical instrument transitions between the open configuration and the closed configuration (Examiner’s note: it should be understood that the preceding limitation is an intended use limitation, which requires only that the structure of the prior art be capable of functioning as intended; with that said, the fixed path of the designated anti-splay wing through the receiving body prevents lateral movement of the shanks attached thereto, and thus the designated structures are capable of functioning as claimed).
Regarding claim 4, Guo discloses wherein:
the receiving body (arc sliding hole 1021 and power assisted spring 2) has a length that is substantially the same as a length of the anti-splay wing (arc sliding rod 1011) (Examiner’s note: the term “substantially” is a broad term and does not require exact parameters; therefore, based on Fig. 1 the spring 2 (i.e., the receiving body) is considered to have a length that is “substantially” the same as the length of the arc sliding rod 1011 (i.e., the anti-splay wing)); and
the receiving body (arc sliding hole 1021 and power assisted spring 2) has a curvature that is substantially the same as a curvature of the anti-splay wing (arc sliding rod 1011) (Fig. 1 / annotated Fig. 1).
Regarding claim 5, Guo discloses wherein:
the anti-splay wing (arc sliding rod 1011) includes a first locking interface(112f) (bulbous portion of the designated end of the arc sliding rod 1011) (see annotated Fig. 1), the receiving body (arc sliding hole 1021 and power assisted spring 2) includes a second locking interface (face of the power spring 2 closest to the bulbous portion of the designated end of the arc sliding rod 1011) configured to engage the first locking interface (Figs. 1 – 4), engagement of the first locking interface with the second locking interface prevents the anti-splay wing from being withdrawn from the receiving body (pg. 5 para. [0005], claims 3, 4, and Figs. 1 – 4).
Regarding claim 8, Guo discloses further comprising: a ratchet (arc rack 1012 and designated in annotated Fig. 1) disposed on one or more of the first and second shanks (pg. 5 paragraph [0006], and Figs. 1 – 9), and configured to secure the first arm with the second arm in the closed configuration (pg. 5 paragraph [0006] – pg. 6 paragraph [0002], and Figs. 1 – 9).
Regarding claims 9 and 10, Guo discloses further comprising: an alignment feature (tooth and opposing groove space; designated in annotated Fig. 1) disposed on the first and second arms between the pivot and the grasping tip (see annotated Fig. 1), and comprising a ridge (tooth) on one of the first or the second arm and a groove (opposing groove space) on the other of the first or second arm, the groove is sized to receive the ridge (see Fig. 1 / annotated Fig. 1), wherein the alignment feature (tooth and opposing groove space; designated in annotated Fig. 1) is completely contained on opposing inside surfaces of the first and second arms and the groove receiving the ridge maintains the alignment of the first arm and the second arm as the surgical instrument transitions to the closed configuration (Examiner’s note: as shown in Fig. 1 / annotated Fig. 1, neither of the tooth nor groove jut out from the arms, thus both are completely contained in the inside surfaces of the first and second arms; and the frictional engagement between the tooth and the groove helps prevent the arms from sliding relative to each other laterally, thus the alignment feature is configured as claimed).
Regarding claim 14, Guo discloses a surgical instrument (hemostatic rescue device 1) (abstract, pg. 2 para. [0002], pg. 5 para. [0001] – pg. 6 para. [0002], and Fig. 1) comprising:
a first arm (designated in annotated Fig. 1) pivotably connected to a second arm (designated in annotated Fig. 1) at a pivot (designated in annotated Fig. 1), wherein the first arm and the second arm form a distal portion (see annotated Fig. 1);
a first shank (designated in annotated Fig. 1) connected to a second shank (designated in annotated Fig. 1) at the pivot (designated in annotated Fig. 1), wherein the first shank and the second shank form a proximal portion (see annotated Fig. 1);
wherein the proximal portion includes a handle (clamp body 102 – Fig. 3) and the distal portion including a grasping tip (designated in annotated Fig. 1); and
an alignment feature (arc sliding hole 1021, power assisted spring 2, and arc sliding rod 1011; designated in annotated Fig. 1) coupling the first shank with the second shank (see annotated Fig. 1), wherein the alignment feature maintains alignment of the first arm and the second arm as the surgical instrument transitions between an open configuration (configuration shown in Figs. 4) and a closed configuration (configuration shown in Figs. 1 – 3) (pg. 5 para. [0005] – pg. 6 paragraph [0001]) (Examiner’s note: it should be understood that the preceding limitation is an intended use limitation, which requires only that the structure of the prior art be capable of functioning as intended; with that said, the fixed path of the designated anti-splay wing through the receiving body prevents lateral movement of the shanks attached thereto, and thus the designated structures are capable of functioning as claimed), and
wherein the alignment feature (arc sliding hole 1021, power assisted spring 2, and arc sliding rod 1011) is contained (partially) on opposing inside surfaces of either the first shank or the second shank (Fig. 1 / annotated Fig. 1) and [claim 15] comprising an anti-splay wing (arc sliding rod 1011) on the first shank and a receiving body (arc sliding hole 1021 and power assisted spring 2) on the second shank (see annotated Fig. 1); and
[claim 16] the anti-splay wing (arc sliding rod 1011) includes a first locking interface (bulbous portion of the designated end of the arc sliding rod 1011) (see annotated Fig. 1), the receiving body (arc sliding hole 1021 and power assisted spring 2) includes a second locking interface (face of the power spring 2 closest to the bulbous portion of the designated end of the arc sliding rod 1011) configured to engage the first locking interface (Figs. 1 – 4), engagement of the first locking interface with the second locking interface prevents the anti-splay wing from being withdrawn from the receiving body (pg. 5 para. [0005], claims 3, 4, and Figs. 1 – 4).
Annotated Figure 1 of Guo
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Regarding claim 19, Guo discloses further comprising: a ratchet (arc rack 1012 and designated in annotated Fig. 1) disposed on one or more of the first and second shanks (pg. 5 paragraph [0006], and Figs. 1 – 9), and configured to secure the first arm with the second arm in the closed configuration (pg. 5 paragraph [0006] – pg. 6 paragraph [0002], and Figs. 1 – 9).
Regarding claim 20, Guo discloses further comprising: an alignment feature (tooth and opposing groove space; designated in annotated Fig. 1) disposed on the first and second arms between the pivot and the grasping tip (see annotated Fig. 1), wherein the alignment feature (tooth and opposing groove space; designated in annotated Fig. 1) is completely contained on opposing inside surfaces of the first and second arms (Examiner’s note: as shown in Fig. 1 / annotated Fig. 1, neither of the tooth nor groove jut out from the arms, thus both are completely contained in the inside surfaces of the first and second arms).
Claims 1, 5, 6, and 14 – 17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Chappuis et al (US 5,653,729).
Regarding claim 1, Chappuis discloses a surgical instrument (medical instrument 10) (abstract, col. 1 lines 55 – 67, col. 2 line 34 – col. 3 line 3, and Figs. 1 – 4) comprising:
a first arm (right jaw 14 – looking at Fig. 1) pivotably connected to a second arm (left jaw 14 – looking at Fig. 1) at a pivot (col. 2 lines 34 – 40 and Fig. 1), wherein the first arm and the second arm form a distal portion (portion extending from the pivot to the tip of the jaws 12 – Fig. 1);
a first shank (right handle body 18 – looking at Fig. 1) connected to a second shank at the pivot (col. 2 lines 34 – 40 and Fig. 1), wherein the first shank and the second shank form a proximal portion (portion extending from the pivot to the proximal most end of the ends 24 – Fig. 1);
a handle (ends 24 / portions extending past the releasable lock means 28) at an end of the proximal portion (col. 2 lines 34 – 60 and Fig. 1); and
a grasping tip (tip of the jaws 14 – Fig. 1) at an end of the distal portion (Fig. 1), wherein:
the first shank (right handle body 18 – looking at Fig. 1) includes a receiving body (first means 30) (col. 2 line 61 – col. 3 line 3 and Figs. 1 – 4),
the second shank (left handle body 18 – looking at Fig. 1) includes an anti-splay wing (second means 32) (col. 2 line 61 – col. 3 line 3 and Figs. 1 – 4),
slidable engagement of the anti-splay wing and the receiving body (first and second means 30 and 32) maintains (col. 2 line 61 – col. 3 line 12 and Figs. 1 – 4) alignment of the first arm and the second arm as the surgical instrument transitions between an open configuration and a closed configuration (Examiner’s note: it should be understood that the preceding limitation is an intended use limitation, which requires only that the structure of the prior art be capable of functioning as intended; with that said, the fixed path of the designated anti-splay wing through the receiving body prevents lateral movement of the shanks attached thereto, and thus the designated structures are capable of functioning as claimed), and
at least an end of the anti-splay wing (second means 32) is substantially contained by the receiving body (first means 30) when the surgical instrument is in the closed configuration (Fig. 1).
Regarding claims 5 and 6, Chappuis discloses wherein:
the anti-splay wing (second means 32) includes a first locking interface which is a one-way barb (holding means 38) disposed at the end of the anti-splay wing (second means 32) (col. 3 lines 4 – 12 and Figs. 1 – 4);
the receiving body (first means 30) includes a second locking interface which is a lip (hooks 42) that narrows an entrance of the receiving body (first means 30) and configured to engage the first locking interface (col. 3 lines 4 – 12 and Figs. 1 – 4),
engagement of the first locking interface with the second locking interface prevents the anti-splay wing from being withdrawn from the receiving body (col. 3 lines 13 – 36); and
the one-way barb (holding means 38) permits insertion of the anti-splay wing into the entrance of the receiving body but prevents inadvertent withdrawal of the anti-splay wing from the entrance of the receiving body (Figs. 1 – 4).
Regarding claim 14, Chappuis discloses a surgical instrument (medical instrument 10) (abstract, col. 1 lines 55 – 67, col. 2 line 34 – col. 3 line 3, and Figs. 1 – 4) comprising:
a first arm (right jaw 14 – looking at Fig. 1) pivotably connected to a second arm (left jaw 14 – looking at Fig. 1) at a pivot (col. 2 lines 34 – 40 and Fig. 1), wherein the first arm and the second arm form a distal portion (portion extending from the pivot to the tip of the jaws 12 – Fig. 1);
a first shank (right handle body 18 – looking at Fig. 1) connected to a second shank at the pivot (col. 2 lines 34 – 40 and Fig. 1), wherein the first shank and the second shank form a proximal portion (portion extending from the pivot to the proximal most end of the ends 24 – Fig. 1);
wherein the proximal portion includes a handle (ends 24 / portions extending past the releasable lock means 28) and the distal portion including a grasping tip (tip of the jaws 14 – Fig. 1) (col. 2 lines 34 – 60 and Fig. 1); and
an alignment feature (locking means 28) coupling the first shank with the second shank (col. 2 line 61 – col. 3 line 12), wherein the alignment feature (locking means 28) maintains alignment of the first arm and the second arm as the surgical instrument transitions between an open configuration and a closed configuration (Examiner’s note: it should be understood that the preceding limitation is intended use which requires only that the structure of the prior art be capable of functioning as claimed; with that said the structure of the prior art is capable of functioning as claimed), and
wherein the alignment feature (locking means 28) is contained on opposing inside surfaces of either the first shank or the second shank (Figs. 1 – 4).
Regarding claim 15, Chappuis discloses wherein:
the alignment feature (locking means 28) further comprises an anti-splay wing (second means 32) and a receiving body (first means 30) (col. 2 line 61 – col. 3 line 12), the first shank includes the anti-splay wing (second means 32) (Fig. 1), and the second shank includes the receiving body (first means 30) (Fig. 1).
Regarding claims 16 and 17, Chappuis discloses wherein:
the anti-splay wing (second means 32) includes a first locking interface which is a one-way barb (holding means 38) disposed at the end of the anti-splay wing (second means 32) (col. 3 lines 4 – 12 and Figs. 1 – 4);
the receiving body (first means 30) includes a second locking interface which is a lip (hooks 42) that narrows an entrance of the receiving body (first means 30) and configured to engage the first locking interface (col. 3 lines 4 – 12 and Figs. 1 – 4),
engagement of the first locking interface with the second locking interface prevents the anti-splay wing from being withdrawn from the receiving body (col. 3 lines 13 – 36); and
the one-way barb (holding means 38) permits insertion of the anti-splay wing into the entrance of the receiving body but prevents inadvertent withdrawal of the anti-splay wing from the entrance of the receiving body (Figs. 1 – 4).
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.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Guo et al (CN 115281773 A) (cited translated PDF attached) as applied to claim 1 above, and further in view of Leveen (US 3,972,333).
Regarding claim 11, as discussed above, Guo discloses the surgical instrument of claim 1 above.
However, Guo is silent regarding (i) wherein the surgical instrument is formed from a polymer.
As to the above, Leveen teaches, in the same field of endeavor, a surgical instrument (tool 30) comprising a first arm and a second arm (fingers 15 and 14, respectively), a grasping tip (tip of fingers 15 and 14), a first shank and a second shank (arms 12 and 11, respectively), a handle (bowed portion 13), a receiving body (opening 18) on the first shank (arm 12) and an anti-splay wing (guide arm 17) on the second shank (arm 11), wherein the surgical instrument (tool 30) is made out of a polymer (flexible polymer) (abstract, col. 2 line 10 – col. 3 line 14, and Fig. 1 – 2).
It would have been obvious to one of ordinary skill in the art, prior to the effective filing date of the claimed invention, to modify the surgical instrument of Guo to be formed of a flexible polymer, based on the teachings of Leveen, as the flexible polymer is known to be successfully used to make similar surgical instruments and a person of ordinary skill in the art would have a reasonable expectation of success in making the surgical instrument of Guo out of the known flexible polymer, such that the results of the modification would be predictable.
Claims 12 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Guo et al (CN 115281773 A) (cited translated PDF attached) as applied to claim 1 above, and further in view of Corbin et al (US 12,310,606 B2).
Regarding claims 12 and 13, as discussed above, Guo discloses the surgical instrument of claim 1.
However, Guo is silent regarding (i) the handle deviates from the first and second shanks by an angle of departure that about 300.
As to the above (i), Corbin teaches, in the same field of endeavor, a surgical instrument (apparatus 100) comprising a first arm and a second arm (top and bottom jaw portions extending from the pivot / junction point 105 to the tip – Fig. 1), a grasping tip (tip of the jaws), a first and second shanks (portion of the tongs 101, 102 that extends along the reference line 165 – Fig. 1), and a handle (portion of tongs 101, 102 angled away from the reference line 165 – Fig. 1), wherein the handle deviates from the first and second shanks by an angle of departure that about 300 for the purpose of increasing the freedom of movement of the practitioner and giving the practitioner the ability to observe her/his actions from different vantage points (abstract, col. 3 lines 12 – 47, col. 4 lines 34 – 54, and Fig. 1).
It would have been obvious to one of ordinary skill in the art, prior to the effective filing date of the claimed invention, to modify handle of Guo to be angled from the shanks, based on the teachings of Corbin, for the purpose of increasing the freedom of movement of the practitioner and giving the practitioner the ability to observe her/his actions from different vantage points (col. 4 lines 34 – 54 – Corbin).
Claims 7, 11, and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Chappuis et al (US 5,653,729) as applied to claims 1 and 14 above, and further in view of Leveen (US 3,972,333).
Regarding claims 7 and 18, as discussed above, Chappuis discloses the surgical instrument of claims 1 and 14, respectively.
However, Chappuis is silent regarding (i) wherein the one-way barb is disposed on a flexible bar that is movable to permit disengagement of the one-way barb from the lip to permit withdrawal of the anti-splay wing from the receiving body.
As to the above, Leveen teaches, in the same field of endeavor, a surgical instrument (tool 30) comprising a first arm and a second arm (fingers 15 and 14, respectively), a grasping tip (tip of fingers 15 and 14), a first shank and a second shank (arms 12 and 11, respectively), a handle (bowed portion 13), a receiving body (opening 18) on the first shank (arm 12) and an anti-splay wing (guide arm 17) on the second shank (arm 11), wherein the surgical instrument (tool 30) is made out of a polymer (flexible polymer) (abstract, col. 2 line 10 – col. 3 line 14, and Fig. 1 – 2).
It would have been obvious to one of ordinary skill in the art, prior to the effective filing date of the claimed invention, to modify the surgical instrument of Chappuis to be formed of a flexible polymer, based on the teachings of Leveen, as the flexible polymer is known to be successfully used to make similar surgical instruments and a person of ordinary skill in the art would have a reasonable expectation of success in making the surgical instrument of Chappuis out of the known flexible polymer, such that the results of the modification would be predictable. Moreover, because the entire surgical instrument is modified to be made out of a flexible polymer, then the bar (i.e., the shaft of the second means 32), which contains the one-way barb (holding means 38), is flexible and is therefore moveable in the manner claimed. Thus, the limitations of claims 7 and 18 are encompassed by the modified device of the prior art.
Regarding claim 11, as discussed above, Chappuis discloses the surgical instrument of claim 1 above.
However, Chappuis is silent regarding (i) wherein the surgical instrument is formed from a polymer.
As to the above, Leveen teaches, in the same field of endeavor, a surgical instrument (tool 30) comprising a first arm and a second arm (fingers 15 and 14, respectively), a grasping tip (tip of fingers 15 and 14), a first shank and a second shank (arms 12 and 11, respectively), a handle (bowed portion 13), a receiving body (opening 18) on the first shank (arm 12) and an anti-splay wing (guide arm 17) on the second shank (arm 11), wherein the surgical instrument (tool 30) is made out of a polymer (flexible polymer) (abstract, col. 2 line 10 – col. 3 line 14, and Fig. 1 – 2).
It would have been obvious to one of ordinary skill in the art, prior to the effective filing date of the claimed invention, to modify the surgical instrument of Chappuis to be formed of a flexible polymer, based on the teachings of Leveen, as the flexible polymer is known to be successfully used to make similar surgical instruments and a person of ordinary skill in the art would have a reasonable expectation of success in making the surgical instrument of Chappuis out of the known flexible polymer, such that the results of the modification would be predictable.
Claims 12 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Chappuis et al (US 5,653,729) as applied to claim 1 above, and further in view of Corbin et al (US 12,310,606 B2).
Regarding claims 12 and 13, as discussed above, Chappuis discloses the surgical instrument of claim 1.
However, Chappuis is silent regarding (i) the handle deviates from the first and second shanks by an angle of departure that about 300.
As to the above (i), Corbin teaches, in the same field of endeavor, a surgical instrument (apparatus 100) comprising a first arm and a second arm (top and bottom jaw portions extending from the pivot / junction point 105 to the tip – Fig. 1), a grasping tip (tip of the jaws), a first and second shanks (portion of the tongs 101, 102 that extends along the reference line 165 – Fig. 1), and a handle (portion of tongs 101, 102 angled away from the reference line 165 – Fig. 1), wherein the handle deviates from the first and second shanks by an angle of departure that about 300 for the purpose of increasing the freedom of movement of the practitioner and giving the practitioner the ability to observe her/his actions from different vantage points (abstract, col. 3 lines 12 – 47, col. 4 lines 34 – 54, and Fig. 1).
It would have been obvious to one of ordinary skill in the art, prior to the effective filing date of the claimed invention, to modify handle of Chappuis to be angled from the shanks, based on the teachings of Corbin, for the purpose of increasing the freedom of movement of the practitioner and giving the practitioner the ability to observe her/his actions from different vantage points (col. 4 lines 34 – 54 – Corbin).
Related Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Zinkel (US 2004/0024291 A1), Wohl (US 2009/0264897 A1), Sullivan (US D644,734 S), Brennan et al (US 2006/0079931 A1), and Lowe (US 5156431 A) teach similar surgical instruments to the structure claimed in independent claims 1 and 14.
Conclusion
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/Andrew Restaino/Primary Examiner, Art Unit 3771
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