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 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.
Claim 6 is 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.
Regarding Claim 6, the limitation “wherein an end of the snagging prevention member comes in contact with a compressing member which protrudes toward the inside of the trocar on a distal end surface of the trocar or at the distal end side of the trocar.” is indefinite because its unclear whether Applicant is attempting to positively recite the trocar as this limitation is not written as functional language. Claim 6 has yet to positively recite the trocar. The Examiner suggests amending the claims to clearly positively recite the trocar as part of the tissue removal module.
Allowable Subject Matter
Claim 6 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The prior art of record fails to disclose the removal module of Claim 4, a trocar in use with the snagging prevention member, wherein an end of the snagging prevention member comes in contact with a compressing member which protrudes toward the inside of the trocar on a distal end surface of the trocar or at the distal end side of the trocar.
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) 1-5 and 7 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Cho (KR-21216702003-A)
Regarding Claim 1, Cho teaches a removal module of a tissue removal apparatus, the removal module comprising:
a bending portion (300; Figure 1), which is connected to a distal end of a catheter (200; Figure 1), and which is bent with a predetermined curvature by the user's manipulation at the distal end of the catheter (200; see Figure 6); and
a tissue removal portion (400; Figure 1) which is exposed on the bending portion along with a shaft (420; Figure 1) that moves forward and backward by user's manipulation when the bending portion (300) is bent (Figure 6),
wherein the tissue removal portion (400), when exposed to the outside at a distal end of a trocar and then inserted into the inside of the trocar, is inserted into the inside of the trocar while being deformed so as not to be snagged on a distal end side of the trocar (Figure 6).
The Examiner notes that “when exposed to the outside at a distal end of a trocar and then inserted into the inside of the trocar, is inserted into the inside of the trocar while being deformed so as not to be snagged on a distal end side of the trocar” is functional language and a trocar is not yet positively recited in the claims. It is the Examiner’s position that the device of Cho can be retracted within a sheath while in the configuration of Figure 6 and thus reads on the limitation.)
Regarding Claim 2, Cho teaches the removal module of Claim 1, wherein the bending portion (300) comprises:
an insertion member (see Figure 5 in which insertion member is the proximal most section inserted into 200) inserted into a hole formed at the distal end of the catheter (200; Figure 5); and
a bending member (310), which is integrally connected to the insertion member and is bent to a predetermined curvature (see Figures 6-7).
Regarding Claim 3, Cho teaches the removal module of Claim 2, wherein the bending portion (300) is formed along the longitudinal direction of the bending member and comprises a seating groove (301; Figure 5) on which the shaft (420) passing through the distal end of the catheter (200) is seated (Figure 1 and Figure 5).
Regarding Claim 4, Cho teaches the removal module of Claim 1, wherein the tissue removal portion (400) comprises:
a receiving member (410), while accommodating the shaft, which is joined to a portion of a circumferential surface of the shaft (420; Figure 5);
a blade, which is connected to the receiving member and which is in contact with the tissue to be removed (blades best seen in Figure 7); and
a snagging prevention member (proximal most section of the blade), which is provided at a longitudinal end of the receiving member (410) and which is pre- inserted into the inside of the trocar prior to the blade (see annotated Figure 7 below)
The Examiner notes that the trocar is yet to be positively recited in the claims and thus it’s the Examiner’s position that the proximal most blade can be inserted into trocar prior to a distal most blade portion.
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Regarding Claim 5, Cho teaches the removal module of Claim 4, wherein an end of the snagging prevention member has a downwardly inclined shape (See annotated Figure 7 above).
Regarding Claim 7, Cho teaches the removal module of Claim 4, wherein it is possible for the blade to be inserted into the inside of the trocar through an incision groove formed by an incision at the distal end side of the trocar.
The Examiner notes that the trocar is yet to be positively recited in the claims and thus it’s the Examiner’s position that the blade can be inserted into trocar through an incision groove formed by the trocar, as this limitation is an intended use.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MOHAMED GAMIL GABR whose telephone number is (571)272-0569. The examiner can normally be reached M-F 9am-5pm.
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, Jackie Ho can be reached at (571) 270-5953. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MOHAMED G GABR/Primary Examiner, Art Unit 3771
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