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 .
Examiner’s Note
The claim set as filed has improperly numbered claims. Specifically, there are two separate claims numbered “Claim 5”. For the purpose of examination, the claims have been renumbered accordingly with this renumbering being consistent throughout this office action and forms thereof.
The first five claims will remain Claims 1-5 with the ensuing ten claims being renumbered to Claims 6-15.
Disposition of Claims
Claims 1-15 are pending and rejected.
Claim Objections
Claims 1-15 are objected to because of the following informalities:
Regarding Claims 1-15, Claims 1-15 are objected to for being improperly numbered as there are two separate claims numbered “Claim 5”. Appropriate correction is required.
Regarding Claim 7, Claim 7 recites the limitation “an top handle” on Line 2. This is grammatically incorrect and should read “a top handle”. Appropriate correction is required.
Regarding Claim 8, Claim 8 recites the limitation “a front pate” on Lines 1-2. This appears to be a typographical error and should read “a first plate”. Appropriate correction is required.
Claim Rejections - 35 USC § 112(b)
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, Claim 6 recites the limitation “wherein said plurality of telescoping connectors includes three telescoping connectors [emphasis added]” on Lines 1-2. There is insufficient antecedent basis for this limitation in the claims. For the purpose of examination, “wherein said plurality of telescoping connectors includes three telescoping connectors” is being interpreted as “wherein a plurality of telescoping connectors, which include the telescoping connector, includes three telescoping connectors”.
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, 3-4 & 7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Dimitriou et al. (hereinafter "Dimitriou") (US 2007/0270640).
Regarding Claim 1, Dimitriou discloses an assembly (Fig. 1, 30; [0043]) comprising:
a) a tool attachment device (Fig. 1, 82; [0060]) comprising a tool locking assembly (Fig. 1, 84; [0060]);
b) an endoscope attachment device (Fig. 1, 38; [0043]) comprising an endoscope locking assembly (Fig. 1, 106; [0070]); and
c) a telescoping connector (Fig. 1, a tool coupling assembly comprising 32 and 34; [0043]) connecting said tool attachment device and said endoscope attachment device ([0043]).
The intended use language “lithotripter" and "nephroscope” do not positively recite any structural limitations so as to carry out the functions, accordingly the prior art Dimitriou can carry out the function, i.e. the intended use recited absent any specific structure recited to do so.
Regarding Claim 3, Dimitriou discloses the assembly of Claim 1. Dimitriou further discloses wherein said tool attachment device further comprises one or more additional components selected from the group consisting of a thumb groove and a keyhole shaped opening (Figs. 5 & 8, 46 as 104 are keys and therefore 46 is a keyhole opening; [0062] & [0067]).
Regarding Claim 4, Dimitriou discloses the assembly of Claim 1. Dimitriou further discloses wherein said telescoping connector comprises an outer telescope arm (Fig. 5, 32; [0043]), an inner telescope arm (Fig. 5, 34; [0043]), and a biasing member (Fig. 5, 76; [0056]).
Regarding Claim 7, Dimitriou discloses the assembly of Claim 1. Dimitriou further discloses wherein said endoscope attachment device further comprises one or more components selected from the group consisting of an top handle (Fig. 3, 112 wherein 112 is gripped by a user to tighten or loosen and therefore is a handle; [0070]) and a bottom handle.
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.
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 2 are rejected under 35 U.S.C. 103 as being unpatentable over Dimitriou et al. (hereinafter "Dimitriou") (US 2007/0270640) in view of Ewers et al. (hereinafter "Ewers") (US 2010/0286478).
Regarding Claim 2, Dimitriou discloses the assembly of Claim 1. Dimitriou fails to explicitly disclose wherein said tool locking assembly comprising a first collar portion, a second collar portion, and a releasable latch, wherein said latch holds said first collar portion and said second collar portion together when said latch is in a closed configuration.
However, Ewers teaches an assembly (Fig. 2A, 52; [0033]) comprising:
a) a tool attachment device (Fig. 2A, 78; [0035]) comprising a tool locking assembly (Fig. 2A, 82; [0036]);
b) an endoscope attachment device (Fig. 2A, 120; [0033]) comprising an endoscope locking assembly (Fig. 2A, 128; [0039]);
c) a connector (Fig. 2A, 70; [0034]) connecting said tool attachment device and said endoscope attachment device (see Fig. 2A);
wherein said tool locking assembly comprising a first collar portion (Figs. 3A-3C, 84; [0036]), a second collar portion (Figs. 3A-3C, 86; [0036]), and a releasable latch (Figs. 3A-3C, a wing nut assembly comprising 90 and 92; [0036]), wherein said latch holds said first collar portion and said second collar portion together when said latch is in a closed configuration ([0036]).
The advantage of the clamping-type locking assembly is to selectively tighten the locking assembly to accommodate various sized tools (Ewers; [0036]).
Therefore, it would have been obvious before the effective filing date of the claimed invention to someone with ordinary skill in the art to replace the spring-biased tool locking assembly as disclosed by Dimitriou, with the clamping-type locking assembly taught by Ewers, to selectively tighten the locking assembly to accommodate various sized tools (Ewers; [0036]).
Claims 5-6 are rejected under 35 U.S.C. 103 as being unpatentable over Dimitriou et al. (hereinafter "Dimitriou") (US 2007/0270640) in view of Sholev (US 2018/0168675).
Regarding Claims 5-6, Dimitriou discloses the assembly of Claims 1 & 4, respectively. Dimitriou fails to explicitly disclose wherein the telescoping connector is one of a plurality of telescoping connectors connecting the tool attachment device and the endoscope attachment device; and wherein said plurality of telescoping connectors includes three telescoping connectors.
However, Sholev teaches an assembly (Fig. 1, 10; [0033]) comprising:
a) a proximal attachment device (Fig. 1, 14; [0033]) comprising a proximal locking assembly (Fig. 1, 28; [0035]);
b) a distal attachment device (Fig. 1, 16; [0033]) comprising a distal locking assembly (Fig. 1, 30; [0035]);
c) a plurality of telescoping connectors (Fig. 1, 18; [0034]) connecting the proximal attachment device and the distal attachment device ([0034]); and
wherein said plurality of telescoping connectors includes three telescoping connectors ([0034]).
The advantage of the plurality of telescoping connectors is to better facilitate automatic telescopic expansion (Sholev; [0064]).
Therefore, it would have been obvious before the effective filing date of the claimed invention to someone with ordinary skill in the art to modify the assembly as disclosed by Dimitriou, to include the plurality of telescoping connectors as taught by Sholev, to facilitate automatic telescopic expansion (Sholev; [0064]).
Claims 9-10 & 12 are rejected under 35 U.S.C. 103 as being unpatentable over Dimitriou et al. (hereinafter "Dimitriou") (US 2007/0270640) in view of Gajewski et al. (hereinafter "Gajewski") (U.S. 5,447,343).
Regarding Claims 9-10 & 12, Dimitriou discloses the assembly of Claim 1. Dimitriou fails to explicitly disclose wherein the endoscope locking device includes a base with at least one handle, a first tab pivotably connected to the base about a first axis, a second tab pivotably connected to the base about a second axis; wherein the second axis is spaced apart from and parallel to the first axis; and a bias member positioned between the base and the first tab.
However, Gajewski teaches an endoscope attachment and jaw-type locking assembly (Fig. 4, 201; Col. 4, Lines 49-51);
wherein the endoscope attachment and jaw-type locking device includes a base (Fig. 5, a lower 210; Col. 4, Lines 61-62) with at least one handle (Fig. 1, top 210; Col. 4, Lines 61-62),
a first tab (Figs. 5-7, a first 220; Col. 4, Lines 58-60) pivotably connected to the base about a first axis (Fig. 5, a first 226; Col. 5, Lines 5-10),
a second tab (Figs. 5-7, a second 220; Col. 4, Lines 58-60) pivotably connected to the base about a second axis (Fig. 5, a second 226; Col. 5, Lines 5-10);
a bias member (Figs. 5-7, a first 225; Col. 5, Lines 1-5) positioned between the base and the first tab (see Figs. 6-7); and
wherein the second axis is spaced apart from and parallel to the first axis (see Figs. 6-7).
The advantage of the jaw-type locking system is to ensure optimal and uniform locking force (Gajewski; Col. 5, Lines 8-10).
Therefore, it would have been obvious before the effective filing date of the claimed invention to someone with ordinary skill in the art to replace the collet-type locking system as disclosed by Dimitriou, with the jaw-type locking system taught by Gajewski, to ensure optimal and uniform locking force (Gajewski; Col. 5, Lines 8-10).
Claims 13-15 are rejected under 35 U.S.C. 103 as being unpatentable over Bader et al. (hereinafter "Bader") (WO 2011/079958 A1) in view of Dimitriou et al. (hereinafter "Dimitriou") (US 2007/0270640).
Regarding Claim 13, Bader, as best understood, discloses a method of performing percutaneous nephrolithotomy ([0051]), comprising:
a) securing a lithotripter ([0010] & [0057]) and a nephroscope (Fig. 6, 8; [0049]) in an assembly (Fig. 2, 2; [0048]) comprising:
i) a lithotripter attachment device (Fig. 2, 12; [0053]) comprising a lithotripter locking assembly (Fig. 2, 20; [0054]);
ii) a nephroscope attachment device (Fig. 2, 34; [0057]) comprising a nephroscope locking assembly ([0057]); and
iii) a connector (Fig. 2, 24; [0060]) connecting said lithotripter attachment device and said nephroscope attachment device (see Fig. 2); and
b) performing percutaneous nephrolithotomy with the lithotripter and a nephroscope ([0051]).
Bader fails to explicitly disclose wherein the connector is a telescoping connector.
However, Dimitriou teaches an assembly (Fig. 1, 30; [0043]) comprising:
i) a tool attachment device (Fig. 1, 82; [0060]) comprising a tool locking assembly (Fig. 1, 84; [0060]);
ii) an endoscope attachment device (Fig. 1, 38; [0043]) comprising an endoscope locking assembly (Fig. 1, 106; [0070]); and
iii) a telescoping connector (Fig. 1, a tool coupling assembly comprising 32 and 34; [0043]) connecting said tool attachment device and said endoscope attachment device ([0043]).
The advantage of the telescoping connector is to selectively adjust the connection length to accommodate variations in lengths needed between the tool and the endoscope (Dimitriou; [0044]).
Therefore, it would have been obvious before the effective filing date of the claimed invention to someone with ordinary skill in the art to modify the connector as disclosed by Bader, to be telescoping as taught by Dimitriou, to selectively adjust the connection length to accommodate variations in lengths needed between the tool and the endoscope (Dimitriou; [0044]).
Regarding Claim 14, Bader, as previously modified by Dimitriou, teaches the method of Claim 13. Dimitriou further teaches wherein said assembly provides control of the forward and backward movements of the lithotripter within the working channel of the nephroscope ([0055]).
Regarding Claim 15, Bader, as previously modified by Dimitriou, teaches the method of Claim 13. Dimitriou further teaches wherein the assembly device can be controlled with only hand and wrist movement ([0055]).
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Dimitriou et al. (hereinafter "Dimitriou") (US 2007/0270640) in view of Gajewski et al. (hereinafter "Gajewski") (U.S. 5,447,343) and Lesche (US 2014/0208898).
Regarding Claim 8, Dimitriou discloses the assembly of Claim 1. Dimitriou fails to explicitly disclose wherein said endoscope locking device comprises a set of a front plate, a back plate, tabs, magnets, and springs.
However, Gajewski teaches an endoscope attachment and jaw-type locking assembly (Fig. 4, 201; Col. 4, Lines 49-51), comprising a set of:
a front plate (front-lipped portions of a top 210 and bottom 210; see Figs. 5-7);
a back plate (back-flanged portions of the top 210 and the bottom 210; see Figs. 5-7);
tabs (Figs. 5-7, 220; Col. 4, Lines 58-60); and
springs (Figs. 5-7, 225; Col. 5, Lines 1-5).
The advantage of the jaw-type locking system is to ensure optimal and uniform locking force (Gajewski; Col. 5, Lines 8-10).
Therefore, it would have been obvious before the effective filing date of the claimed invention to someone with ordinary skill in the art to replace the collet-type locking system as disclosed by Dimitriou, with the jaw-type locking system taught by Gajewski, to ensure optimal and uniform locking force (Gajewski; Col. 5, Lines 8-10).
Dimitriou, as previously modified by Gajewski, fails to explicitly disclose wherein the endoscope locking device comprises magnets.
However, Lesche teaches a jaw-type locking device (Fig. 1, 100; [0017]) comprising:
a back plate (Fig. 1, 106; [0017])
a first tab (Fig. 1, 102; [0017]);
a second tab (Fig. 1, 202; [0017]);
wherein the first tab includes at least one permanent magnet (Fig. 5, 138 wherein 138 is a neodymium magnet; [0024]); and
wherein the second tab includes at least one second permanent magnet (Fig. 5, 238 wherein 238 is a neodymium magnet; [0024]).
The advantage of the magnet-embedded tabs is to provide better retention between the .
Therefore, it would have been obvious before the effective filing date of the claimed invention to someone with ordinary skill in the art to modify the tabs as taught by Gajewski, to include the embedded magnets taught by Lesche, to provide better retention between the .
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Dimitriou et al. (hereinafter "Dimitriou") (US 2007/0270640) in view of Gajewski et al. (hereinafter "Gajewski") (U.S. 5,447,343) as applied to Claim 9 above, and further in view of Lesche (US 2014/0208898).
Regarding Claim 11, Dimitriou, as previously modified by Gajewski, teaches the assembly of Claim 9. Dimitriou, as previously modified by Gajewski, fails to explicitly disclose wherein the first tab includes at least one permanent magnet.
However, Lesche teaches a jaw-type locking device (Fig. 1, 100; [0017]) comprising:
a base (Fig. 1, 106; [0017])
a first tab (Fig. 1, 102; [0017]);
a second tab (Fig. 1, 202; [0017]);
wherein the first tab includes at least one permanent magnet (Fig. 5, 138 wherein 138 is a neodymium magnet; [0024]); and
wherein the second tab includes at least one second permanent magnet (Fig. 5, 238 wherein 238 is a neodymium magnet; [0024]).
The advantage of the magnet-embedded tabs is to provide better retention between the base and the tabs (Lesche; [0023]).
Therefore, it would have been obvious before the effective filing date of the claimed invention to someone with ordinary skill in the art to modify the tabs as taught by Gajewski, to include the embedded magnets taught by Lesche, to provide better retention between the base and the tabs (Lesche; [0023]).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
US 2024/0398212; US 2021/0052876; US 2020/0060700; US 2018/0289394; US 2017/0303953 and US 2017/0245740
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEPHEN FLOYD LONDON whose telephone number is (571)272-4478. The examiner can normally be reached Monday - Friday: 10:00 am ET - 6:00pm ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, MICHAEL CAREY can be reached at (571)270-7235. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/STEPHEN FLOYD LONDON/Examiner, Art Unit 3795
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