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 § 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.
Claims 1-4, 15, and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Jacobs (US 1,990,694).
As to claim 1, Jacobs teaches a method for producing a medical instrument (scissors or shears 11, as shown in Fig 2 are “surgical instruments”) having a first finger ring and a second finger ring (as illustrated in Fig 2), the method comprising the steps of: separating a first instrument body part blank out of a first plate (plate 10 of Fig 1. Jacobs teaches at Col 1 lines 43-45: “With suitable dies the instruments or parts thereof are cut from the sheets as illustrated by dotted lines in Fig. 1”), the first instrument body part blank comprising the first finger ring with a first through hole inside the first finger ring (as illustrated by the dotted line), the first finger ring and the first through hole being formed by removing a first portion of the first plate outside of the first finger ring by using a first separating modality and removing a second portion of the first plate inside of the first finger ring by using a second separating modality that is the same as the first separating modality (Jacobs teaches the dotted lines (including both inside and outside the finger ring) are “cut” by “suitable dies.” As just a single cutting modality is discussed, one in the art would interpret the cutting modality for the inside and outside of the finger rings to be the same).
Jacobs does not explicitly teach: and separating a second instrument body part blank out of a second plate. Instead, Jacobs illustrates a single instrument body on plate 10 in Fig 1, and teaches the “parts” are cut from “sheets” which implies more than one sheet, but not specifically that a second instrument body is cut from a second plate.
However, the sheet in Fig 1 may fit only three or four instrument parts. A person having ordinary skill in the art would have understood as a matter of common sense that the 5th, 100th, or 10,000th instrument part would be cut from a different sheet from the first. Accordingly there is no patentable jump in separating a second instrument body from a second plate when it is expected that many instrument bodies are to be manufactured and that many sheets are to be used to manufacture them as implied by Jacobs.
Jacobs further teaches: the second instrument body part blank comprising the second finger ring with a second through hole inside the second finger ring (see Fig 2, the second half of the scissors includes a finger ring), the second finger ring and the second through hole being formed by removing a first portion of the second plate outside of the second finger ring by using the first separating modality and removing a second portion of the second plate inside of the second finger ring by using the second separating modality that is the same as the first separating modality (the scissors parts are “practically duplicate” (Col 2 line 24) and thus the same manufacturing process is used for the second as the first. As discussed above, one in the art would interpret the cutting modality for the inside and outside of the finger rings to be the same given Jacobs’ illustration of the dotted line including both inside and outside the finger ring).
As to claim 2, Jacobs teaches the method according to claim 1, wherein the first instrument body part blank has a first blank geometry, and the second instrument body part blank has a second blank geometry (Jacobs teaches there are two parts to the scissors and that the two parts of the scissors are “practically duplicate”).
As to claim 3, Jacobs teaches the method according to claim 2, wherein the first blank geometry is identical to the second blank geometry (Jacobs teaches there are two parts to the scissors and that the two parts of the scissors are “practically duplicate”).
As to claim 4, Jacobs teaches the method according to claim 3, further comprising the steps of: reshaping1 the first instrument body part blank to form a first instrument body part with a first part geometry; and reshaping the second instrument body part blank to form a second instrument body part with a second part geometry different from the first part geometry (Col 2 lines 3-4 teaches the instrument parts may be “machined and finished”, both of which are material removal steps which occur after the initial die cutting step and either one is considered here to be “reshaping.” (The tempering step at Col 2 lines 9-10 is not a “reshaping”). As the instruments are scissors, the “machining and finishing” steps necessarily forms two different halves as each half has the cutting edge on a different side).
As to claim 15, Jacobs teaches the method according to claim 1, wherein the first separating modality and the second separating modality comprise punching (die cutting is a form of punching).
As to claim 17, Jacobs teaches a method for producing a medical instrument (scissors or shears 11, as shown in Fig 2 are “surgical instruments”) having a first finger ring and a second finger ring (as illustrated in Fig 2), the method comprising the steps of: separating a first instrument body part blank out of a first piece of material (sheet 10 of Fig 1. Jacobs teaches at Col 1 lines 43-45: “With suitable dies the instruments or parts thereof are cut from the sheets as illustrated by dotted lines in Fig. 1”), the first instrument body part blank comprising the first finger ring with a first through hole inside the first finger ring (shown by the dotted line in Fig 1), the first finger ring and the first through hole being formed by removing a first portion of the first piece of material outside of the first finger ring and simultaneously removing a second portion of the first piece of material inside of the first finger ring (Jacobs teaches the dotted lines (including both inside and outside the finger ring) are “cut” by “suitable dies.” As just a single cutting step is discussed, one in the art would interpret the cutting step for the inside and outside of the finger rings to be simultaneous); Jacobs does not explicitly teach: separating a second instrument body part blank out of a second piece of material.
Instead, Jacobs illustrates a single instrument body on plate 10 in Fig 1, and teaches the “parts” are cut from “sheets” which implies more than one sheet, but not specifically that a second instrument body is cut from a second plate.
However, the sheet in Fig 1 may fit only three or four instrument parts. A person having ordinary skill in the art would have understood as a matter of common sense that the 5th, 100th, or 10,000th instrument part would be cut from a different sheet from the first. Accordingly there is no patentable jump in separating a second instrument body from a second plate when it is expected that many instrument bodies are to be manufactured and that many sheets are to be used to manufacture them as implied by Jacobs.
Jacobs further teaches: the second instrument body part blank comprising the second finger ring with a second through hole inside the second finger ring (see Fig 2, the second half of the scissors includes a finger ring), the second finger ring and the second through hole being formed by removing a first portion of the second piece of material outside of the second finger ring and simultaneously removing a second portion of the second piece of material inside of the second finger ring, the step of removing the first portion of the first piece of material outside of the first finger ring and simultaneously removing the second portion of the first piece of material inside of the first finger ring being done by punching, and the step of removing the first portion of the second piece of material outside of the second finger ring and simultaneously removing the second portion of the second piece of material inside of the second finger ring being done by punching (the scissors parts are “practically duplicate” (Col 2 line 24) and thus the same manufacturing process is used for the second as the first. As discussed above, one in the art would interpret the cutting step for the inside and outside of the finger rings to be the same and simultaneous given Jacobs’ illustration of the dotted line including both inside and outside the finger ring).
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Jacobs as applied to claim 4 above, and further in view of Vogel et al. (US 5,469,626).
As to claim 5, Jacobs teaches the method according to claim 4, but does not teach the step of reshaping the first instrument body part blank comprises the steps of: inserting the first instrument body part blank between a first pair of forming tools having internal contours that correspond to the first part geometry; and pressing the first pair of forming tools together to form the first instrument body part.
Rather, as discussed above, Jacobs teaches “reshaping” as “machining and finishing.” However, it was known at the time the invention was effectively filed to provide for a punching operation as a reshaping step in scissor manufacturing. See Vogel Col 5 lines 53-66 which teaches a step of forming a bearing ramp 70 by punching. While not explicitly discussed by Vogel, punching necessarily has a punch (one half of the claimed forming tools), and a surface against which the workpiece is punched (the second half of the claimed forming tools). The internal contours of the punch form the depression 80 as shown in Fig 5.
It would have been obvious to a person having ordinary skill in the art at the time the invention was effectively filed to have provided the step of reshaping the first instrument body part blank comprises the steps of: inserting the first instrument body part blank between a first pair of forming tools having internal contours that correspond to the first part geometry; and pressing the first pair of forming tools together to form the first instrument body part.
Such a person would have been motivated to do so in order to achieve the benefits of Vogel’s bearing ramp 70 such as ensuring the scissors have “superior cutting action.”
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Jacobs as applied to claim 1 above, and further in view of Samaraweera (US 9,398,912).
As to claim 16, Jacobs teaches the method according to claim 1, but does not teach the first separating modality and the second separating modality comprise laser cutting.
Rather, Jacobs teaches the first and second separating modalities comprise die stamping. However, in the art of manufacturing surgical scissors, it was known at the time the invention was effectively filed that die cutting (cold stamping) for laser cutting were interchangeable operations for forming scissor parts. See Samaraweera which teaches at Col 1 lines 53-56: “In accordance with one aspect of the invention, there is provided a suture removal tool providing low manufacturing cost. The tool may be made by cold stamping, laser cutting, or water-jet cutting.”
It would have been obvious to a person having ordinary skill in the art at the time the invention was effectively filed to have swapped laser cutting for cold stamping (die cutting) as a matter of a simple substitution of one known element (method for another to obtain predictable results. The predictable results is the formation of scissor components from a metal sheet. See MPEP § 2143 B.
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Jacobs (US 1,990,694) in view of Samaraweera (US 9,398,912).
As to claim 18, Jacobs teaches a method for producing a medical instrument (scissors or shears 11, as shown in Fig 2 are “surgical instruments”) having a first finger ring and a second finger ring (as illustrated in Fig 2), the method comprising the steps of: separating a first instrument body part blank out of a first piece of material (material 10 of Fig 1. Jacobs teaches at Col 1 lines 43-45: “With suitable dies the instruments or parts thereof are cut from the sheets as illustrated by dotted lines in Fig. 1”), the first instrument body part blank comprising the first finger ring with a first through hole inside the first finger ring, the first finger ring and the first through hole being formed by removing a first portion of the first piece of material outside of the first finger ring and removing a second portion of the first piece of material inside of the first finger ring (Jacobs teaches the dotted lines (including both inside and outside the finger ring) are “cut” by “suitable dies.”).
Jacobs does not explicitly teach: and separating a second instrument body part blank out of a second piece of material.
Instead, Jacobs illustrates a single instrument body on plate 10 in Fig 1, and teaches the “parts” are cut from “sheets” which implies more than one sheet, but not specifically that a second instrument body is cut from a second plate.
However, the sheet in Fig 1 may fit only three or four instrument parts. A person having ordinary skill in the art would have understood as a matter of common sense that the 5th, 100th, or 10,000th instrument part would be cut from a different sheet from the first. Accordingly there is no patentable jump in separating a second instrument body from a second plate when it is expected that many instrument bodies are to be manufactured and that many sheets are to be used to manufacture them as implied by Jacobs.
Jacobs further teaches: the second instrument body part blank comprising the second finger ring with a second through hole inside the second finger ring (as illustrated in Fig 2, the second part of the scissors also has a finger ring), the second finger ring and the second through hole being formed by removing a first portion of the second piece of material outside of the second finger ring and removing a second portion of the second piece of material inside of the second finger ring (the scissors parts are “practically duplicate” (Col 2 line 24) and thus the same manufacturing process is used for the second as the first. As discussed above, one in the art would interpret the cutting modality for the inside and outside of the finger rings to be the same given Jacobs’ illustration of the dotted line including both inside and outside the finger ring).
Jacobs does not teach the material removal steps are by laser cutting.
Rather, Jacobs teaches the first and second separating modalities comprise die cutting. However, in the art of manufacturing surgical scissors, it was known at the time the invention was effectively filed that die cutting (cold stamping) for laser cutting were interchangeable operations for forming scissor parts. See Samaraweera which teaches at Col 1 lines 53-56: “In accordance with one aspect of the invention, there is provided a suture removal tool providing low manufacturing cost. The tool may be made by cold stamping, laser cutting, or water-jet cutting.”
It would have been obvious to a person having ordinary skill in the art at the time the invention was effectively filed to have swapped laser cutting for cold stamping (die cutting) as a matter of a simple substitution of one known element (method for another to obtain predictable results. The predictable results is the formation of scissor components from a metal sheet. See MPEP § 2143 B.
Allowable Subject Matter
Claims 6-14, 19-24 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: As to claim 6, Examiner’s best art does not appear to recognize that the pressing step (after a material removal step such as die cutting or die punching or stamping) would form its own burr on the inside and outside of the finger ring. Instead, Examiner’s art generally teaches the removal of burrs (presumed to be formed via the initial material removal process such as die cutting) but not that those burrs are formed by the “reshaping” steps including a pressing using a pair of forming tools. Vogel does not teach the formation of burrs from the punching step.
Claims 7-14 and 19-20 depend ultimately from claim 6.
Claim 21 contains allowable subject matter for the same reason as claim 6, namely that Examiner’s best are does not appear to appreciate the formation of burrs due to a pressing step after an initial material removal step. Even in situations where a pressing occurs after material removal (such as in the combination of Jacobs and Vogel), the art does not recognize a formation of burrs inside and outside the finger rings due to the later pressing step.
Claim 23 contains allowable subject matter for the same reason as claim 21.
Claims 22 and 24 depend from claims 21 and 23 respectively.
Response to Arguments
Applicant’s arguments, see pages 8-13, filed 29 April 2026, with respect to the rejection(s) of claim(s) 1-18 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Jacobs, Vogel, and Samaraweera.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JACOB JAMES CIGNA whose telephone number is (571)270-5262. The examiner can normally be reached 9am-5pm Monday-Friday.
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/JACOB J CIGNA/Primary Examiner, Art Unit 3726 7 August 2026
1 Examiner takes the broadest reasonable interpretation of “reshaping” to be any manufacturing process which provides the instrument part with a different shape which occurs after some other process of the part. Thus literally “re”(again or after)-“shape”(causing to take on a different form). In this interpretation, any material removal step will be a “reshaping” as the part will necessarily be smaller because of the material removal. Applicant appears to intend for reshaping to have a narrower interpretation, but there is specific discussion to that effect in the originally filed specification. The only example of “reshaping” in the specification is “cold rolling.”
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