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 .
Priority
Applicant states that this application is a continuation or divisional application of the prior-filed application. A continuation or divisional application cannot include new matter. Applicant is required to delete the benefit claim or change the relationship (continuation or divisional application) to continuation-in-part because this application contains the following matter not disclosed in the prior-filed application: Claim 1, 11 each recite “the first arm and the second arm form a tubular corridor when in a closed position” which was not disclosed in the original specification in the parent. As seen in Fig 140-144, the arms #922 #924 do not form a tubular corridor.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the “the first arm and the second arm form a tubular corridor when in a closed position” (in claim 1, 11) must be shown or the feature(s) canceled from the claim(s). No new matter should be entered. See 112 rejection below as well.
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. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. 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.
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required: Claims 1, 11 each recites “the first arm and the second arm form a tubular corridor when in a closed position” which was not disclosed in the original specification nor in the specifications in the parents. See 112 rejection below as well.
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: “actuation assembly” in claim 1.
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 Objections
Claims 12-20 are objected to because of the following informalities:
The preambles of Claims 12-20 does not match with the preamble of claim 11, which is directed to a method. The preambles of claims 12-20 should be consistent with that of parent claim 11.
Claim 13 line 2 should recite: "[[the]] a proximal end."
Claim 15 line 2 should recite: "[[the]] a proximal end."
Appropriate correction is required.
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.
Claims 1-20 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. Claim 1, 11 each recite “the first arm and the second arm form a tubular corridor when in a closed position” which was not disclosed in the original specification in the parent. As seen in Fig 140-144, the arms #922 #924 do not form a tubular corridor. As such it is not clear how the arms can form a tubular corridor. The examiner will treat with art as best understood.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 2 rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. The limitation of claim 2 is already recited in claim 1 (see claim 1 line 4). Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 102
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 1-10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wing US 2010/0081885.
Regarding Claim 1, Wing discloses minimally invasive surgical retractor (Fig 4) comprising:
a first arm extending from a proximal end thereof to a distal end thereof along a first longitudinal axis (see Fig below);
a second arm configured to couple to the first arm (coupled via rack #218, see Fig 4), the second arm extending from a proximal end thereof to a distal end thereof along a second longitudinal axis that is parallel to the first longitudinal axis (see Fig below);
an actuation assembly (see Fig below where the assembly includes #213 and #216) configured to move at least one of the first arm and the second arm (paragraph 45);
a first retractor blade configured to couple to the distal end of the first arm (see Fig below); and
a second retractor blade configured to couple to the distal end of the second arm (see Fig below),
wherein the first arm and the second arm form a tubular corridor when in a closed position (Fig 4, paragraph 40 where when brought together, the arms along with the retractor blades form a tubular corridor).
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Regarding Claim 2, Wing discloses the second arm is configured to be coupled to the first arm (as seen in Fig 4, coupled via rack #218).
Regarding Claim 3, Wing discloses the first arm comprises a first central portion between the proximal end of the first arm and the distal end of the first arm (see Fig below).
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Regarding Claim 4, Wing discloses the first central portion is configured to receive the first retractor blade (see Fig in claim 13 and Fig 4).
Regarding Claim 5, Wing discloses the second arm comprises a second central portion between the proximal end of the second arm and the distal end of the second arm (paragraph 48, Fig 4-5 where the second arm is a mirror image of the first arm and would also have a central portion similar to what is shown in annotated Fig 5 in claim 13 above).
Regarding Claim 6, Wing discloses the second central portion is configured to receive the second retractor blade (Fig 4).
Regarding Claim 7, Wing discloses the first central portion includes an aperture to receive the first retractor blade (see annotated Fig 5 above in claim 13, Fig 4).
Regarding Claim 8, Wing discloses the actuator assembly is configured to rotate to move the at least one of the first arm and the second arm (paragraph 45).
Regarding Claim 9, Wing disclose the actuator assembly is configured to move both of the first arm and the second arm (paragraph 45).
Regarding Claim 10, Wing disclose the actuator assembly further comprises an actuator including a head (#213 and/or #216) configured to be actuated by a drive tool (it is noted that a drive tool is functionally recited and a drive tool in the form forceps can clamp onto the head and rotated).
Claims 11-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wing US 2010/0081885.
Regarding Claim 11, Wing discloses a method comprising:
providing a split-tube surgical retractor (Fig 4) comprising:
a first arm extending along a first longitudinal axis (see Fig below),
a second arm extending along a second longitudinal axis that is parallel to the first longitudinal axis (see Fig below),
an actuation assembly (see Fig below, where the assembly includes #213, #216),
a first retractor blade (see Fig below), and
a second retractor blade (see Fig below);
coupling the first retractor blade to a distal end of the first arm (see Fig below);
coupling the second retractor blade to a distal end of the second arm (see Fig below);
actuating the actuation assembly, thereby causing movement of at least one of the first arm and the second arm (paragraph 45),
wherein the first arm and the second arm form a tubular corridor when in a closed position (Fig 4, paragraph 40 where when brought together, the arms along with the retractor blades form a tubular corridor).
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Regarding Claim 12, Wing discloses the second arm is configured to be coupled to the first arm (as seen in Fig 4, coupled via rack #218).
Regarding Claim 13, Wing discloses the first arm comprises a first central portion between the proximal end of the first arm and the distal end of the first arm (see Fig below).
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Regarding Claim 14, Wing discloses the first central portion is configured to receive the first retractor blade (see Fig in claim 13 and Fig 4).
Regarding Claim 15, Wing discloses the second arm comprises a second central portion between the proximal end of the second arm and the distal end of the second arm (paragraph 48, Fig 4-5 where the second arm is a mirror image of the first arm and would also have a central portion similar to what is shown in annotated Fig 5 in claim 13 above).
Regarding Claim 16, Wing discloses the second central portion is configured to receive the second retractor blade (Fig 4).
Regarding Claim 17, Wing discloses the first central portion includes an aperture to receive the first retractor blade (see annotated Fig 5 above in claim 13, Fig 4).
Regarding Claim 18, Wing discloses the actuator assembly is configured to rotate to move the at least one of the first arm and the second arm (paragraph 45).
Regarding Claim 19, Wing disclose the actuator assembly is configured to move both of the first arm and the second arm (paragraph 45).
Regarding Claim 20, Wing disclose the actuator assembly further comprises an actuator including a head (#213 and/or #216) configured to be actuated by a drive tool (it is noted that a drive tool is functionally recited and a drive tool in the form forceps can clamp onto the head and rotated).
Conclusion
See PTO-892 for art of cited interest, in particular other retractors.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAN CHRISTOPHER L MERENE whose telephone number is (571)270-5032. The examiner can normally be reached Mon-Fri 8:30 am - 6pm EST.
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, Eduardo Robert can be reached at 571-272-4719. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JAN CHRISTOPHER L MERENE/ Primary Examiner, Art Unit 3773
