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 .
Election/Restrictions
Applicant’s election without traverse of Group I and Species A(II), B(I) and C(I) in the reply filed on July 1, 2026 and August 6, 2026 is acknowledged.
Claims 17-19 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected device/species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on July 1, 2026 and August 6, 2026.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 120 as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed application, Application No. 62/872476 and 16/926073, fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application. The prior filed applications fail to provide support for the diameters of the diversion holes to be the same [claim 6]. This claim is examined with an effective filing date of 7/10/2020.
Information Disclosure Statement
The information disclosure statement (IDS) submitted is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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) 1-4, 12, and 14 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Gross (US 20060064051).
Regarding claim 1, Gross discloses a surgical suction device (fig. 3) comprising:
a grasper receiving section (structure shown in fig. 1) comprising;
a distal portion and a proximal portion (see below), wherein the distal portion and the proximal portion are co-aligned (see below, fig. 1),
PNG
media_image1.png
683
558
media_image1.png
Greyscale
a wing, loop, flag, or flute attached to an exterior surface of the distal portion (loop 41 in fig. 1),
wherein the distal portion further comprises a diversion hole placed to provide an alternative fluid pathway through the distal portion (see above); and
a tubing comprising a suction tube, an irrigation tube, or both (catheter 50 in fig. 3), wherein the grasper receiving section is shaped to be in fluid communication with the tubing (fig. 3 and 5).
Regarding claim 2, Gross discloses the wing, loop, flag, or flute is a loop (loop 41 in fig. 1).
Regarding claim 3, Gross discloses a second diversion hole (see below), wherein the diversion hole and the second diversion hole are aligned longitudinally on the grasper receiving section (fig. 5; paragraph 38 discloses the ports are aligned).
PNG
media_image2.png
458
422
media_image2.png
Greyscale
Regarding claim 4, Gross discloses a third diversion hole and a fourth diversion hole, wherein the third diversion hole and the fourth diversion hole are aligned longitudinally on the grasper receiving section (paragraph 38 discloses the device can comprise four side ports 5 which can be aligned as depicted).
Regarding claim 12, Gross discloses a cross section of the distal portion is formed in a shape of a circle (the top surface of barb 5 is shown to be circular in fig. 4).
Regarding claim 14, Gross discloses an outer diameter of the distal portion is greater than an outer diameter of the proximal portion (see below).
PNG
media_image3.png
337
388
media_image3.png
Greyscale
Claim(s) 1, 11, 13, and 14 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Knapp (US 20150099930).
Regarding claim 1, Knapp discloses a surgical suction device (fig. 1) comprising:
a grasper receiving section (hub 18 in fig. 1) comprising;
a distal portion and a proximal portion (see below), wherein the distal portion and the proximal portion are co-aligned (see below, fig. 5),
a wing, loop, flag, or flute attached to an exterior surface of the distal portion (ring 38 in fig. 5 is a loop),
wherein the distal portion further comprises a diversion hole placed to provide an alternative fluid pathway through the distal portion (see below); and
PNG
media_image4.png
560
449
media_image4.png
Greyscale
a tubing comprising a suction tube, an irrigation tube, or both (tubing 16 in fig. 1 is capable of being a suction tube or an irrigation tube), wherein the grasper receiving section is shaped to be in fluid communication with the tubing (fig. 17).
Regarding claim 11, Knapp discloses the grasper receiving section is formed from one unitary piece of material (fig. 5 shows a monolithic hub 18).
Regarding claim 13, Knapp discloses an outer diameter of the distal portion and an outer diameter of the proximal portion are the same (the outer diameters are the same at the delimited intersection between the proximal and distal portions, see dotted lines below).
PNG
media_image5.png
560
449
media_image5.png
Greyscale
Regarding claim 14, Knapp discloses an outer diameter of the distal portion is greater than an outer diameter of the proximal portion (see dotted lines below).
PNG
media_image6.png
560
449
media_image6.png
Greyscale
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.
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Gross, as applied to claims 1, 3, and 4 above, and further in view of Zacca (US 5766192).
Regarding claim 5, Gross discloses all of the claimed limitations set forth in claims 1, 3, and 4, as discussed above. Gross further discloses that the holes can be staggered along the length of the grasper receiving sections (paragraph 38). However, Gross does not explicitly teach or disclose the diversion hole and the second diversion hole are located 180 degrees around a circumference of the grasper receiving section from the third diversion hole and the fourth diversion hole.
Zacca teaches a similar grasper receiving section (device 1 in fig. 1) which comprises a plurality of ports (ports 3, 4, 5, and 6 in fig. 1) in which a first and second port (ports 3 and 5) are located 180 degrees around a circumference of the grasper receiving section from the third diversion hole and the fourth diversion hole (ports 4 and 6 in fig. 1).
Therefore, it would have been obvious to one of ordinary skill before the effective filing date of the claimed invention to have modified the device of Gross so that the ports (ports 5 in fig. 1) are located so that two ports are on one side and two ports are on a diametrically opposed side, as taught by Zacca, so that the diversion hole and the second diversion hole are located 180 degrees around a circumference of the grasper receiving section from the third diversion hole and the fourth diversion hole. This modification appears within the scope of Gross (paragraph 38) and since it has been held that a mere rearrangement of the essential working parts of a device involves only routine skill in the art and that doing so would not have modified operation of the device of Gross. In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950)
Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Gross, as applied to claims 1, 3, and 4 above, and further in view of Vogelbaum (US 20220047805 ).
Regarding claim 6, Gross discloses all of the limitations set forth in claims 1, 3, and 4, as discussed above, and appears to disclose a diameter of the diversion hole, a diameter of the second diversion hole, a diameter of the third diversion hole, and a diameter of the fourth diversion hole are the same (fig. 5 appears to show holes as defined above as being equal in diameter), Gross does not explicitly teach or disclose this limitation.
Vogelbaum teaches a grasper receiver section (hub 108 in fig. 1B0 comprising a first, second, third, and fourth hole (ports 114 in fig. 1B) with all four ports comprising the same diameter (paragraph 67). Therefore, it would have been obvious to one of ordinary skill before the effective filing date of the claimed invention to have modified the first, second, third, and fourth diversion hole of Gross to have the same diameter, as taught by Vogelbaum, since it appears that Gross already discloses this feature (fig. 5) and this modification would not modify operation of the device.
Claim(s) 7, 9, and 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Knapp, as applied to claim 1 above, and further in view of Eliasen (US 6332874).
Regarding claim 7, Knapp discloses all of the claimed limitations set forth in claim 1, as discussed above, but does not teach or disclose the grasper receiving section is more rigid than the tubing.
Eliasen teaches a similar grasper receiving section (hub 26 in fig. 2) which is connected to a tubing (catheter 10 in fig. 2). Eliasen teaches the grasper receiving section is more rigid than the tubing (9:51-52 discloses the hub is “generally much harder” than the catheter). Therefore, it would have been obvious to one of ordinary skill before the effective filing date of the claimed invention to have modified the grasper receiving section of Knapp to be more rigid than the tubing, as taught by Eliasen, as Eliasen teaches that these respective rigidities are known for hub/catheter connections.
Regarding claim 9, Knapp discloses all of the claimed limitations set forth in claim 1, as discussed above, but does not teach or disclose the grasper receiving section has a Shore durometer of 30D to 150D.
Eliasen teaches a grasper receiving section (hub 26 in fig. 2) which comprises a Shore durometer of 30D to 150D (9:52-57 discloses a range from 80-84 Shore D). Therefore, it would have been obvious to one of ordinary skill before the effective filing date of the claimed invention to have modified the grasper receiving section to have a Shore durometer between 80D and 84D, as taught by Eliasen, since Eliasen teaches that the section will perform adequately with this durometer range (9:54-57).
Regarding claim 10, Knapp discloses all of the claimed limitations set forth in claim 1, as discussed above, but does not teach or disclose the grasper receiving section is comprised of polyurethane.
Eliasen teaches a grasper receiving section (hub 26 in fig. 2) comprised of polyurethane (9:34-40). Therefore, it would have been obvious to one of ordinary skill before the effective filing date of the claimed invention to have modified the grasper receiving section to be comprised of polyurethane, as taught by Eliasen, since Eliasen teaches that this is an art recognized material for forming a hub.
Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Knapp or Gross.
Regarding claim 8, Knapp/Gross discloses all of the claimed limitations set forth in claim 1, as discussed above, but does not explicitly teach or disclose a maximum inner diameter of the grasper receiving section is between 4mm and 5mm.
There is no evidence that changing the maximum inner diameter of the grasper receiving section would result in a difference in function of the Knapp or Gross device. Further, PHOSITA, being faced with modifying the maximum inner diameter of the section, would have a reasonable expectation of success in making such a modification and it appears the device would function as intended being given the claimed maximum inner diameters. Lastly, Applicant has not disclosed that the claimed range solves any stated problem, stating in paragraph 112 of the Specification that dimensions are “illustrative and various alternatives are contemplative”, and therefore there appears to be no criticality placed on the range as claimed such that it produces an unexpected result.
Therefore, it would have been obvious to one of ordinary skill before the effective filing date of the claimed invention to have modified the maximum inner diameter of the grasper receiving section of Gross/Knapp to be between 4mm and 5mm as an obvious matter of design choice within the skill of the art.
Claim(s) 15 and 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Knapp, as applied to claim 1 above, and further in view of Scherich (US 20200078565).
Regarding claims 15 and 16, Knapp discloses all of the claimed limitations set forth in claim 1, as discussed above, and further appears to disclose the entire exterior surface of the loop and the entire exterior surface of the grasper receiver section are smooth (fig. 2). However, Knapp does not explicitly disclose these features.
Scherich teaches a grasper receiver section (hub 52 in fig. 2A) which is smooth (paragraph 49). Since the loop of Knapp is monolithic with the grasper receiver section (fig. 2), it would have been obvious to one of ordinary skill before the effective filing date of the claimed invention to have modified both the loop and the entire exterior surface of the grasper receiving section to be smooth, as taught by Scherich, in order to improve comfort when handling and to simplify manufacture.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 4, and 7 of U.S. Patent No. 11832995 in view of Gross and the teachings below (see table).
Regarding claim 1, issued claim 1 claims all of the claimed limitations set forth in instant claim 1 except the distal portion and the proximal portion are co-aligned, a wing, loop, flag, or flute attached to an exterior surface of the distal portion, and a tubing comprising a suction tube, an irrigation tube, or both, wherein the grasper receiving section is shaped to be in fluid communication with the tubing.
As discussed above, Gross teaches the distal portion and the proximal portion are co-aligned (fig. 5), a wing, loop, flag, or flute attached to an exterior surface of the distal portion (loop 41 in fig. 5), and a tubing comprising a suction tube, an irrigation tube, or both (tube 50 in fig. 3), wherein the grasper receiving section is shaped to be in fluid communication with the tubing (fig. 5). Therefore, it would have been obvious to one of ordinary skill before the effective filing date of the claimed invention to have modified the issued claim to have the claimed limitations above, as taught by Gross. This modification would enable a straight path of fluid flow from the grasper receiver section to the tube and would enable the device to be affixed to another object (paragraph 42).
Instant Claims
Issued Claims
Teaching
1
1
See discussion above
2
Gross teaches this limitation. It would have been obvious to have modified the issued claim in order to attach the device to another object (paragraph 42).
3
2
4
Gross teaches this limitation. It would have been obvious to have modified the issued claim in order enhance the flexibility of use (paragraph 38).
5
Zacca teaches this limitation. It would have been obvious to have modified the issued claim as Zacca teaches this orientation allows for the connection of multiple tubes.
6
Vogelbaum teaches this limitation. It would have been obvious to have modified the issued claim as Vogelbaum in order to simplify manufacturing and assembly.
7
Eliasen teaches this limitation. It would have been obvious to have modified the issued claim as Eliasen teaches that these respective rigidities are known for hub/catheter connections.
8
Gross teaches this limitation. It would have been obvious to have modified the issued claim as an obvious modification which does not impact function of the issued device.
9
7
10
Eliasen teaches this limitation. It would have been obvious to have modified the issued claim as Eliasen teaches that this is an art recognized material for forming a hub.
11
Gross teaches this limitation. It would have been obvious to have modified the issued claim in order to simplify manufacturing.
12
Gross teaches this limitation. It would have been obvious to have modified the issued claim in order to attach a tubing to the distal portion.
13
Knapp teaches this limitation. It would have been obvious to have modified the issued claim in order to simplify manufacturing.
14
Gross teaches this limitation. It would have been obvious to have modified the issued claim in order to provide a tapered profile which can accommodate a wide range of tubing diameters.
15
Scherich teaches this limitation. It would have been obvious to have modified the issued claim in order to improve user comfort while holding the grasper receiving section.
16
4
Claims 1 and 3-16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1, 2, and 8 of copending Application No. 18496164 in view of Gross and the teachings below (see table).
Regarding claim 1, reference claim 1 claims all of the claimed limitations set forth in instant claim 1 except a suction tube, an irrigation tube, or both, wherein the grasper receiving section is shaped to be in fluid communication with the tubing.
As discussed above, Gross discloses a suction tube, an irrigation tube, or both (tube 50 in fig. 3), wherein the grasper receiving section is shaped to be in fluid communication with the tubing (fig. 5). Therefore, it would have been obvious to one of ordinary skill before the effective filing date of the claimed invention to have modified the reference claim to further comprise a suction tube, an irrigation tube, or both, wherein the grasper receiving section is shaped to be in fluid communication with the tubing, as taught by Gross, in order to transfer fluid to/from the body.
Instant Claims
Reference Claims
Teaching
1
1
See discussion above
3
4
Gross teaches this limitation. It would have been obvious to have modified the issued claim in order enhance the flexibility of use (paragraph 38).
5
Zacca teaches this limitation. It would have been obvious to have modified the issued claim as Zacca teaches this orientation allows for the connection of multiple tubes.
6
Vogelbaum teaches this limitation. It would have been obvious to have modified the issued claim as Vogelbaum in order to simplify manufacturing and assembly.
7
Eliasen teaches this limitation. It would have been obvious to have modified the issued claim as Eliasen teaches that these respective rigidities are known for hub/catheter connections.
8
Gross teaches this limitation. It would have been obvious to have modified the issued claim as an obvious modification which does not impact function of the issued device.
9
8
10
2
11
Gross teaches this limitation. It would have been obvious to have modified the issued claim in order to simplify manufacturing.
12
Gross teaches this limitation. It would have been obvious to have modified the issued claim in order to attach a tubing to the distal portion.
13
Knapp teaches this limitation. It would have been obvious to have modified the issued claim in order to simplify manufacturing.
14
Gross teaches this limitation. It would have been obvious to have modified the issued claim in order to provide a tapered profile which can accommodate a wide range of tubing diameters.
15
Scherich teaches this limitation. It would have been obvious to have modified the issued claim in order to improve user comfort while holding the grasper receiving section.
16
This is a provisional nonstatutory double patenting rejection.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Yin (US 20180021481) discloses a grasper receiving section (shaft 802 in fig. 8b) comprising a loop attached to a distal portion (loop 816 in fig. 8b).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to COURTNEY FREDRICKSON whose telephone number is (571)270-7481. The examiner can normally be reached Monday-Friday (9 AM - 5 PM 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, BHISMA MEHTA can be reached at 571-272-3383. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/COURTNEY FREDRICKSON/ Primary Examiner, Art Unit 3783
Prosecution Insights