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 .
Terminal Disclaimer
The terminal disclaimer filed on 5 May 2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of U.S. Patent No. 11,382,646 has been reviewed and is NOT accepted.
This application was filed on or after September 16, 2012. The party identified in the terminal disclaimer is not the applicant of record. A request to change the applicant under 37 CFR 1.46(c) must be filed and must include an application data sheet specifying the applicant in the applicant information section and comply with 37 CFR 3.71 and 3.73. To be reconsidered, the terminal disclaimer must be filed with the request under 37 CFR 1.46(c).
For additional details, please see remarks in the Terminal Disclaimer Review Decision mailed 8 May 2026.
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 21-29 and 34-40 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6, 9, 10, 12, 21, 23, and 24 of U.S. Patent No. 11,382,646. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 21 of the instant application is merely broader in scope than all that is recited in claims 1 and 21 of the ‘646 patent. That is, claim 21 is anticipated by claims 1 and 21 of the ‘646 patent. Similarly, instant claim 34 is anticipated by claim 1 of the ‘646 patent, and instant claim 40 is anticipated by claim 12 of the ‘646 patent. Once applicant has received a patent for a species or a more specific embodiment, applicant is not entitled to a patent for the generic or broader invention (see In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993)). Claims 22-29 and 35-39 of the instant application are anticipated by claims 2-6, 9, 10, 21, 23, and 24, of the ‘646 patent, by the same reasoning.
Claims 30-32 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11,382,646 in view of U.S. Patent No. 5,836,311 (Borst et al.).
Regarding claim 30, claim 1 of the ‘646 patent recites all the limitations of instant claim 30, except “wherein each of the two or more ports has one of a circular shape or an oval shape”.
However, Borst teaches a suction tool comprising two or more ports (33) in a supporting surface of a vacuum arm; wherein each of the two or more ports (33) has one of a circular shape or an oval shape (Figures 15-16; col. 8, lines 4-21). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the ports of claim 1 of the ‘646 patent to have either a circular or an oval shape as taught by Borst in order to reduce the chance of tissue damage during suction due to sharp corners.
Regarding claim 31, claim 1 of the ‘646 patent recites all the limitations of instant claim 31, except “each of the two or more ports has a sidewall connected to the internal conduit, the sidewall defining a duct having a substantially constant diameter from the port to the internal conduit”.
However, Borst teaches a suction tool comprising two or more ports (33); wherein each of the two or more ports (33) has a sidewall connected to an internal conduit (31), the sidewall defining a duct (32) having a substantially constant diameter from the port (33) to the internal conduit (see Figures 4-5; col. 8, lines 12-16). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the ports of claim 1 of the ‘646 patent such that each of the two or more ports has a sidewall connected to the internal conduit, the sidewall defining a duct having a substantially constant diameter from the port to the internal conduit as taught by Borst in order to fluidly couple the port to the internal conduit to achieve suction.
Regarding claim 32, claim 1 of the ‘646 patent recites all the limitations of instant claim 32, except “the duct has a smaller diameter at an intersection with the internal conduit than at an intersection with the port”.
However, Borst teaches a suction tool comprising two or more ports (33); wherein a duct has a smaller diameter at an intersection with an internal conduit (31) than at an intersection with the port (The “port” is construed as the aperture in the paddle surface intended to contact tissue during use at the terminal opening of port 33, and the “duct” is construed as the sidewall of port 33. Accordingly, the “duct” has a smaller diameter at the intersection of “internal conduit” 31 than at its intersection with the “port”, as the “duct” sidewall is curved as shown in Figure 15). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the ports of claim 1 of the ‘646 patent to include a duct having a smaller diameter at an intersection with an internal conduit than at an intersection with the port as taught by Borst in order to fluidly couple the port to the internal conduit to achieve suction.
Response to Arguments
Applicant’s arguments, see pages 7-10, filed 5 May 2026, with respect to the rejections under 35 U.S.C. 102, 103, and 112(b) have been fully considered and are persuasive in light of the amendments to the claims. The rejections of 5 February 2026 have been withdrawn.
Applicant's arguments filed 5 May 2026 with respect to the obviousness-type double patenting rejections have been fully considered but they are not persuasive given the disapproved terminal disclaimer noted above.
Allowable Subject Matter
Claim 33 is 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: No prior art of record teach and/or fairly suggest the suction tool of claim 33 wherein the duct has a smaller diameter at an intersection with the port than at an intersection with the internal conduit, within the context of all the limitations of parent claims 21 and 31.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Carrie R Dorna whose telephone number is (571)270-7483. The examiner can normally be reached 8am-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, Alexander Valvis can be reached at 571-272-4233. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CARRIE R DORNA/Primary Examiner, Art Unit 3791
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