DETAILED ACTION
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 13, 25-26, and 28-30 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 4 of U.S. Patent No. 11413026 in view of Schmidt et al. (US 5053045).
The patented claims disclose all the elements of the pending claims except for the jaws to be made of a magnetically inert material.
It is well known to construct a clip of nonmagnetic material such as titanium or a titanium alloy, that is compatible with body tissue, as evidenced by Schmidt et al. (col. 4, lines 7-13).
Therefore, it would have been obvious to one having ordinary skill in the art to have constructed the clip of Suzuki of titanium or a titanium alloy (a nonmagnetic or magnetically inert material), as taught by Schmidt et al., due to its compatibility with body tissue.
Claim 27 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 4 of U.S. Patent No. 11413026 and Schmidt et al. (US 5053045), as applied to claim 26, further in view of Chang et al. (US 20080097496 A1).
The combination of the patented claims and Schmidt et al. discloses all elements of the claimed invention except for the source of magnetic energy to be an electromagnet.
Chang et al. teach the equivalence of a permanent magnet and an electromagnet (paras [0253] and [0254]).
Therefore, it would have been obvious to one of ordinary skill in the art to have substituted a electromagnet for the permanent magnet in the device of the combination of the patented claims and Schmidt et al., as taught by Chang et al., wherein so doing would amount to mere substitution of one functionally equivalent magnetic energy source for another within the same art and the selection of any of these sources of magnetic energy would work equally well in the claimed device.
Claims 14, 16 and 18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 5 and 6 of U.S. Patent No. 11413026 in view of Suzuki (US 20070135678) and Schmidt et al. (US 5053045).
The patented claims disclose all elements of the claimed invention except for: (1) the placement apparatus to include a proximal end with a handle and a trigger; a body defining a lumen coupled to the proximal end; and an actuator disposed within the lumen of a body, wherein a first movement of the trigger is configured to translate the actuator through the lumen of the body to move the first and second jaws of the intracorporeal apparatus; and (2) the first and second jaws to be made of a magnetically inert material.
Suzuki discloses an actuator mechanism that is deployed through a body with a lumen by means of a trigger, to open and close jaws at a first end of an intracorporeal apparatus (Figs. 1-6, paras [0051-[005]).
It would have been obvious to one of ordinary skill in the art to have provided an actuator mechanism as taught by Suzuki, in the device of the patented claims, for the predictable result of ease of operation to enable movement of the first and second jaws.
The combination of the patented claims and Suzuki discloses all elements of the claimed invention except for the first and second jaws to be made of a magnetically inert material.
It is well known to construct a clip of nonmagnetic material that is compatible with body tissue such as titanium or a titanium alloy, as evidenced by Schmidt et al. (col. 4, lines 7-13).
Therefore, it would have been obvious to one having ordinary skill in the art to have constructed the clip in the device of the combination of the patented claims and Suzuki of titanium or a titanium alloy (a nonmagnetic or magnetically inert material), as taught by Schmidt et al., due to its compatibility with body tissue.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 13-16, 18-23 and 25-30 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
In claim 13, the recitation “wherein the first and second jaws comprise a magnetically inert material” seeks to introduce new matter. Applicant’s disclosure, as originally filed, does not describe this feature.
Appropriate correction is required.
Claim Rejections - 35 USC § 103
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 13 and 28-30 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Suzuki (US 20070135678) in view of Schmidt et al. (US 5053045).
Regarding claim 13, Suzuki discloses an intracorporeal apparatus including a main body 1 including a first tine or jaw and a second tine or jaw wherein the system is configured or capable of manipulating tissue; and a placement apparatus including a handle 4 and a slider or trigger 5 wherein a first movement of the trigger 5 is configured to translate the actuator or wire 8 to move jaws 21 (Figs. 1-2 and 11 and paras [0051]-[0052], [0063] and [0064]).
Suzuki et al. disclose all elements of the claimed invention except for the material of construction of clip 18 or jaws 21.
It is well known to construct a clip of nonmagnetic material that is compatible with body tissue such as titanium or a titanium alloy, as evidenced by Schmidt et al. (col. 4, lines 7-13).
Therefore, it would have been obvious to one having ordinary skill in the art to have constructed the clip of Suzuki et al. of a titanium or titanium alloy (a nonmagnetic material) due to its compatibility with body tissue.
Regarding claims 28-30, the Suzuki device can be utilized to manipulate any type of tissue, animal or human.
Response to Arguments
The indicated allowability of claim 17 in the previous office action is withdrawn in light of the new rejections made in this office action.
New grounds of rejection have been made in this office action.
Non application of prior art to claims 14-16, 18-23 and 25-27 indicates allowable subject matter provided the double patenting rejections and rejections under 35 USC 112(a), made in this office action are overcome.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Anu Ramana whose telephone number is (571)272-4718. The examiner can normally be reached 8:00 am-5:00 pm.
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, Kevin Truong can be reached at (571)272-4705. 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.
March 10, 2026
/Anu Ramana/Primary Examiner, Art Unit 3775