Detailed Action
This is the final office action for US application number 17/892,593. Claims are evaluated as filed on December 17, 2025.
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 .
Response to Arguments
Applicant's arguments filed December 17, 2025 have been fully considered but they are not persuasive.
With regards to Applicant’s statement that a terminal disclaimer will be “filed in due course” and that common ownership is established and withdraw of the double patenting rejections is respectfully requested (Remarks p. 6), Examiner notes that a terminal disclaim has not been received. The intent of Applicant’s statement that common ownership is established is unclear. For example, MPEP 804 specifically provides that “Some commonality of inventorship or (deemed) ownership must exist between two or more patents or applications before consideration can be given to the issue of double patenting”. Accordingly, the double patenting rejection is proper and has been repeated below.
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.
Claim 23 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 15 of U.S. Patent No. 10,420,539. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claim 23 is anticipated by U.S. Patent No. 10,420,539 claim 15 as identified in the below table, where differences in claim language are shown in bold.
Instant claim 23
U.S. Patent No. 10,420,539 claim 15
A method of forming a surgical retractor, comprising:
A method of forming a surgical retractor, comprising:
forming a metallic strip, the metallic strip capable of being shaped among a first unbent configuration, a second bent configuration, and a configuration opposite the second bent configuration,
disposing an insulative layer over a malleable strip, the malleable strip to be capable of a first unbent configuration and a second bent configuration,
the second bent configuration having a bend radius of approximately 0.75 cm to approximately 2.0 cm;
the second bent configuration having a bend radius of about 0.5 cm to about 2.0 cm;
disposing an insulative layer over the metallic strip; wherein the insulative layer comprises a thickness of between approximately 0.1 mm and approximately 0.3 mm;
(see above)
depositing an elastic and electrically conductive material over the insulative layer; and disposing, at a first end portion of the metallic strip, an illumination source in electrical communication with the elastic and electrically conductive material ; and
disposing an electronics module at a second end portion, opposite the first end portion, of the metallic strip, wherein the electronics module includes a press and hold switch to cause a plurality of incremental increases in intensity of the illumination source based on holding the switch in a depressed position.
depositing a flexible electrical conductor on at least a portion of the insulative layer; and disposing an illumination source at a distal portion of the malleable strip and in electrical communication with the flexible electrical conductor.
Examiner notes that the differences, as shown in bold, are patentably indistinct or are drawn to a species and not a different invention. Therefore, U.S. Patent No. 10,420,539 claim 15 is in essence a genus of the species invention of instant claim 23. It has been held that a generic invention is “anticipated” by a “species” within the scope of the generic invention. See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993).
Similarly, claim 26 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 17 of U.S. Patent No. 10,420,539. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claim 26 is anticipated by U.S. Patent No. 10,420,539 claim 17.
Instant claim 26
U.S. Patent No. 10,420,539 claim 17
The method of claim 23, further comprising:
The method of claim 15, further comprising:
disposing a light-adjusting layer to focus light from the illumination source toward a region normal to the illumination source.
disposing a light-adjusting layer over the illumination source.
Examiner notes that the differences, as shown in bold, are patentably indistinct. Therefore, U.S. Patent No. 10,420,539 claim 17 is in essence a genus of the species invention of instant claim 26. It has been held that a generic invention is “anticipated” by a “species” within the scope of the generic invention. See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993).
Similarly, claim 29 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 18 of U.S. Patent No. 10,420,539. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claim 29 is anticipated by U.S. Patent No. 10,420,539 claim 18.
Instant claim 29
U.S. Patent No. 10,420,539 claim 18
The method of claim 23,
The method of claim 15,
wherein the elastic and electrically conductive material comprises a meandering conductive line, a spiral-shaped conductor, a conductive ink, or any combination thereof.
wherein the flexible electrical conductor comprises a flexible elongate conductive element comprising a meandering conductive line, a spiral-shaped conductor, a conductive ink, or any combination thereof.
Examiner notes that the differences, as shown in bold, are patentably indistinct. Therefore, U.S. Patent No. 10,420,539 claim 18 is in essence a genus of the species invention of instant claim 29. It has been held that a generic invention is “anticipated” by a “species” within the scope of the generic invention. See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993).
Claim 34 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 15 of U.S. Patent No. 10,420,539. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claim 34 is anticipated by U.S. Patent No. 10,420,539 claim 15 as identified in the below table, where differences in claim language are shown in bold.
Instant claim 34
U.S. Patent No. 10,420,539 claim 15
A method of forming a surgical retractor, comprising:
A method of forming a surgical retractor, comprising:
forming a strip from a malleable metallic material, the strip capable of being shaped among a first unbent configuration, a second bent configuration, and a configuration opposite the second bent configuration,
disposing an insulative layer over a malleable strip, the malleable strip to be capable of a first unbent configuration and a second bent configuration,
the second bent configuration having a bend radius of approximately 0.75 cm to approximately 2.0 cm;
the second bent configuration having a bend radius of about 0.5 cm to about 2.0 cm;
disposing an insulative layer over the metallic strip;
(see above)
depositing an elastic and electrically conductive material over the insulative layer; and disposing an additional layer of insulating material to permit the surgical retractor to be resistant to liquids encountered during surgical procedures, wherein the elastic and electrically conductive material conducts an electric current from a press and hold switch to an illumination source, and wherein the press and hold switch is to cause a plurality of incremental increases in illumination intensity based on holding the switch in a depressed position.
depositing a flexible electrical conductor on at least a portion of the insulative layer; and disposing an illumination source at a distal portion of the malleable strip and in electrical communication with the flexible electrical conductor.
Examiner notes that the differences, as shown in bold, are patentably indistinct or are drawn to a species and not a different invention. Therefore, U.S. Patent No. 10,420,539 claim 15 is in essence a genus of the species invention of instant claim 34. It has been held that a generic invention is “anticipated” by a “species” within the scope of the generic invention. See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993).
Similarly, claim 36 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 17 of U.S. Patent No. 10,420,539. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claim 36 is anticipated by U.S. Patent No. 10,420,539 claim 17.
Instant claim 36
U.S. Patent No. 10,420,539 claim 17
The method of claim 34, further comprising:
The method of claim 15, further comprising:
disposing a light-adjusting layer that operates as a scattering medium over the one or more planar illumination source.
disposing a light-adjusting layer over the illumination source.
Examiner notes that the differences, as shown in bold, are patentably indistinct. Therefore, U.S. Patent No. 10,420,539 claim 17 is in essence a genus of the species invention of instant claim 36. It has been held that a generic invention is “anticipated” by a “species” within the scope of the generic invention. See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993).
Claim 39 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 15 of U.S. Patent No. 10,420,539. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claim 39 is anticipated by U.S. Patent No. 10,420,539 claim 15 as identified in the below table, where differences in claim language are shown in bold.
Instant claim 39
U.S. Patent No. 10,420,539 claim 15
A method of forming a surgical retractor, comprising:
A method of forming a surgical retractor, comprising:
forming a strip from a malleable metallic material, the strip capable of being shaped among a first unbent configuration, a second bent configuration, and a configuration opposite the second bent configuration,
disposing an insulative layer over a malleable strip, the malleable strip to be capable of a first unbent configuration and a second bent configuration,
the second bent configuration having a bend radius of approximately 0.75 cm to approximately 2.0 cm;
the second bent configuration having a bend radius of about 0.5 cm to about 2.0 cm;
disposing an insulative layer over the metallic strip;
(see above)
depositing an elastic and electrically conductive material over the insulative layer; and disposing a press and hold switch at a first end portion of the strip to control an illumination source disposed at a second end portion of the strip, wherein the press and hold switch is to cause a plurality of incremental increases in illumination intensity based on holding the switch in a depressed position; and disposing a flexible charge storage module at the first end portion of the strip.
depositing a flexible electrical conductor on at least a portion of the insulative layer; and disposing an illumination source at a distal portion of the malleable strip and in electrical communication with the flexible electrical conductor.
Examiner notes that the differences, as shown in bold, are patentably indistinct or are drawn to a species and not a different invention. Therefore, U.S. Patent No. 10,420,539 claim 15 is in essence a genus of the species invention of instant claim 39. It has been held that a generic invention is “anticipated” by a “species” within the scope of the generic invention. See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993).
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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AMY SIPP whose telephone number is (313)446-6553. The examiner can normally be reached on Monday through Thursday, 6:30am-4pm EST.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Kevin Truong can be reached on 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 an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/AMY R SIPP/Primary Examiner, Art Unit 3775