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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on December 25, 2025 has been entered.
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 21 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 14 of U.S. Patent No. 11,484,381 B2 in view of McGinley et al. (US 2016/0128704 A1).
The difference between claim 21 and claim 14 of the patent is that claim 21 recites additional features not present in claim 14 of the patent (the slot of the handle, the processor processing the signal, and the transmitter transmitting the processed angular information).
McGinley teaches a handheld surgical instrument (drill 50), comprising: a handle (housing 26) that includes a slot (interior of housing 26); a surgical instrument (drill 50 includes drive 24, chuck 104, and instrument 16 attached to housing 26) attached to the handle; a measurement sensor (acceleration sensor 112) that is secured to the handheld surgical instrument by the slot (para. 0074 states that acceleration sensor 112 may be disposed within housing 26), that includes an accelerometer (para. 0074 states that acceleration sensor 112 may be an accelerometer) that provides a signal based on a measured angular orientation (para. 0076 states that display 152 can be housed separately in a remote control unit that communicates with the sensor and that display 152 can indicate the displacement, or position, of leading edge 16a), that includes a processor (processor 148) that processes the signal provided by the accelerometer (para. 0079 states that processor 148 processes signals from acceleration sensor 112), and that includes a transmitter that transmits the processed angular information (paras. 0081-0082 refer to outputting signals) (Figs. 2-9 and 28; paras. 0074-0082).
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 invention of claim 14 of the patent to include the slot of the handle, the processor processing the signal, and the transmitter transmitting the processed angular information, as suggested by McGinley, to facilitate providing an alert to a user when a predetermined threshold is reached (see para. 0002 of McGinley).
Allowable Subject Matter
Claims 21-25, 28-30, and 38-40 are allowable over the prior art.
As allowable subject matter has been indicated, applicant's reply must either comply with all formal requirements (the double patenting rejection set forth above) or specifically traverse each requirement not complied with. See 37 CFR 1.111(b) and MPEP § 707.07(a).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JULIANNA N HARVEY whose telephone number is (571)270-3815. The examiner can normally be reached Mon.-Fri. 8:00am-5:00pm EST.
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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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/JULIANNA N HARVEY/Primary Examiner, Art Unit 3773
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