DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 05/27/26 has been entered.
Response to Amendment
The Amendment filed 05/27/26 has been entered. Claims 21, 25, 29-30, 32-33, 36, and 38 have been amended. Claims 21-40 are addressed in the following office action.
NO PRIOR ART REJECTION
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.
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Claims 21-26, 28-33, and 35 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 4, and 8 of U.S. Patent No. 9,649,111 in view of Cooper (US 6,132,368) and Klieman et al. (US 4,611,595).
Regarding claim 21, U.S. Patent No. 9,649,111 divulges a clip applier tool, comprising: an elongate shaft; a firing chamber; and a clip magazine removably coupled to the elongate shaft and extending in a direction transverse to a longitudinal axis of the elongate shaft, the clip magazine comprising: a housing defining a storage chamber; a plurality of clips removably stored in the storage chamber in a stacked orientation within the clip magazine, such that the stacked orientation is transverse to the longitudinal axis of the elongate shaft; and a spring positioned to sequentially bias the plurality of clips from the storage chamber toward the firing chamber (Claim 1). Also, U.S. Patent No. 9,649,111 divulges an end effector, comprising: a first jaw configured to receive a first portion of a clip; and a second jaw configured to receive a second portion of the clip (Claim 8).
However, U.S. Patent No. 9,649,111 fails to divulge a robotic clip applier tool, comprising: a driver configured to receive a motor-driven input from a robot; the end effector, comprising: a first jaw defining a first channel configured to receive a first portion of a clip; and a second jaw defining a second channel configured to receive a second portion of the clip, wherein at least one of the first jaw and the second jaw is movable based on the driver receiving the motor-driven input from the robot.
In the same filed of endeavor, which is clip appliers, Cooper teaches (Figs. 3A & 6) a robotic clip applier tool (4), comprising: a driver (124 & 126) configured to receive a motor-driven input from a robot (Col. 4, lines 38-67; Col. 5, lines 1-18; Col. 8, lines 1-26); an end effector (62), comprising: a first jaw configured to receive a first portion of a clip; and a second jaw configured to receive a second portion of the clip, wherein at least one of the first jaw and the second jaw is movable based on the driver receiving the motor-driven input from the robot (Col. 8, lines 1-26).
Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to have modified U.S. Patent No. 9,649,111 to have a robotic clip applier tool, comprising: a driver configured to receive a motor-driven input from a robot; the end effector, comprising: a first jaw configured to receive a first portion of a clip; and a second jaw configured to receive a second portion of the clip, wherein at least one of the first jaw and the second jaw is movable based on the driver receiving the motor-driven input from the robot. Doing so would improve telerobotic systems and methods for remotely controlling surgical instruments at a surgical site on a patient (Col. 2, lines 5-7), as taught by Cooper.
In the same filed of endeavor, which is clip appliers, Klieman teaches (Figs. 2, 6, 8) an end effector, comprising: a first jaw (32) defining a first channel (40) configured to receive a first portion of a clip; and a second jaw (34) defining a second channel (42) configured to receive a second portion of the clip (Col. 6, lines 33-41).
Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to have modified U.S. Patent No. 9,649,111 to have the end effector, comprising: a first jaw defining a first channel configured to receive a first portion of a clip; and a second jaw defining a second channel configured to receive a second portion of the clip. Doing so would serve to guide and secure a clip as it is rapidly moved from the main body of instrument to the forward most portions of jaws (Col. 6, lines 35-41), as taught by Klieman.
Regarding claim 22, U.S. Patent No. 9,649,111, in view of Cooper and Klieman, divulges the robotic clip applier tool of Claim 21. U.S. Patent No. 9,649,111 further divulges wherein the clip magazine defines the firing chamber (Claim 1).
Regarding claim 23, U.S. Patent No. 9,649,111, in view of Cooper and Klieman, divulges the robotic clip applier tool of Claim 21. U.S. Patent No. 9,649,111 further divulges wherein a portion of the elongate shaft and a portion of the clip magazine define the firing chamber (Claim 1).
Regarding claim 24, U.S. Patent No. 9,649,111, in view of Cooper and Klieman, divulges the robotic clip applier tool of Claim 21. U.S. Patent No. 9,649,111 further divulges an articulation joint, wherein the end effector is rotatable relative to the elongate shaft about the articulation joint (Claim 2). Cooper further teaches (Figs. 6-7) wherein the driver comprises a first driver (126), and wherein the robotic clip applier tool further comprises: a second driver (124) configured to receive a second motor-driven input from the robot; and an articulation joint (60), wherein the end effector is rotatable relative to the elongate shaft about the articulation joint based on the second driver receiving the second motor- driven input from the robot (Col. 4, lines 59-67; Col. 5, lines 1-45; Col. 8, lines 13-17).
Regarding claim 25, U.S. Patent No. 9,649,111, in view of Cooper and Klieman, divulges the robotic clip applier tool of Claim 21. Cooper further teaches (Figs. 6-7) wherein the driver comprises a first driver (126), wherein the elongate shaft defines a longitudinal axis [i.e. Z axis], wherein the robotic clip applier tool further comprises a second driver (124) configured to receive a second motor- driven input from the robot, and wherein the elongate shaft is rotatable about the longitudinal axis based on the second driver receiving the second motor-driven input (Col. 4, lines 59-67; Col. 5, lines 1-45; Col. 8, lines 13-17 & lines 51-53).
Regarding claim 26, U.S. Patent No. 9,649,111, in view of Cooper and Klieman, divulges the robotic clip applier tool of Claim 21. U.S. Patent No. 9,649,111 further divulges a firing driver configured to advance a clip of the plurality of clips from the firing chamber toward the receiving chamber (Claim 1). Klieman further teaches wherein the first channel and the second channel co-operatively define a receiving chamber (Fig. 6).
Regarding claim 28, U.S. Patent No. 9,649,111, in view of Cooper and Klieman, divulges the robotic clip applier tool of Claim 26. U.S. Patent No. 9,649,111 further divulges wherein the housing further defines a window, and wherein the firing driver is configured to move through the window to advance the clip of the plurality of clips from the firing chamber toward the receiving chamber (Claim 4).
Regarding claim 29, U.S. Patent No. 9,649,111 divulges a clip applier tool, comprising: a driver; an elongate shaft; a clip magazine releasably attachable to the elongate shaft to sequentially provide clips for the receiving chamber, wherein the clip magazine comprises a storage chamber including a plurality of clips arranged along a supply axis; and a spring positioned on the supply axis to sequentially bias the plurality of clips from the storage chamber along the supply axis, the supply axis being a direction transverse to a longitudinal axis of the elongate shaft (Claim 1). Also, U.S. Patent No. 9,649,111 divulges an end effector configurable between an open configuration and a closed configuration, wherein the end effector is transitionable toward the closed, wherein the end effector defines a receiving chamber to support a clip, and wherein the end effector comprises: a first jaw defining a first portion of the receiving chamber; and a second jaw defining a second portion of the receiving chamber (Claim 8).
However, U.S. Patent No. 9,649,111 fails to further divulge a robotic clip applier tool, comprising: a driver configured to receive a motor-driven input from a robot; wherein the end effector is transitionable toward the closed configuration based on the driver receiving the motor-driven input from the robot.
In the same filed of endeavor, which is clip appliers, Cooper teaches (Figs. 3A & 6) a robotic clip applier tool (4), comprising: a driver (124 & 126) configured to receive a motor-driven input from a robot (Col. 4, lines 38-67; Col. 5, lines 1-18; Col. 8, lines 1-26); an end effector (62) configurable between an open configuration and a closed configuration [i.e. opening and closing of jaws], wherein the end effector is transitionable toward the closed configuration based on the driver receiving the motor-driven input from the robot (Col. 8, lines 1-26).
Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to have modified U.S. Patent No. 9,649,111 to have a robotic clip applier tool, comprising: a driver configured to receive a motor-driven input from a robot; an end effector configurable between an open configuration and a closed configuration, wherein the end effector is transitionable toward the closed configuration based on the driver receiving the motor-driven input from the robot. Doing so would improve telerobotic systems and methods for remotely controlling surgical instruments at a surgical site on a patient (Col. 2, lines 5-7), as taught by Cooper.
In the same filed of endeavor, which is clip appliers, Klieman teaches (Figs. 2, 6, 8) wherein an end effector defines a receiving chamber to support a clip, and wherein the end effector comprises: a first jaw (32) defining a first portion of the receiving chamber (40); and a second jaw (34) defining a second portion of the receiving chamber (42; Col. 6, lines 33-41).
Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to have modified U.S. Patent No. 9,649,111 to have wherein an end effector defines a receiving chamber to support a clip, and wherein the end effector comprises: a first jaw defining a first portion of the receiving chamber; and a second jaw defining a second portion of the receiving chamber. Doing so would serve to guide and secure a clip as it is rapidly moved from the main body of instrument to the forward most portions of jaws (Col. 6, lines 35-41), as taught by Klieman.
Regarding claim 30, U.S. Patent No. 9,649,111, in view of Cooper and Klieman, divulges the robotic clip applier tool of Claim 29. U.S. Patent No. 9,649,111 further divulges wherein a portion of the elongate shaft and a portion of the clip magazine define a firing chamber, wherein the spring is further positioned to sequentially bias the plurality of clips from the storage chamber to the firing chamber (Claim 1).
Regarding claim 31, U.S. Patent No. 9,649,111, in view of Cooper and Klieman, divulges the robotic clip applier tool of Claim 29. U.S. Patent No. 9,649,111 further divulges wherein the end effector is rotatable relative to the elongate shaft about the articulation joint (Claim 2). Cooper further divulges (Figs. 6-7) wherein the driver comprises a first driver (126), and wherein the robotic clip applier tool further comprises: a second driver (124) configured to receive a second motor-driven input from the robot; and an articulation joint (60), wherein the end effector is rotatable relative to the elongate shaft about the articulation joint based on the second driver receiving the second motor- driven input from the robot (Col. 4, lines 59-67; Col. 5, lines 1-45; Col. 8, lines 13-17).
Regarding claim 32, U.S. Patent No. 9,649,111, in view of Cooper and Klieman, divulges the robotic clip applier tool of Claim 29. Cooper further divulges (Figs. 6-7) wherein the driver comprises a first driver (126), wherein the elongate shaft defines a longitudinal axis [i.e. Z axis], wherein the robotic clip applier tool further comprises a second driver (124) configured to receive a second motor- driven input from the robot, and wherein the elongate shaft is rotatable about the longitudinal axis based on the driver receiving the second motor-driven input from the robot (Col. 4, lines 59-67; Col. 5, lines 1-45; Col. 8, lines 13-17 & lines 51-53).
Regarding claim 33, U.S. Patent No. 9,649,111, in view of Cooper and Klieman, divulges the robotic clip applier tool of Claim 29. U.S. Patent No. 9,649,111 further divulges comprising a firing driver configured to advance a clip of the plurality of clips from the clip magazine toward the receiving chamber along a firing axis (Claim 1).
Regarding claim 35, U.S. Patent No. 9,649,111, in view of Cooper and Klieman, divulges the robotic clip applier tool of Claim 33. U.S. Patent No. 9,649,111 further divulges wherein the clip magazine defines a window, and wherein the firing driver is configured to move through the window to advance the clip of the plurality of clips from the clip magazine toward the receiving chamber along the firing axis (Claim 4).
Claims 27, 34, and 36-40 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 4, and 8 of U.S. Patent No. 9,649,111 in view of Cooper (US 6,132,368), Klieman et al. (US 4,611,595), and Hausen (US 7,875,029).
Regarding claim 27, U.S. Patent No. 9,649,111, in view of Cooper and Klieman, divulges the robotic clip applier tool of Claim 26. However, the combination fails to further divulge wherein the firing driver is configured to advance the clip of the plurality of clips from the firing chamber toward the receiving chamber based on the driver receiving the motor-driven input from the robot.
In the analogous art of clip appliers, Hausen teaches (Fig. 2) wherein a firing driver (32) is configured to advance the clip of the plurality of clips from the firing chamber toward the receiving chamber based on the driver receiving the motor-driven input from the robot (Col. 5, lines 4-11 & Col. 7, lines 19-45).
Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to have modified U.S. Patent No. 9,649,111, to have wherein the firing driver is configured to advance the clip of the plurality of clips from the firing chamber toward the receiving chamber based on the driver receiving the motor-driven input from the robot, as taught by Hausen. Cooper discloses the tool may include actuation of tool controlled by a robot (Abstract; Col. 8, lines 18-21 & lines 61-67), thus Hausen teachings would have provided Cooper with a sufficient means wherein the firing driver is configured to advance the clip of the plurality of clips from the firing position toward the end effector based on the driver receiving the motor-driven input from the robot.
Regarding claim 34, U.S. Patent No. 9,649,111, in view of Cooper and Klieman, divulges the robotic clip applier tool of Claim 33. U.S. Patent No. 9,649,111 further divulges wherein the firing driver is configured to advance the clip of the plurality of clips from the clip magazine toward the receiving chamber along the firing axis (Claim 1). However, U.S. Patent No. 9,649,111 fails to further divulge wherein the firing driver is configured to advance the clip of the plurality of clips from the clip magazine toward the receiving chamber along the firing axis based on the driver receiving the motor- driven input from the robot.
In the analogous art of clip appliers, Hausen teaches (Fig. 2) wherein a firing driver (32) is configured to advance the clip of the plurality of clips from the clip magazine toward the receiving chamber along the firing axis based on the driver receiving the motor- driven input from the robot (Col. 5, lines 4-11 & Col. 7, lines 19-45).
Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to have modified U.S. Patent No. 9,649,111, to have wherein a firing driver is configured to advance the clip of the plurality of clips from the clip magazine toward the receiving chamber along the firing axis based on the driver receiving the motor- driven input from the robot, as taught by Hausen. Cooper discloses the tool may include actuation of tool controlled by a robot (Abstract; Col. 8, lines 18-21 & lines 61-67), thus Hausen teachings would have provided Cooper with a sufficient means wherein the firing driver is configured to advance the clip of the plurality of clips from the firing position toward the end effector based on the driver receiving the motor-driven input from the robot.
Regarding claim 36, U.S. Patent No. 9,649,111 divulges a clip applier tool, comprising: a driver; an elongate shaft; a clip magazine, comprising: a storage chamber including a supply axis; a plurality of clips arranged along the supply axis in the storage chamber; and a spring positioned to sequentially bias the plurality of clips from the storage chamber along the supply axis to a firing position, the firing position located on a firing axis transverse to the supply axis, the firing axis being parallel to a longitudinal axis of the elongate shaft; and a firing driver configured to advance a clip of the plurality of clips from the firing position toward the end effector along the firing axis (Claim 1). Also, U.S. Patent No. 9,649,111 divulges an end effector, comprising: a first jaw to support a first portion of a clip; and a second jaw to support a second portion of the clip (Claim 8).
However, U.S. Patent No. 9,649,111 fails to divulge a robotic clip applier tool, comprising: a driver configured to receive a motor-driven input from a robot; an elongate shaft; an end effector, comprising: a first jaw defining a first recess to support a first portion of a clip; and a second jaw defining a second recess to support a second portion of the clip; and a firing driver configured to advance a clip of the plurality of clips from the firing position toward the end effector along the firing axis based on the driver receiving the motor-driven input from the robot.
In the same filed of endeavor, which is clip appliers, Cooper teaches (Figs. 3A & 6) a robotic clip applier tool (4), comprising: a driver (124 & 126) configured to receive a motor-driven input from a robot (Col. 4, lines 38-67; Col. 5, lines 1-18; Col. 8, lines 1-26); an end effector (62), comprising: a first jaw to support a first portion of a clip; and a second jaw to support a second portion of the clip (Col. 8, lines 1-26).
Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to have modified U.S. Patent No. 9,649,111 to have a robotic clip applier tool, comprising: a driver configured to receive a motor-driven input from a robot; an end effector, comprising: a first jaw to support a first portion of a clip; and a second jaw to support a second portion of the clip. Doing so would improve telerobotic systems and methods for remotely controlling surgical instruments at a surgical site on a patient (Col. 2, lines 5-7), as taught by Cooper.
In the same filed of endeavor, which is clip appliers, Klieman teaches (Figs. 2, 6, 8) an end effector, comprising: a first jaw (32) defining a first recess (40) to support a first portion of a clip; and a second jaw (34) defining a second recess (42) to support a second portion of the clip (Col. 6, lines 33-41).
Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to have modified U.S. Patent No. 9,649,111 to have the end effector, comprising: a first jaw defining a first channel configured to receive a first portion of a clip; and a second jaw defining a second channel configured to receive a second portion of the clip. Doing so would serve to guide and secure a clip as it is rapidly moved from the main body of instrument to the forward most portions of jaws (Col. 6, lines 35-41), as taught by Klieman.
In the analogous art of clip appliers, Hausen teaches (Fig. 2) wherein a firing driver (32) configured to advance the clip of the plurality of clips from the firing position toward the end effector based on the driver receiving the motor-driven input from the robot (Col. 5, lines 4-11 & Col. 7, lines 19-45).
Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to have modified U.S. Patent No. 9,649,111, to have wherein the firing driver is configured to advance the clip of the plurality of clips from the firing position toward the end effector based on the driver receiving the motor-driven input from the robot, as taught by Hausen. Cooper discloses the tool may include actuation of tool controlled by a robot (Abstract; Col. 8, lines 18-21 & lines 61-67), thus Hausen teachings would have provided Cooper with a sufficient means wherein the firing driver is configured to advance the clip of the plurality of clips from the firing position toward the end effector based on the driver receiving the motor-driven input from the robot.
Regarding claim 37, U.S. Patent No. 9,649,111, in view of Cooper, Klieman, and Hausen, divulges the robotic clip applier tool of Claim 36. U.S. Patent No. 9,649,111 further divulges an articulation joint, wherein the end effector is rotatable relative to the elongate shaft about the articulation joint (Claim 2). Cooper further discloses (Figs. 6-7) wherein the driver comprises a first driver (126), and wherein the robotic clip applier tool further comprises: a second driver (124) configured to receive a second motor-driven input from the robot; and an articulation joint (60), wherein the end effector is rotatable relative to the elongate shaft about the articulation joint based on the second driver receiving the second motor- driven input from the robot (Col. 4, lines 59-67; Col. 5, lines 1-45; Col. 8, lines 13-17).
Regarding claim 38, U.S. Patent No. 9,649,111, in view of Cooper, Klieman, and Hausen, divulges the robotic clip applier tool of Claim 36. Cooper further divulges (Figs. 6-7) wherein the driver comprises a first driver (126), wherein the elongate shaft defines the longitudinal axis [i.e. Z axis], wherein the robotic clip applier tool further comprises a second driver (124) configured to receive a second motor- driven input from the robot, and wherein the elongate shaft is rotatable about the longitudinal axis based on the driver receiving the second motor-driven input from the robot (Col. 4, lines 59-67; Col. 5, lines 1-45; Col. 8, lines 13-17 & lines 51-53).
Regarding claim 39, U.S. Patent No. 9,649,111, in view of Cooper, Klieman, and Hausen, divulges the robotic clip applier tool of Claim 36. U.S. Patent No. 9,649,111 further divulges wherein the clip magazine defines a window, and wherein the firing driver is configured to move through the window to advance the clip of the plurality of clips from the firing position toward the end effector along the firing axis (Claim 4).
Regarding claim 40, U.S. Patent No. 9,649,111, in view of Cooper, Klieman, and Hausen, divulges the robotic clip applier tool of Claim 39. U.S. Patent No. 9,649,111 further divulges wherein the clip magazine comprises shelves configured to support the clips in the firing position, and wherein the shelves are aligned with the window (Claim 4).
Response to Arguments
Applicant’s arguments, see pages 7-15, filed 05/27/26, with respect to the rejections of claims under 35 USC § 103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new grounds of rejection is made in view of newly cited art.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Examiner Chima Igboko whose telephone number is (571)272-8422. The examiner can normally be reached on Monday-Friday 9:00am-6:00pm.
If attempts to reach the examiner by telephone are unsuccessful, please contact the examiner’s supervisor, Jackie Ho, at (571) 272-4696. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/C.U.I/ Examiner, Art Unit 3771
/ASHLEY L FISHBACK/Primary Examiner, Art Unit 3771 June 26, 2026
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