DETAILED ACTION
Response to Amendment
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-7 and 19-22 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
In regard to claim 1, it is unclear how the clamp tabs can simultaneously (1) extend inward toward the distal end opening and (2) be free of the lumen and the distal end when the lumen is previously recited as including the distal end opening. These limitations seem to contradict themselves.
The same limitation is recited in claim 19 and is rejected for similar reasons.
In further regard to claim 19, there is no antecedent basis for “the distal end opening” on lines 9-10.
Any dependent claim is rejected by virtue of its dependency on the rejected independent claims.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1, 5, and 7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Shipp (US 5,263,937).
In regard to claim 1, Shipp discloses chest tube insertion sheath apparatus (10; “chest tube insertion” is treated as intended use), comprising: a sheath body (12) having a distal end (distal end is considered where taper 38 starts) and a proximal end (see Fig. 2); a lumen (23) defined axially through the sheath body from the distal end to the proximal end (see Fig. 2), the lumen including a distal end opening at the distal end and a proximal end opening at the proximal end (the distal end opening is at end of taper and the proximal end opening is at proximal end of 22); and a tapered tube clamp (38) at the distal end of the sheath body (see Figs. 1-3), the tube clamp including one or more clamp tabs (42) angled radially inward toward the distal end opening, wherein the one or more clamp tabs extend, relative to a first axis defined by the lumen, free of the lumen and the distal end (see Figs. 1-3; the Shipp configuration is the same as applicant’s; a tube defining a distal end and tabs extends inwardly toward a distal end opening).
Regarding claim 5, Shipp discloses wherein the sheath body (12) is rigid (see Fig. 7; the cannula keeping its shape through body tissue; furthermore).
Regarding claim 7, Shipp discloses wherein at least a portion of the one or more clamp tabs (42) are semi-flexible (see col. 5, lines 12-31).
Claim(s) 1 and 5 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hart et al. (US 2005/0216028; hereafter Hart).
In regard to claim 1, Hart discloses chest tube insertion sheath apparatus (100; Fig. 28), comprising: a sheath body (116) having a distal end (distal end is considered where taper 140 starts) and a proximal end (112); a lumen (hollow space of 116; see Fig. 28) defined axially through the sheath body from the distal end to the proximal end, the lumen including a distal end opening (opening of 120) at the distal end and a proximal end opening at the proximal end (opening at 115; see Fig. 28); and a tapered tube clamp (140) at the distal end of the sheath body (see Figs. 1-3), the tube clamp including one or more clamp tabs (the tapered sides of 140) angled radially inward toward the distal end opening (see Fig. 28), wherein the one or more clamp tabs extend, relative to a first axis defined by the lumen, free of the lumen and the distal end (see Fig. 28; the Hart configuration is the same as applicant’s; a tube defining a distal end and tabs extends inwardly toward a distal end opening).
Regarding claim 5, Hart et al. wherein the sheath body (116) is rigid ([0080]).
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 2-4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shipp in view of Bierman et al. (Pub. No. 2014/0207069).
Regarding claim 2, Shipp fails to expressly teach further comprising: a first groove on the sheath body extending from the distal end to the proximal end of the sheath body; and a second groove on the sheath body extending from the distal end to the proximal end of the sheath body. However, Bierman et al. teaches a sheath body (40A) comprising: a first groove (45 at top, see Fig. 4J) on the sheath body (40A) extending from a distal end (end of 40A opposite 47, see Fig. 4K) to the proximal end (end of 40A directly attached to 47, see Fig. 4K) of the sheath body (40A); and a second groove (45 at bottom, see Fig. 4J) on the sheath body (40A) extending from the distal end to the proximal end of the sheath body (40A, see [0144] where the 45 can extend through 42A and 40A).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the device taught by Shipp by forming the handle and the sheath body to have a split line as taught by Bierman et al. for easily removing the sheath after inserting a catheter or other medical instrument (see [0142]).
Regarding claim 3, Shipp in view of Bierman et al. teaches further comprising a first handle (right side of 115, see Bierman et al. Fig. 4J for illustration of the handle 42A) and a second handle (see side of 115) positioned on the proximal end (112) of the sheath body (116), the first handle (right side of 115) positioned between the first groove (45 at top, see Bierman Fig. 4J for illustrative purposes of how the proximal end 112 is modified to have a first and second groove) and the second groove (45 on the bottom, see Bierman Fig. 4J for illustrative purposes) on a first side (right side) of the sheath body (116) and the second handle (left side of 115) positioned opposite the first handle (right side of 115) between the first groove (45 at top) and the second groove (45 at bottom) on a second side (left side) of the sheath body (116).
Regarding claim 4, Shipp does not teach further comprising: a first notch positioned on the proximal end of the sheath body and positioned at the first groove; and a second notch positioned on the proximal end of the sheath body and positioned at the second groove. However, Bierman et al. teaches further comprising: a first notch (95A on the right, see Fig. 4J) positioned on the proximal end (end of 40A connected to 47) of the sheath body (116) and positioned at the first groove (45 on the top); and a second notch (95A on the left) positioned on the proximal end (end of 40A connected to 47) of the sheath body (40A) and positioned at the second groove (45 on the bottom).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the device taught by Shipp by forming the proximal end of the device to have tabs and separable lip as taught by Bierman et al. for allowing the sheath to engage with other elements (see [0144]).
Claims 2-4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hart et al. (Pub. No. 2005/0216028) in view of Bierman et al. (Pub. No. 2014/0207069).
Regarding claim 2, Hart et al. does not teach further comprising: a first groove on the sheath body extending from the distal end to the proximal end of the sheath body; and a second groove on the sheath body extending from the distal end to the proximal end of the sheath body. However, Bierman et al. teaches a sheath body (40A) comprising: a first groove (45 at top, see Fig. 4J) on the sheath body (40A) extending from a distal end (end of 40A opposite 47, see Fig. 4K) to the proximal end (end of 40A directly attached to 47, see Fig. 4K) of the sheath body (40A); and a second groove (45 at bottom, see Fig. 4J) on the sheath body (40A) extending from the distal end to the proximal end of the sheath body (40A, see [0144] where the 45 can extend through 42A and 40A).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the device taught by Hart et al. by forming the handle and the sheath body to have a split line as taught by Bierman et al. for easily removing the sheath after inserting a catheter or other medical instrument (see [0142]). Further Hart et al. teaches that modifications may be made to the device (see Hart et al. [0091]).
Regarding claim 3, Hart et al. in view of Bierman et al. teaches further comprising a first handle (right side of 115, see Bierman et al. Fig. 4J for illustration of the handle 42A) and a second handle (see side of 115) positioned on the proximal end (112) of the sheath body (116), the first handle (right side of 115) positioned between the first groove (45 at top, see Bierman Fig. 4J for illustrative purposes of how the proximal end 112 is modified to have a first and second groove) and the second groove (45 on the bottom, see Bierman Fig. 4J for illustrative purposes) on a first side (right side) of the sheath body (116) and the second handle (left side of 115) positioned opposite the first handle (right side of 115) between the first groove (45 at top) and the second groove (45 at bottom) on a second side (left side) of the sheath body (116).
Regarding claim 4, Hart et al. in view of Bierman et al. does not teach further comprising: a first notch positioned on the proximal end of the sheath body and positioned at the first groove; and a second notch positioned on the proximal end of the sheath body and positioned at the second groove. However, Bierman et al. teachesfurther comprising: a first notch (95A on the right, see Fig. 4J) positioned on the proximal end (end of 40A connected to 47) of the sheath body (116) and positioned at the first groove (45 on the top); and a second notch (95A on the left) positioned on the proximal end (end of 40A connected to 47) of the sheath body (40A) and positioned at the second groove (45 on the bottom).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the device taught by Hart et al.in view of Bierman et al. by forming the proximal end of the device to have tabs and separable lip as taught by Bierman et al. for allowing the sheath to engage with other elements (see [0144]). Further Hart et al. in view of Bierman et al. teaches that modifications may be made to the device (see Hart et al. [0091]).
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Shipp or Hart in view of Moy (Patent No. 5,509,909).
Regarding claim 6, Shipp or Hart fail to teach wherein the sheath body is disposed about a curvilinear axis. However, Moy teaches a chest tube (10, Fig. 1) disposed about a curvilinear axis (see curvilinear axis of 10, Fig. 1).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the device taught by Shipp or Hart by forming the sheath to be bent as taught by Moy for providing an anchoring function and reducing the likelihood of inadvertent removal of the device from the inserted cavity (see Col. 1, lines 65-67 and Col. 2, line 1). Further Hart et al. teaches that modifications may be made to the device (see Hart et al. [0091]).
Claims 8, 11 and 15-18 are rejected under 35 U.S.C. 103 as being unpatentable over Shipp or Hart in view of Heaven et al. (US 5,318,528; hereafter Heaven).
Regarding claim 8, Shipp or Hart does not teach wherein the stylet is disposed about a second curvilinear axis, wherein the second curvilinear axis substantially matches at least a portion of the first curvilinear axis prior to the insertion of the stylet into the lumen. However, Heaven teaches a stylet (2) disposed about a second curvilinear axis (curvilinear axis of Fig. 1), wherein the second curvilinear axis substantially matches at least a portion of a first curvilinear axis (curvilinear axis of 3, Fig. 2), wherein the curves match each other before insertion of stylet (2) into sheath (3).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the device taught by Shipp or Hart in view of Moy by forming the surgical instrument to have be disposed about a second curvilinear axis that substantially matches at least a portion of a first curvilinear axis the orientation of the of the assembly can be modified during use by relative movement between the stylet and sheath (see Abstract of Heaven).
Regarding claim 11, Shipp and Hart both disclose the recited structures (see rejections above).
Regarding claims 15-17, Shipp and Hart both disclose the recited tube clamps (see rejections above).
Regarding claim 18, Heaven teaches that stylet (2) includes a lumen (see Fig. 6).
Claims 12-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hart in view of Moy (Patent No. 5,509,909) in view of Swinehart et al. (Patent No. 8,343,045) in view of Bierman et al. (Pub. No. 2014/0207069).
Regarding claim 12, Hart et al. in view of Moy in view of Swineheart et al. teaches wherein the sheath (100) further comprises: a collar (115) positioned at the proximal end (112) of the sheath body (116) but does not specifically teach a first handle disposed on the collar; and a second handle disposed on the collar opposite the first handle. However, Bierman et al. teaches a sheath (40A, Fig. 4K) having a collar (42A, Fig. 4K), a first handle (43 on right, Fig. 4K) disposed on the collar (42A); and a second handle (43 on the left, Fig. 4K) disposed on the collar (42A) opposite the first handle (43 on the right).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the device taught by Hart et al.in view of Bierman et al. by forming the proximal end of the device to have tabs and separable lip as taught by Bierman et al. for allowing the sheath to engage with other elements (see [0144]). Further Hart et al. in view of Bierman et al. teaches that modifications may be made to the device (see Hart et al. [0091]).
Regarding claim 13, Hart et al. in view of Moy in view of Swineheart et al. in view of Bierman et al. teaches the collar (42A) extending between the proximal end (very proximal end of 42A) and the distal end (102) of the sheath (100) but does not teach wherein the sheath further comprises: a first groove disposed on the sheath body and the collar extending between the proximal end and the distal end of the sheath, wherein at least a portion of the first groove is positioned between the first handle and the second handle; and a second groove disposed on the sheath body wherein at least a portion of the second groove is positioned between the first handle and the second handle opposite the first groove.
However, Bierman et al. teaches a sheath body (40A) comprising: a first groove (45 at top, see Fig. 4J) on the sheath body (40A) extending between a proximal end (end of 40A directly attached to 47, see Fig. 4K) and a distal end (end of 40A opposite 47, see Fig. 4K) to the of the sheath body (40A); wherein a least a portion of the first groove (45 at top) is positioned between the first handle (43 on the right) and the second handle (43 on the left); and a second groove (45 at bottom, see Fig. 4J) disposed on the sheath body (40A) and collar (42A) extending between the proximal end and the distal end of the sheath body (40A, see [0144] where the 45 can extend through 42A and 40A), wherein at least a portion of the second groove (45 on the bottom) is positioned between the first handle (43 on the right) and the second handle (43 on the left) opposite the first groove
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the device taught by Hart et al. in view of Moy in view of Swineheart et al. in view of Bierman et al. by forming the handle and the sheath body to have a split line as taught by Bierman et al. for easily removing the sheath after inserting a catheter or other medical instrument (see [0142]). Further Hart et al. in view of Moy in view of Swineheart et al. in view of Bierman et al. teaches that modifications may be made to the device (see Hart et al. [0091]).
Regarding claim 14, Hart et al. in view of Moy in view of Swineheart et al. in view of Bierman et al. teaches wherein the first groove (45 on the right) is a first fracture line (see Bierman et al. [0144]) and wherein the second groove (45 on the left) is a second fracture line (see Bierman et al. [0144]).
Claims 19 and 21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hart in view of Kronner (Patent No. 5,169,387).
Regarding claim 19, Hart et al. teaches a method of inserting a chest tube (100, see Figs. 7 and 28) into a body cavity of a patient ([0014]), comprising: making an incision in a cavity of the patient (see [0031]); inserting a tube chest insertion apparatus (100/200) into the cavity of the patient ([0014]), the tube chest insertion apparatus (100/200) comprising a sheath (100, Fig. 28), the sheath (100) including a sheath body (116, Fig. 28) having a distal end (where 140 starts) and a proximal end (112, Fig. 28), a lumen (hollow space of 116) defined axially through the sheath body (116) from the distal end to the proximal end (112) of the sheath (100), and a tapered tube clamp (140) at the distal end of the sheath body (116), the tube clamp including one or more clamp tabs (tapered sides of 140) angled radially inward toward the distal end opening (see Fig. 28; the Hart configuration is the same as applicant’s; a tube defining a distal end and tabs extends inwardly toward a distal end opening); positioning the tube chest insertion apparatus (100/200) in the cavity ([0014]); 28Attorney Docket No. 035633.86648Customer No. 104982inserting the chest tube (200) through the lumen of the sheath (100) into the cavity (see [0014]); and removing the sheath (100) from the cavity of the patient (see [0014]).
Hart et al. does not specifically teach a method of inserting a chest tube into a chest cavity of a patient, the tube chest insertion apparatus comprising a sheath having a stylet installed in the sheath and removing the stylet from the sheath. However, Kronner teaches a method of inserting a chest tube (20, Fig. 2) into a chest cavity (42, Fig. 3) of a patient (see Col. 1, lines 63-68, Col. 2, lines 1-2 and Col. 3, lines 23), inserting a chest tube insertion apparatus (10/12/20/28, Fig. 2) into the chest cavity (42) of the patient, the chest tube insertion apparatus (10/12/20/28) comprising a sheath (12) having a stylet (28) installed in the sheath (12, see Figs. 1-2), the sheath (12) including a sheath body (body of 12) having a distal end (16, Fig. 2) and a proximal end (17, Fig. 2), a lumen (hollow space of 12) defined axially through the sheath body (body of 12) from the distal end to the proximal end of the sheath (see Fig. 2 illustrating 20 within 12; hence, 12 has lumen from 16 to 17), positioning the chest tube insertion apparatus (10) in the chest cavity (42); removing the stylet (28) from the sheath (12, see Col. 3, lines 44-45); 28Attorney Docket No. 035633.86648Customer No. 104982inserting the chest tube (20) through the lumen of the sheath (12) into the chest cavity (42, see Col. 3, lines 53-65).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the device and method taught by Hart et al. by adding the stylet to the device and using the device to access a chest cavity as taught by Kronner because Kronner teaches that such method and device is a safe method and apparatus for insertion of a catheter into a body cavity (see Col. 1, lines 49-52) and the method and device taught by Hart et al. is for insertion into a body cavity (see Hart et al., [0004]) and Hart et al. teaches that modifications may be made to the device (see [0091]).
Regarding claim 21, Hart et al. in view of Kronner teaches further comprising separating the sheath from the chest tube (see Kronner Col. 3, lines 53-65).
Claim 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hart in view of Kronner (Patent No. 5,169,387) in view of Jaworek et al. (Pub. No. 2013/0204087) in view of Bierman et al. (Pub. No. 2014/0207069).
Regarding claim 20, Hart et al. in view of Kronner does not teach wherein positioning the chest tube insertion apparatus includes rotating the chest tube apparatus inside the chest cavity via a first handle and a second handle positioned on the proximal end of the sheath body. However, Jaworek et al. teaches rotating a chest tube apparatus (10, see [0022]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the method taught by Hart et al. in view of Kronner by rotating the chest tube apparatus as taught by Jaworek et al. so that the orientation of the device may be changed during the procedure (see [0022]). Further Hart et al. in view of Kronner teaches that modifications may be made to the device (see Hart et al. [0091]).
Hart et al. in view of Kronner in view of Jaworek et al. does not teach via a first handle and a second handle positioned on the proximal end of the sheath body. However, Bierman et al. teaches a sheath (40A, Fig. 4K) having a first handle (43 on right, Fig. 4K) and a second handle (43 on the left, Fig. 4K) and manipulating the sheath view the handle (43, see [0144]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the device taught by Hart et al. in view of Kronner in view of Jaworek et al. by forming the proximal end of the device to have tabs and separable lip as taught by Bierman et al. for allowing the sheath to engage with other elements (see [0144]). Further Hart et al. in view of Kronner in view of Jaworek et al. teaches that modifications may be made to the device (see Hart et al. [0091]).
Claim 22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hart in view of Kronner (Patent No. 5,169,387) in view of Semrad (Patent. No. 5,059,183).
Regarding claim 22, Hart et al. in view of Kronner teaches the chest tube insertion apparatus includes a stylet lumen (lumen of 20) but does not teach further comprising: inserting a guidewire into the chest cavity of a patient via a trochar, wherein when the chest tube insertion apparatus is inserted into the chest cavity, and wherein when the chest tube insertion apparatus is inserted into the chest cavity, a free end of the guidewire is inserted into the stylet lumen and the chest tube insertion apparatus is translated along the guidewire. However, Semrad teaches inserting a guidewire (10, Fig. 4) via a trochar (20, Fig. 4) when a tube insertion apparatus (40, Fig. 4) is inserted into a cavity (see Fig. 4), a free end of the guidewire (distal end of 10) is inserted into a stylet lumen (lumen of 20) and the tube insertion apparatus (40) is translated along the guidewire (10, see Col. 6, lines 43-58).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the method taught by Hart et al. in view of Kronner by adding the trocar and the guidewire taught by Semrad and inserting a guidewire into the chest cavity of a patient via a trochar, wherein when the chest tube insertion apparatus is inserted into the chest cavity, and wherein when the chest tube insertion apparatus is inserted into the chest cavity, a free end of the guidewire is inserted into the stylet lumen and the chest tube insertion apparatus is translated along the guidewire as taught by Semrad for positioning the device within the cavity (see Col. 2, lines 16-19). Further Hart et al. in view of Kronner teaches that modifications may be made to the device (see Hart et al. [0091]).
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 1-8 and 11-22 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-23 of U.S. Patent No. 11,590,326. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims are anticipated by the patented claims.
Response to Arguments
Applicant’s arguments with respect to the claim(s) have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
The examiner has added the Shipp reference in response to the applicant’s amendments and modified the interpretation of Hart to meet the new limitations. The applicant’s arguments are not persuasive over Hart. Please see the rejection above.
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 THEODORE J STIGELL whose telephone number is (571)272-8759. The examiner can normally be reached M-F 9-5:30 EST.
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/THEODORE J STIGELL/Primary Examiner, Art Unit 3783