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 .
Information Disclosure Statement
The IDS references filed 11/21/2023 (x4) and 11/11/2025) have been considered by the Examiner.
Election/Restrictions
Applicant’s election without traverse of Embodiment A (Claims 1-22) in the reply filed on 01/06/2026 is acknowledged.
Claims 23-24 withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 01/06/2025.
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 1-22 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of U.S. Patent No. 11,759,271 (hereinafter ‘271 Patent). Although the claims at issue are not identical, they are not patentably distinct from each other.
Regarding claims 1-4 and 17 of the instant application, claim 1 of the ‘271 Patent discloses:
A console-based surgical system (Claim 1, line 1) comprising:
a footswitch having a footswitch connector line and a footswitch visual indicator comprising a light emitter (Claim 1, lines 2-3 – input visual indicator, i.e. footswitch visual indicator); and
a surgical console (Claim 1, line 4) comprising:
a plurality of instrument ports, each of the instrument ports having an instrument port visual indicator and being configured to couple to a handheld surgical instrument (Claim 1, lines 5-8 – instrument visual indicator, i.e. instrument port visual indicator);
a footswitch port having a footswitch port visual indicator and being configured to couple to the footswitch via the footswitch connector line (Claim 1, lines 10-12 – footswitch visual indicator, i.e. footswitch port visual indicator); and
a controller (Claim 1, line 20) configured to:
associate the footswitch port with an instrument port of the plurality of instrument ports (Claim 1, lines 21-22) such that the footswitch is operable to actuate a function of a handheld surgical instrument connected to the associated instrument port (Claim 1, lines 36-38); and
activate the light emitter of each of the footswitch visual indicator, the footswitch port visual indicator, and the instrument port visual indicator to emit a colored light that matches one another in response to associating the footswitch port with the instrument port (Claim 1, lines 23-28).
The console-based surgical system of claim 1, wherein each of the instrument ports is further configured to transmit an energization signal to the handheld surgical instrument (Claim 1, lines 5-9), and wherein the footswitch port is configured to receive a signal from the footswitch (Claim 1, lines 10-13).
The console-based surgical system of claim 1, wherein the controller is further configured to:
receive a signal from the footswitch via the footswitch port (Claim 1, lines 29-30); and
generate an energization signal for transmission to a handheld surgical instrument coupled to the instrument port in response to receiving the signal from the footswitch and in response to associating the footswitch port with the instrument port such that the footswitch is operable to actuate a function of the handheld surgical instrument connected to the instrument port (Claim 1, lines 31-38).
The console-based surgical system of claim 1, wherein each of the footswitch port visual indicator and the instrument port visual indicators comprises a light emitter and a ring-shaped light guide coupled to the surgical console and surrounding a corresponding one of the footswitch port and the plurality of instrument ports (Claim 1, lines 14-19).
A console-based surgical system (Claim 1, line 1) comprising:
a footswitch comprising a light emitter (Claim 1, lines 2-3); and
a surgical console (Claim 1, line 4) comprising:
a plurality of instrument ports, each of the instrument ports comprising a light emitter and being configured to couple to a handheld surgical instrument (Claim 1, lines 5-8);
a footswitch port comprising a light emitter and being configured to couple to the footswitch (Claim 1, lines 10-11); and
a controller (Claim 1, line 20) configured to:
associate the footswitch port with an instrument port of the plurality of instrument ports (Claim 1, lines 21-22) such that the footswitch is operable to actuate a function of a handheld surgical instrument connected to the associated instrument port (Claim 1, lines 33-38); and
activate the light emitter of each of the footswitch, the footswitch port, and the instrument port to emit a colored light that matches one another in response to associating the footswitch port with the instrument port (Claim 1, lines 23-28).
Claim 1 of the ‘271 Patent anticipates instant claims 1-4 and 17. Therefore, the instant claims 1-4 and 17 are not patentable over claim 1 of the ‘271 Patent.
Regarding claims 5 and 18 of the instant application, claim 2 of the ‘271 Patent discloses:
The console-based surgical system of claim 1, wherein the footswitch comprises a base and a pedal movably coupled to the base, the base comprising the footswitch visual indicator (Claim 2, lines 1-4).
The console-based surgical system of claim 17, wherein the footswitch comprises a base and a pedal movably coupled to the base, the base comprising the light emitter of the footswitch (Claim 2, lines 1-4).
Claim 2 of the ‘271 Patent anticipates instant claims 5 and 18. Therefore, the instant claims 5 and 18 are not patentable over claim 2 of the ‘271 Patent.
Regarding claims 6 and 19 of the instant application, claim 3 of the ‘271 Patent discloses:
The console-based surgical system of claim 5, wherein the footswitch visual indicator is positioned to illuminate an underside of the pedal (Claim 3, lines 1-3).
The console-based surgical system of claim 18, wherein the light emitter of the footswitch is positioned to illuminate an underside of the pedal (Claim 3, lines 1-3).
Claim 3 of the ‘271 Patent anticipates instant claims 6 and 19. Therefore, the instant claims 6 and 19 are not patentable over claim 3 of the ‘271 Patent.
Regarding claims 7 and 20 of the instant application, claim 4 of the ‘271 Patent discloses:
The console-based surgical system of claim 1, wherein the footswitch visual indicator is coupled to the footswitch connector line (Claim 4, lines 1-3).
The console-based surgical system of claim 17, wherein the footswitch has a footswitch connector line (Claim 1, line 2), wherein the footswitch port is configured to couple to the footswitch via the footswitch connector line (Claim 1, lines 10-12), and wherein the light emitter of the footswitch is coupled to the footswitch connector line (Claim 4, lines 1-3).
Claim 4 of the ‘271 Patent anticipates instant claims 7 and 20. Therefore, the instant claims 7 and 20 are not patentable over claim 4 of the ‘271 Patent.
Regarding claim 8 of the instant application, claim 5 of the ‘271 Patent discloses:
The console-based surgical system of claim 7, wherein:
each of the footswitch port visual indicator and the instrument port visual indicators comprises a light emitter (Claim 1, lines 14-16);
the footswitch visual indicator is further defined as a first footswitch visual indicator (Claim 5, lines 1-3);
the footswitch has a second footswitch visual indicator comprising a light emitter (Claim 5, lines 3-4); and
the controller is configured to activate the light emitter of the second footswitch visual indicator to emit a colored light to match the colored light emitted by the light emitter of each of the first footswitch visual indicator, the footswitch port visual indicator, and the instrument port visual indicator (Claim 5, lines 4-9).
Claim 5 of the ‘271 Patent anticipates instant claim 8. Therefore, the instant claim 8 is not patentable over claim 5 of the ‘271 Patent.
Regarding claims 9 and 21-22 of the instant application, claim 6 of the ‘271 Patent discloses:
The console-based surgical system of claim 1, wherein the footswitch visual indicator comprises a first footswitch light emitter and a second footswitch light emitter (Claim 6, lines 1-5), and wherein the first footswitch light emitter is configured to output a colored light of a first color and the second footswitch light emitter is configured to output a colored light of a second color, with the first color being different from the second color (Claim 6, lines 5-9).
The console-based surgical system of claim 17, wherein the light emitter of the footswitch is further defined as a first light emitter (Claim 6, lines 1-3), the first light emitter being configured to emit light of a first color (Claim 6, lines 5-6), and wherein the footswitch further comprises a second light emitter configured to emit light of a second color (Claim 6, lines 6-8).
The console-based surgical system of claim 21, wherein the controller is further configured to activate one of the first light emitter and the second light emitter of the footswitch and each of the light emitter of the footswitch port and the light emitter instrument port to emit a colored light that matches one another in response to associating the footswitch port with the instrument port (Claim 1, lines 23-28).
Claim 6 of the ‘271 Patent anticipates instant claims 9 and 21-22. Therefore, the instant claims 9 and 21-22 are not patentable over claim 6 of the ‘271 Patent.
Regarding claim 10 of the instant application, claim 7 of the ‘271 Patent discloses:
The console-based surgical system of claim 1, wherein:
the footswitch port visual indicator comprises a light emitter (Claim 1, lines 14-16);
the instrument port visual indicator of the instrument port is further defined as a first instrument port visual indicator comprising a light emitter (Claim 7, lines 2-3; Claim 1, lines 14-16);
the console-based surgical system further comprises a handheld surgical instrument having an instrument connector line (Claim 7, lines 3-5);
the instrument port is connected to the handheld surgical instrument via the instrument connector line (Claim 7, lines 6-8), the handheld surgical instrument having a second instrument port visual indicator comprising a light emitter (Claim 8, lines 8-9); and
the controller is configured to activate the light emitter of the second instrument port visual indicator to emit a colored light to match the colored light emitted by the light emitter of each of the footswitch visual indicator, the footswitch port visual indicator, and the first instrument port visual indicator (Claim 7, lines 10-14).
Claim 7 of the ‘271 Patent anticipates instant claim 10. Therefore, the instant claim 10 is not patentable over claim 7 of the ‘271 Patent.
Regarding claim 11 of the instant application, claim 8 of the ‘271 Patent discloses:
The console-based surgical system of claim 10, wherein the second instrument port visual indicator is coupled to the instrument connector line (Claim 8, lines 1-3).
Claim 8 of the ‘271 Patent anticipates instant claim 11. Therefore, the instant claim 11 is not patentable over claim 8 of the ‘271 Patent.
Regarding claim 12 of the instant application, claim 9 of the ‘271 Patent discloses:
The console-based surgical system of claim 11, wherein the handheld surgical instrument has a third instrument port visual indicator comprising a light emitter (Claim 9, lines 1-3), and wherein the controller is configured to activate the light emitter of the third instrument port visual indicator to emit a colored light to match the colored light emitted by the light emitter of each of the footswitch visual indicator (Claim 9, lines 3-7), the footswitch port visual indicator, the first instrument port visual indicator, and the second instrument port visual indicator (Claim 9, lines 7-9).
Claim 9 of the ‘271 Patent anticipates instant claim 12. Therefore, the instant claim 12 is not patentable over claim 9 of the ‘271 Patent.
Regarding claim 13 of the instant application, claim 10 of the ‘271 Patent discloses:
The console-based surgical system of claim 4, wherein the footswitch is further defined as a first footswitch (Claim 10, lines 1-2), the footswitch visual indicator is further defined as a first footswitch visual indicator (Claim 10, lines 2-4), the footswitch connector line is further defined as a first footswitch connector line (Claim 10, lines 4-5), the footswitch port is further defined as a first footswitch port (Claim 10, lines 5-6), and the footswitch port visual indicator is further defined as a first footswitch port visual indicator (Claim 10, lines 6-8), and further comprising:
a second footswitch having a second footswitch connector line and a second footswitch visual indicator comprising a light emitter (Claim 10, lines 9-11); and
a second footswitch port having a second footswitch port visual indicator and being configured to couple to the second footswitch via the second footswitch connector line and receive a signal from the second footswitch (Claim 10, lines 12-15), wherein the second footswitch port visual indicator comprises a light emitter and a ring-shaped light guide coupled to the surgical console and surrounding the second footswitch port visual indicator (Claim 10, lines 16-19).
Claim 10 of the ‘271 Patent anticipates instant claim 13. Therefore, the instant claim 13 is not patentable over claim 10 of the ‘271 Patent.
Regarding claim 14 of the instant application, claim 11 of the ‘271 Patent discloses:
The console-based surgical system of claim 13, wherein the controller is further configured to:
associate the second footswitch port with the instrument port (Claim 11, lines 3-4);
activate the light emitter of each of the second footswitch visual indicator, the second footswitch port visual indicator, and the instrument port visual indicator of the instrument port to emit a colored light that matches one another in response to associating the second footswitch port with the instrument port (Claim 11, lines 5-10);
receive a signal from the second footswitch via the second footswitch port (Claim 11, lines 11-12); and
generate an energization signal for transmission to a handheld surgical instrument coupled to the instrument port in response to receiving the signal from the second footswitch and in response to associating the second footswitch port with the instrument port such that the second footswitch is operable to actuate a function of the handheld surgical instrument connected to the instrument port (Claim 11, lines 13-20).
Claim 11 of the ‘271 Patent anticipates instant claim 14. Therefore, the instant claim 14 is not patentable over claim 11 of the ‘271 Patent.
Regarding claim 15 of the instant application, claim 12 of the ‘271 Patent discloses:
The console-based surgical system of claim 13, wherein the instrument port is further defined as a first instrument port and the instrument port visual indicator of the first instrument port is further defined as a first instrument port visual indicator (Claim 12, lines 2-5), and wherein the controller is further configured to:
associate the second footswitch port with a second instrument port of the plurality of instrument ports, the second instrument port having a second instrument port visual indicator (Claim 12, lines 7-10);
activate the light emitter of each of the second footswitch visual indicator, the second footswitch port visual indicator, and the second instrument port visual indicator to emit a colored light that matches one another when the controller associates the second footswitch port with the second instrument port (Claim 12, lines 11-16);
receive a signal from the second footswitch via the second footswitch port (Claim 12, lines 17-18); and
generate an energization signal for transmission to a handheld surgical instrument coupled to the second instrument port in response to receiving the signal from the second footswitch and in response to associating the second footswitch port with the second instrument port such that the second footswitch is operable to actuate a function of the handheld surgical instrument connected to the second instrument port (Claim 12, lines 19-26).
Claim 12 of the ‘271 Patent anticipates instant claim 15. Therefore, the instant claim 15 is not patentable over claim 12 of the ‘271 Patent.
Regarding claim 16 of the instant application, claim 13 of the ‘271 Patent discloses:
The console-based surgical system of claim 13, wherein the first footswitch port visual indicator and the instrument port visual indicators each comprise one or more light emitters (Claim 13, lines 1-4), wherein the ring-shaped light guide of the first footswitch port visual indicator and the instrument port visual indicators each comprises a first light emitter portion and a second light emitter portion (Claim 13, lines 4-7), and wherein a light emitter is disposed within each of the first light emitter portions and each of the second light emitter portions, the light emitters being configured to emit a colored light (Claim 13, lines 7-10).
Claim 13 of the ‘271 Patent anticipates instant claim 16. Therefore, the instant claim 16 is not patentable over claim 13 of the ‘271 Patent.
Allowable Subject Matter
Claims 1-22 contain potentially allowable subject matter.
The following is a statement of reasons for the indication of allowable subject matter:
Regarding independent claim 1, the prior art of record (namely Malackowski (US 2007/0250098) and Mezhinksy (US 2008/0020714) – both cited on IDS) does not disclose or fairly suggest either singly or in combination:
A console-based surgical system comprising:
a footswitch having a footswitch connector line and a footswitch visual indicator comprising a light emitter; and
a surgical console comprising:
a plurality of instrument ports, each of the instrument ports having an instrument port visual indicator and being configured to couple to a handheld surgical instrument;
a footswitch port having a footswitch port visual indicator and being configured to couple to the footswitch via the footswitch connector line; and
a controller configured to:
associate the footswitch port with an instrument port of the plurality of instrument ports such that the footswitch is operable to actuate a function of a handheld surgical instrument connected to the associated instrument port; and
activate the light emitter of each of the footswitch visual indicator, the footswitch port visual indicator, and the instrument port visual indicator to emit a colored light that matches one another in response to associating the footswitch port with the instrument port.
Regarding independent claim 17, the prior art of record (namely Malackowski (US 2007/0250098) and Mezhinksy (US 2008/0020714) – both cited on IDS) does not disclose or fairly suggest either singly or in combination:
A console-based surgical system comprising:
a footswitch comprising a light emitter; and
a surgical console comprising:
a plurality of instrument ports, each of the instrument ports comprising a light emitter and being configured to couple to a handheld surgical instrument;
a footswitch port comprising a light emitter and being configured to couple to the footswitch; and
a controller configured to:
associate the footswitch port with an instrument port of the plurality of instrument ports such that the footswitch is operable to actuate a function of a handheld surgical instrument connected to the associated instrument port; and
activate the light emitter of each of the footswitch, the footswitch port, and the instrument port to emit a colored light that matches one another in response to associating the footswitch port with the instrument port.
The closest prior art (as detailed in the Final rejection mailed 2/17/2021 in the parent application 16/220542) is US 2007/0250098 to Malackowski in view of 2008/0020714 to Mezhinksy which teach/suggest a surgical console comprising instrument ports having ring-shaped indicator lights surrounding the instrument ports and footswitch ports having ring-shaped indicator lights surrounding the footswitch ports, as well as associating the footswitch port with an instrument port, receiving a signal from the footswitch via the footswitch port and energizing a surgical instrument coupled to the instrument in response to both receiving the signal from the footswitch and associating the footswitch port to the instrument port in order to operate a function of the surgical instrument. What the references fail to teach/suggest is a footswitch having an indicator light and controller configured to activate the light emitter of each of said footswitch visual indicator (on the footswitch), said footswitch port visual indicator (around the footswitch port), and said instrument port visual indicator (around the instrument port) to emit a colored light that matches one another in response to associating the footswitch port with the instrument port. Specifically, the prior art fails to teach or suggest indicator lights that emit the same/matching color when all 3 elements are connected/associated with each other, specifically 2 ports and a footswitch. While it is known in the art to have indicator lights on a footswitch that emit different colors as a way to display various states/modes/information of the footswitch to a user (US 2010/0198200 to Horvath; US 2015/0257814 to Berry; US 7,259,340 to Blaha – all cited on IDS), none of these references teach or suggest matching a color light on a footswitch with an associated footswitch port and/or instrument port. US 2014/0257046 to Steven (cited on IDS) teaches emitting a color light on an instrument port to match a color light on a surgical instrument connector as a way to identify which ports are available/compatible for connection with the surgical instrument (Par 0022), but this clearly occurs prior to connection, and is not in response to associating two ports (as required by the claims). US 2020/0085531 to Harrison discloses surgical instruments that emit the same/matching color as a portion of a display screen related to that particular instrument, but fails to teach anything about associating or matching a port. Therefore, the prior art of record, taken individually or in combination does not reasonably teach or render obvious the claimed combination/configuration of elements.
No other prior art reference could be found that teaches or renders obvious the limitations of instant claims 1 and 17. Due to their dependency on independent claims 1 and 17, instant claims 2-16 and 18-22 are also considered to contain allowable subject matter.
Therefore, in view of the prior art and its deficiencies, the claimed invention as a whole is rendered novel and non-obvious, and thus, contains allowable subject matter as claimed.
As allowable subject matter has been indicated, applicant's reply must either comply with all formal requirements or specifically traverse each requirement not complied with. See 37 CFR 1.111(b) and MPEP § 707.07(a). In particular, the non-statutory double patenting rejections hereinabove must be overcome.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL TAYLOR HOLTZCLAW whose telephone number is (571)272-6626. The examiner can normally be reached Monday-Friday (7:30 a.m.-5:00 p.m. EST).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jennifer McDonald can be reached at (571) 270-3061. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL T. HOLTZCLAW/Primary Examiner, Art Unit 3796
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