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 .
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 (i.e., changing from AIA to pre-AIA ) 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.
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required:
The Examiner notes that while the instant disclosure provides basis for a single respective flexible lead or to a single respective tube to a respective terminus connector, the instant disclosure does not provide proper antecedent basis for the claim limitation of “flexible leads and flexible fluidic tubing connecting to the terminus connectors”. Such is due, in part, to the instant claim language covering the scope of the language of the claim including a) that the flexible leads and flexible fluidic tubing are each connected to a single terminus connector, and b) that the flexible leads and flexible fluidic tubing are all connected to multiple connectors. Appropriate correction is required.
Drawings
New corrected drawings in compliance with 37 CFR 1.121(d) are required in this application because the currently submitted grayscale images fail to clearly depict the structural and functional features of the disclosed and the claimed invention. For example, issues exist with at least a) the features of the items 18/22/24/30 are blurry in figure 2, b) the lines 26 in figure 2 are blurry and/or incompletely illustrated, and c) the features of 28/32/34/26/28/40/42 are blurry in one or both of figures 3/4. See at least MPEP 608.02(V) and (VII) discussing the standards of drawings as well as grayscale drawings . Applicant is advised to employ the services of a competent patent draftsperson outside the Office, as the U.S. Patent and Trademark Office no longer prepares new drawings. The corrected drawings are required in reply to the Office action to avoid abandonment of the application. The requirement for corrected drawings will not be held in abeyance.
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the following features must be shown or the feature(s) canceled from the claim(s):
the connectors for removable attaching multiple tools or instruments to the housing; and
leads and tubing connecting to the connectors;
a button operated retraction mechanism for releasing and retracting the flexible electrical leads and flexible fluidic tubing on demand.
No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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 and 2 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.
Regarding claim 1, the claim recites “a housing disposed in a sterile region of the operating room” therein. The Examiner is of the position that such is method-like language in an apparatus claim that renders the scope of the claim as indefinite. Specifically, it is unclear, even in light of the intended use recitation in the preamble of “for use in an operating room”, if infringement would occur when a housing capable of being disposed in a sterile region of the operation room is provided, or only once the housing is specifically placed within the sterile region of the operating room. The Examiner respectfully suggests Applicant amend claim to recite “a housing configured to be disposed in a sterile region of the operating room” to correct the issue. Claim 2 is rejected due to its dependency on claim 1. Appropriate correction is required.
Regarding claim 1, the claim recites “the terminus connectors” therein. The Examiner fails to find that this limitation has proper antecedent basis in the claims as the claim has only described “connectors” therein. It is unclear if the “connectors” are the same as the “terminus connectors” or are, alternatively, directed towards different structure to which the leaves and fluid tubing are attached. Again, claim 2 is rejected due to its dependency on claim 1. Appropriate correction is required.
Regarding claim 2, the claim as presented includes four recitations of “the multi-tool” after the period in the claim. The Examiner is of the position that such renders the scope of the claim as indefinite given that it is unclear what relationship the recited “multi-tool” has to any of the remaining structural or functional requirements in either of claims 1 or 2. The Examiner respectfully requests Applicant cancel each of the these four recitations to correct the issue. Appropriate correction is required.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1 and 2 are rejected under 35 U.S.C. 103 as being unpatentable over McGill (US Pat. Pub. 2002/0087158 A1) further in view of Ellman et al. (US Pat. No. 5,342,356).
Regarding claim 1, McGill provides for a multi-tool terminus for use in an operating room comprising: a housing disposed in a sterile region of the operating room (housing at 18) comprising:
connectors for removably attaching multiple tools or instruments to the housing (connectors at the ends of the suction hose 38 and the cautery cord 29 for coupling to a respective one of the suction device 16 and the cautery device 14),
a flexible electrical lead and flexible fluidic tubing connecting to the terminus connectors (cautery cord 29 and hose 38), and
a button operated retraction mechanism for releasing and retracting the flexible electrical leads and flexible fluidic tubing on demand (via switches 52/54 functioning as in [0023] and [0024] to allow for the extension/retraction).
McGill fails to specifically provide for the inclusion of a plurality of flexible electrical leads. Ellman discloses that it is known to provide for a plurality of electrosurgical devices connected to a terminus (see figure 5 having multiple connectors 60 for connecting multiple devices thereto). Thus, it is the Examiner’s position that it would have been obvious to one of ordinary skill in the art at the time of filing to have duplicated the flexible electrical lead and associated connector of McGill to include an additional connector and lead to provide for the connection of a second cautery device in view of the teaching of Ellman. The Examiner is of the position that the cartridge arrangement in figures 2 and 3 readily lends itself to having a cartridge for a cautery device duplicated and included within the terminus formed by 18.
MPEP 2144(VI)(B) readily establishes that the duplication of parts has no patentable significance unless a new and unexpected result is produced. The Examiner is of the position, in the instant case, that the result of the duplication of parts to include the additional electrical lead, connector, and button operated retraction mechanism for a second cautery device would result in a predictable result to one of ordinary skill especially, again, in view of the modular construction in figures 2 and 3 of McGill with the cartridge arrangement.
Regarding claim 2, McGill provides that the fluidic tubing comprises suction tubing (38 is suction tubing as throughout McGill).
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 and 2 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 2 of U.S. Patent No. 10,653,473 B2.
Regarding instant claim 1, the Examiner finds that the following relationships exists between instant independent claim 1 and patented claim 1:
Instant Independent Claim 1
Patented Claim 1
1 .A multi-tool terminus for use in an operating room comprising: a housing disposed in a sterile region of the operating room comprising:
connectors for removably attaching multiple tools or instruments to the housing;
flexible electrical leads and flexible fluidic tubing connecting to the terminus connectors;
and
a button operated retraction mechanism for releasing and retracting the flexible electrical leads and flexible fluidic tubing on demand.
“a terminus located at the second end … disposed in the sterile region of the operating room”
“terminus connectors for removably attached at least two tools or instruments”
“flexible electrical leads and flexible fluidic tubing…”
“surgeon operated retract mechanisms for releasing … on demand”
Upon review, the Examiner is of the position that it is clear that all the elements of instant independent claim 1 are to be found in patented claim 1. The difference between instant independent claim 1 and patented claim 1 lies in the fact that the patent claim includes additional elements and is thus much more specific. Thus the invention of patented claim 1 is in effect a “species” of the “generic” invention of instant independent claim 1. It has been held that the generic invention is “anticipated” by the “species”. See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Since instant independent claim 1 is anticipated by patented claim 1, it is not patentably distinct from patented claim 1.
Regarding instant dependent claim 2, see patented claim 2.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Woodruff (US Pat. No. 2,710,610) provides for a plurality of surgical tools with retractable leads;
Olson (US 4,174,816) provides for a surgical cord and tube retraction mechanism;
Dines (US Pat. No. 5,074,862), Galazaka (US Pat. No. 5,178,619) and Deutsch (US Pat. Pub. 2006/0264921 A1) each provide for a retractable surgical instrument;
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RONALD HUPCZEY, JR whose telephone number is (571)270-5534. The examiner can normally be reached Monday - Friday; 8 am - 4 pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Stoklosa can be reached at (571) 272-1213. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Ronald Hupczey, Jr./Primary Examiner, Art Unit 3794