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 .
Claim Objections
Claim 22 is objected to because of the following informalities: The claim recites “..a mode selector configured to be receive a user input…”. Examiner suggests removing the word “be.” Appropriate correction is required.
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 1-10 are provisionally rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1-10 of copending Application No. 18/168,801 (reference application). This is a provisional statutory double patenting rejection since the claims directed to the same invention have not in fact been patented.
In reference to claim 1, copending app ‘801 discloses a surgical device, comprising: a handpiece configured to be held by a hand, the handpiece being configured to drive impacting of bone, and the handpiece including: a first actuator configured to be hand-actuated and thereby cause the impacting to be in a forward direction toward the bone, and a second actuator configured to be hand-actuated and thereby cause the impacting to be in a rearward direction away from the bone; wherein the first and second actuators are configured to be actuated independently of one another [e.g. claim 1].
In reference to claim 2, copending app ‘801 discloses wherein the handpiece includes a handle configured to be held by the hand; and the first and second actuators are each on one of a forward side of the handle and a rearward side of the handle [e.g. claim 2].
In reference to claim 3, copending app ‘801 discloses wherein the handpiece includes a third actuator configured to be hand-actuated and thereby cause the impacting to be in a rearward direction away from the bone [e.g. claim 3].
In reference to claim 4, copending app ‘801 discloses wherein the handpiece includes a body and a handle extending from the body, the handle being configured to be held by the hand; one of the second and third actuators is on the handle; and the other of the second and third actuators is on the body [e.g. claim 4].
In reference to claim 5, copending app ‘801 discloses wherein, with one of the first and second actuators actuated, the other of the first and second actuators is configured to be actuated and thereby override a direction of the impacting caused by the actuation of the one of the first and second actuators [e.g. claim 5].
In reference to claim 6, copending app ‘801 discloses wherein at least one of the first and second actuators includes a tactile element configured to distinguish the first and second actuators from one another by feel [e.g. claim 6].
In reference to claim 7, copending app ‘801 discloses further comprising a motor operatively coupled to the first and second actuators; wherein the actuation of the first actuator is configured to cause a first Hall effect sensor to output a first voltage that triggers the motor to move in a first direction; and the actuation of the second actuator is configured to cause a second Hall effect sensor to output a second voltage that triggers the motor to move in a second direction that is opposite to the first direction [e.g. claim 7].
In reference to claim 8, copending app ‘801 discloses wherein the first actuator includes a first magnet configured to interact with the first Hall effect sensor in response to the actuation of the first actuator; and the second actuator includes a second magnet configured to interact with the second Hall effect sensor in response to the actuation of the second actuator [e.g. claim 8].
In reference to claim 9, copending app ‘801 discloses wherein the first and second actuators each include a depressible trigger [e.g. claim 9].
In reference to claim 10, copending app ‘801 discloses wherein the first actuator includes a first element, and the second actuator includes a second element that is pivotally coupled to the first element at a pivot point [e.g. claim 10].
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 (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.
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 22 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. Patent Application Publication No 2022/0008087 granted to Laughlin et al (hereinafter “Laughlin”). Laughlin discloses a surgical device, comprising: a handpiece configured to be held by a hand of a user [e.g. abstract], the handpiece being configured to drive impacting of bone [e.g. abstract], and the handpiece including: an actuator configured to be hand-actuated and thereby cause the impacting to be in one of a forward direction toward the bone and a rearward direction away from the bone [e.g. abstract], and a mode selector configured to be receive a user input that selects whether the impacting caused by the actuation of the actuator is in the forward direction or the rearward direction [e.g. 0116].
Allowable Subject Matter
Claims 11-21 and 23-26 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
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/NADIA A MAHMOOD/Primary Examiner, Art Unit 3796