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 Rejections - 35 USC § 102
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.
Claims 21, 22, 28-30, 40, 41, 44, and 46 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. Patent Application Publication No. 2001/0025161 (Martinez).
Regarding claim 21, Martinez teaches a suction tool (abstract; Figure 1) comprising:
an extension (20) having a proximal end configured for attachment to a vacuum source, a distal end, and a channel (4) therethrough ([0018]; Figure 1);
and a vacuum arm (17) having:
an internal conduit fluidly connected with the channel of the extension ([0018]; [0024]),
a central portion (“central portion” construed as central area of “arm” 17 coupled to “extension” 20, Figure 1) attached to the distal end of the extension,
a supporting surface (“supporting surface” construed as tissue-contacting surface of “arm” 17, [0018]; Figure 1), wherein the supporting surface is located adjacent to a surface to which the distal end of the extension is attached (see Figure 1), and wherein the supporting surface is concave along its length (“arm” is concave in a U-shape as shown in Figure 1, thus “supporting surface” also has a concave U-shape), and
a plurality of ports (5) in the supporting surface, each port being fluidly connected with the internal conduit ([0018]; Figure 1).
Regarding claim 22, Martinez teaches the plurality of ports (5) are arranged in a row along the length of the supporting surface (see Figure 1; [0018]; [0024]).
Regarding claim 28, Martinez teaches the vacuum arm (17) is oriented generally perpendicular to the extension (20) (see Figures 1 and 3; [0005]; [0021]).
Regarding claim 29, Martinez teaches the extension (20) is rigid (since “extension” 20 functions to “hold a soft, moving body tissue in place while the tissue is being operated on”, the “extension” 20 is construed as “rigid”, [0005]).
Regarding claim 30, Martinez teaches the tool is configured for use in coapting tissue ends (The limitation “for use in coapting tissue ends” is intended use. Since the tool of Martinez is configured to “hold a soft, moving body tissue in place while the tissue is being operated on” with two sections of the vacuum arm which could hold two different tissues, see Figure 1, the prior art tool is capable of performing the claimed invention.).
Regarding claim 40, Martinez teaches a suction tool (abstract; Figure 1), comprising:
an extension (20) configured for attachment to a vacuum source and having a channel (4) therethrough ([0018]; Figure 1); and
a vacuum arm (17) attached to a distal end of the extension (Figure 1), the vacuum arm having:
a supporting surface (“supporting surface” construed as tissue-contacting surface of “arm” 17, [0018]; Figure 1) having a concave shape extending along its length, wherein the supporting surface is located adjacent to a surface to which the distal end of the extension is attached (“arm” is concave in a U-shape as shown in Figure 1, thus “supporting surface” also has a concave U-shape),
an internal conduit ([0018]; [0024]), and
a plurality of ports (5) in the supporting surface, each port being fluidly connected with the internal conduit ([0018]; [0024]; Figure 1).
Regarding claim 41, Martinez teaches the plurality of ports (5) are arranged in a row along the length of the supporting surface (Figure 1).
Regarding claim 44, Martinez teaches the vacuum arm (17) is oriented generally perpendicular to the extension (20) (see Figures 1 and 3; [0005]; [0021]).
Regarding claim 46, Martinez teaches the tool is configured for use in coapting tissue ends (The limitation “for use in coapting tissue ends” is intended use. Since the tool of Martinez is configured to “hold a soft, moving body tissue in place while the tissue is being operated on” with two sections of the vacuum arm which could hold two different tissues, see Figure 1, the prior art tool is capable of performing the claimed invention.).
Claims 21-23, 25-27, 29-34, 36-43, 45, and 46 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. Patent Application Publication No. 2016/0325026 (Yarger).
Regarding claim 21, Yarger teaches a suction tool (abstract; Figures 1, 2A, and 5A) comprising:
an extension (14) having a proximal end configured for attachment to a vacuum source, a distal end, and a channel therethrough ([0099]-[0101]; Figures 1-2A);
and a vacuum arm (18) having:
an internal conduit fluidly connected with the channel of the extension ([0100]; [0105]; [0145]; Figures 1-2A),
a central portion attached to the distal end of the extension (see Figures 1-2A),
a supporting surface (grooves, 21), wherein the supporting surface is located adjacent to a surface to which the distal end of the extension is attached (Figures 1, 2A, 5A), and wherein the supporting surface is concave along its length (see Figures 1 and 5A; [0145]-[0146]), and
a plurality of ports (19) in the supporting surface, each port being fluidly connected with the internal conduit ([0145]-[0147]; Figure 5A).
Regarding claim 22, Yarger teaches the plurality of ports (19) are arranged in a row along the length of the supporting surface (21) (see Figure 5A; [0146]).
Regarding claims 23 and 25, Yarger teaches the plurality of ports (19) are arranged in a plurality of rows along the length of the supporting surface (21); wherein the plurality of rows are arranged side-by-side to one another (see Figure 5A; [0147]).
Regarding claim 26, Yarger teaches the plurality of ports (19) are arranged in an uneven arrangement (3 rows, therefore odd numbered arrangement, Figure 5A; [0146]; [0147]).
Regarding claim 27, Yarger teaches the vacuum arm (18) is linear (Figure 1).
Regarding claim 29, Yarger teaches the extension (14) is rigid (“extension” 14 formed of “rigid” material, [0103]).
Regarding claim 30, Yarger teaches the tool is configured for use in coapting tissue ends (Since the tool of Yarger is configured for providing suction, the tool is capable of coapting or suctioning to hold two tissue ends, thus is capable of performing the claimed function; abstract; [0100]).
Regarding claim 31, Yarger teaches a suction tool (abstract; Figures 1, 2A, and 5A) comprising:
an extension (14) having a proximal end configured for attachment to a vacuum source, a distal end, and a channel therethrough ([0099]-[0101]; Figures 1-2A); and
a linear vacuum arm (18) having:
an internal conduit that is continuous with the channel of the extension ([0100]; [0105]; [0145]; Figures 1-2A),
a central portion attached to the distal end of the extension (see Figures 1-2A),
a supporting surface (grooves, 21) having a curvature along its length that is configured to support a shape of a nerve or other similarly-shaped tissue (concave groove 21 shapes are capable of supporting such tissues, Figure 5A; [0145]-[0146]), and
a plurality of ports (19) in the supporting surface, each port being fluidly connected with the internal conduit ([0145]-[0147]; Figure 5A).
Regarding claim 32, Yarger teaches the supporting surface (21) is located adjacent to a surface to which the distal end of the extension is attached (Figures 1-2A).
Regarding claim 33, Yarger teaches the plurality of ports (19) are arranged in a row along the length of the supporting surface (21) (Figure 5A; [0145]-[0147]).
Regarding claims 34 and 36, Yarger teaches the plurality of ports (19) are arranged in a plurality of rows along the length of the supporting surface (21); wherein the plurality of rows are arranged side-by-side to one another (see Figure 5A; [0147]).
Regarding claim 37, Yarger teaches the plurality of ports (19) in the supporting surface (21) are the only ports in the vacuum arm (Figure 5A).
Regarding claim 38, Yarger teaches the plurality of ports (19) are arranged in an uneven arrangement (3 rows, therefore odd numbered arrangement, Figure 5A; [0146]; [0147]).
Regarding claim 39, Yarger teaches the tool is configured for use in coapting tissue ends (Since the tool of Yarger is configured for providing suction, the tool is capable of coapting or suctioning to hold two tissue ends, thus is capable of performing the claimed function; abstract; [0100]).
Regarding claim 40, Yarger teaches a suction tool (abstract; Figures 1, 2A, and 5A) comprising:
an extension (14) configured for attachment to a vacuum source and having a channel therethrough ([0099]-[0101]; Figures 1-2A); and
a vacuum arm (18) attached to a distal end of the extension, the vacuum arm having:
a supporting surface (grooves, 21) having a concave shape extending along its length, wherein the supporting surface is located adjacent to a surface to which the distal end of the extension is attached (see Figures 1 and 5A; [0145]-[0146]),
an internal conduit ([0100]; [0105]; [0145]; Figures 1-2A), and a
plurality of ports (19) in the supporting surface, each port being fluidly connected with the internal conduit ([0145]-[0147]; Figure 5A).
Regarding claim 41, Yarger teaches the plurality of ports (19) are arranged in a row along the length of the supporting surface (21) (Figure 5A; [0145]-[0147]).
Regarding claim 42, Yarger teaches the plurality of ports (19) are arranged in a plurality of rows along the length of the supporting surface (21) (see Figure 5A; [0147]).
Regarding claim 43, Yarger teaches the vacuum arm (18) is linear (Figure 1).
Regarding claim 45, Yarger teaches the plurality of ports are arranged in an uneven arrangement (3 rows, therefore odd numbered arrangement, Figure 5A; [0146]; [0147]).
Regarding claim 46, Yarger teaches the tool is configured for use in coapting tissue ends (Since the tool of Yarger is configured for providing suction, the tool is capable of coapting or suctioning to hold two tissue ends, thus is capable of performing the claimed function; abstract; [0100]).
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.
Claims 26 and 45 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Application Publication No. 2001/0025161 (Martinez).
Regarding claims 26 and 45, Martinez teaches all the limitations of claims 21 and 40. Martinez teaches the vacuum arm may include “between 3 and 10, preferably 5” ports (5) ([0018]; Figure 1), but does not expressly specify the plurality of ports are arranged in an uneven arrangement. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the vacuum arm to include an odd number of ports, such that the ports are arranged in an uneven arrangement in light of the teachings of Martinez in order to meet the suctioning needs of the procedure ([0018]).
Claims 24 and 35 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Application Publication No. 2016/0325026 (Yarger) in view of U.S. Patent No. 6,511,416 (Green, II et al.).
Regarding claims 24 and 35, Yarger teaches all the limitations of claim 21 and 31. Yarger does not teach the plurality of ports in the plurality of rows are staggered relative to one another.
However, Green teaches a suction tool (abstract), comprising: a vacuum arm (105) and a concave supporting surface (140) (Figures 1-3); and a plurality of ports (142) in the supporting surface, wherein the plurality of ports are arranged in a plurality of rows which are staggered relative to one another (col. 9, line 63-col. 10, line 17; Figure 2). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the rows of the ports of Yarger to be staggered relative to one another as taught by Green, as parallel and staggered rows of ports are substitutable alternative configurations each resulting in suctioning of material adjacent the ports when in use.
Claim 44 is rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Application Publication No. 2016/0325026 (Yarger).
Regarding claim 44, Yarger teaches all the limitations of claim 40. Yarger teaches the extension (14) “can include one or more bends” which “can vary over any angle range” ([0104]), but does not specify the vacuum arm is oriented generally perpendicularly to the extension. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the suction tool such that the vacuum arm is oriented generally perpendicularly to the extension in light of the teachings of Yarger, in order to achieve the desired angle for a given application of the tool (Yarger: [0104]).
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 21-23, 26-34, 37, and 39-46 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3, 5, 6, and 8 of U.S. Patent No. 11,382,646. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 21 of the instant application is merely broader in scope than all that is recited in claim 1 of the ‘646 patent. That is, claim 21 is anticipated by claim 1 of the ‘646 patent. Once applicant has received a patent for a species or a more specific embodiment, applicant is not entitled to a patent for the generic or broader invention (see In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993)). Claims 22, 23, 26-34, 37, and 39-46 of the instant application are anticipated by claims 1, 3, 5, 6, and 8 of the ‘646 patent, by the same reasoning.
Claims 24 and 35 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 5, and 6 of U.S. Patent No. 11,382,646 in view of U.S. Patent No. 6,511,416 (Green, II et al.).
Regarding instant claims 24 and 35, claims 1, 5, and 6 of the ‘646 patent recite all the limitations of claims 24 and 35 except “the plurality of ports in the plurality of rows are staggered relative to one another”.
However, Green teaches a suction tool (abstract), comprising: a vacuum arm (105) and a concave supporting surface (140) (Figures 1-3); and a plurality of ports (142) in the supporting surface, wherein the plurality of ports are arranged in a plurality of rows which are staggered relative to one another (col. 9, line 63-col. 10, line 17; Figure 2). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the rows of the ports of claims 1, 5, and 6 of the ‘646 patent to be staggered relative to one another as taught by Green, as parallel and staggered rows of ports are substitutable alternative configurations each resulting in suctioning of material adjacent the ports when in use.
Claim 25 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 5, and 6 of U.S. Patent No. 11,382,646 in view of U.S. Patent Application Publication No. 2016/0325026 (Yarger).
Regarding instant claim 25, claims 1, 5, and 6 of the ‘646 patent recite all the limitations of claim 25 except “the plurality of ports in the plurality of rows are arranged side-by-side to one another”.
However, Yarger teaches a suction tool (abstract; Figures 1, 2A, and 5A) comprising:
an extension (14) having a proximal end configured for attachment to a vacuum source, a distal end, and a channel therethrough ([0099]-[0101]; Figures 1-2A);
and a vacuum arm (18) having:
an internal conduit fluidly connected with the channel of the extension ([0100]; [0105]; [0145]; Figures 1-2A),
a central portion attached to the distal end of the extension (see Figures 1-2A),
a supporting surface (grooves, 21), wherein the supporting surface is located adjacent to a surface to which the distal end of the extension is attached (Figures 1, 2A, 5A), and wherein the supporting surface is concave along its length (see Figures 1 and 5A; [0145]-[0146]), and
a plurality of ports (19) in the supporting surface, each port being fluidly connected with the internal conduit ([0145]-[0147]; Figure 5A).
Yarger teaches the plurality of ports (19) are arranged in a plurality of rows along the length of the supporting surface (21); wherein the plurality of rows are arranged side-by-side to one another (see Figure 5A; [0147]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the tool of claims 1, 5, and 6 of the ‘646 patent such that the plurality of rows are arranged side-by-side to one another as taught by Yarger, as parallel rows of ports result in suctioning of material adjacent the ports when in use (Yarger: [0145]-[0147]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Carrie R Dorna whose telephone number is (571)270-7483. The examiner can normally be reached 8am-5pm.
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/CARRIE R DORNA/Primary Examiner, Art Unit 3791
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