DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Election/Restrictions
Applicant’s election of Species B, readable on claims 53, 54, 58-64, 67-72 in the reply filed on 12/16/2025 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
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 53, 54, 58-64 and 67-72 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 14-21 of U.S. Patent No. 7,753,843. Although the claims at issue are not identical, they are not patentably distinct from each other because they are merely broader in scope than the claims of US Patent No. 7,753,843 and require identical fundamental structural components of the device comprising a shaft with proximal and distal sections, a rotatable coupling, a gear system and a torque transfer element configured to rotate a gear of the gear system to rotate the distal section relative to the proximal section.
Claims 53, 64, 70 and 71 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 7, 9, 12, 14 and 18 of U.S. Patent No. 11,284,778. Although the claims at issue are not identical, they are not patentably distinct from each other because they are merely broader in scope than the claims of US Patent No. 11,284,778 and require identical fundamental structural components of the device comprising a shaft with proximal and distal sections, a rotatable coupling, a gear system and a torque transfer element configured to rotate a gear of the gear system to rotate the distal section relative to the proximal section.
Claims 53, 54, 58, 64 and 70-72 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4, 9, 11, 14, 15 and 17 of U.S. Patent No. 11,937,774. Although the claims at issue are not identical, they are not patentably distinct from each other because they are merely broader in scope than the claims of US Patent No. 11,937,774 and require identical fundamental structural components of the device comprising a shaft with proximal and distal sections, a rotatable coupling, a gear system and a torque transfer element configured to rotate a gear of the gear system to rotate the distal section relative to the proximal section.
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 pre-AIA 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) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for a patent.
(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of application for patent in the United States.
(e) the invention was described in (1) an application for patent, published under section 122(b), by another filed in the United States before the invention by the applicant for patent or (2) a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent, except that an international application filed under the treaty defined in section 351(a) shall have the effects for purposes of this subsection of an application filed in the United States only if the international application designated the United States and was published under Article 21(2) of such treaty in the English language.
Claims 53, 54, 58-64 and 67-72 are rejected under pre-AIA 35 U.S.C. 102(e) as being anticipated by Bob et al. (US Patent Application Publication No. 2006/0167342, hereinafter Bob).
In regard to claim 53, Bob discloses a medical device (Fig. 1) comprising:
a shaft (1, 2, 3, 4) comprising a proximal section (1), a distal section (2, 3), and a rotatable coupling (4) between the proximal section and the distal section (Fig. 1);
a torque transfer element (7) for driving rotation of the distal section relative to the proximal section (Fig. 2, Par. 39); and
a gear system (10) within the shaft and coupled to the torque transfer element, wherein the torque transfer element is configured to rotate a gear of the gear system to rotate the distal section relative to the proximal section (Par. 20).
In regard to claim 54, Bob teaches wherein the torque transfer element terminates distally at the gear system (Fig. 3).
In regard to claim 58, Bob teaches wherein the gear system is at the rotatable coupling (Fig. 3).
In regard to claim 59, Bob teaches wherein the gear system includes a planetary gear system having a sun gear, a planet gear, and a ring gear (Par. 28), and wherein the gear is one of the sun gear, the planet gear, or the ring gear (the gear is a sun gear at the free end of the shank (9), Par. 28).
In regard to claim 60, Bob teaches wherein the ring gear (12a) forms an exterior surface of the rotatable coupling (Par. 28).
In regard to claim 61, Bob teaches wherein the sun gear defines an aperture that connects a proximal lumen extending through the proximal section of the shaft and a distal lumen extending through the distal section of the shaft (the sun gear is disposed at an end of the shank (9), wherein the shank a lumen therethrough which an endoscope shaft is guided, Par. 21).
In regard to claim 62, Bob teaches wherein the torque transfer element is coupled to the sun gear, and wherein rotation of the torque transfer element rotates the sun gear (the turbine is coupled to the shank (9) which contains the sun gear, Par. 28).
In regard to claim 63, Bob teaches wherein the gear system further includes a carrier, wherein the torque transfer element is coupled to the carrier, and wherein rotation of the torque transfer element rotates the carrier relative to the sun gear (Par. 28 teaches the planetary carrier can be fixedly coupled to the torque transfer element).
In regard to claim 64, Bob discloses a medical device (Fig. 1) comprising:
a proximal shaft section (1);
a distal shaft section (2, 3);
a rotatable coupling (4) between the proximal shaft section and the distal shaft section (Fig. 1); and
a gear system (10) in the distal shaft section or the rotatable coupling, wherein rotation of a gear of the gear system causes the distal shaft section to rotate relative to the proximal shaft section (Par. 20).
In regard to claim 67, Bob teaches wherein the gear system includes a planetary gear system having a sun gear, a planet gear, and a ring gear (Par. 28), and wherein the gear is one of the sun gear, the planet gear, or the ring gear (the gear is a sun gear at the free end of the shank (9), Par. 28).
In regard to claim 68, Bob teaches wherein the ring gear (12a) forms an exterior surface of the rotatable coupling (Par. 28).
In regard to claim 69, Bob teaches wherein the sun gear defines an aperture that connects a proximal lumen extending through the proximal shaft section and a distal lumen extending through the distal shaft section (the sun gear is disposed at an end of the shank (9), wherein the shank a lumen therethrough which an endoscope shaft is guided, Par. 21).
In regard to claim 70, Bob discloses a medical device (Fig. 1) comprising:
a shaft (1, 2, 3) comprising a proximal section (1), a distal section (2, 3), and a rotatable coupling (4) between the proximal section and the distal section (Fig. 1); and
a gear system (10) in the shaft, the gear system including a ring-shaped gear (18) having internal teeth and a round-shaped gear (17) having external teeth configured to mesh with the internal teeth (Fig. 3), wherein rotation of the round-shaped gear is configured to rotate the distal section of the shaft relative to the proximal section of the shaft (the round-shaped gear (17) rotates the driven shaft (11) which correspondingly rotates the distal section (2, 3), Fig. 2, Par. 20).
In regard to claim 71, Bob teaches wherein the gear system is in the distal section of the shaft or at the rotatable coupling (the gear system is in the rotatable coupling).
In regard to claim 72, Bob teaches further comprising a torque transfer element (7, 9) terminating distally at the gear system (Fig. 2).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RYAN N HENDERSON whose telephone number is (571)270-1430. The examiner can normally be reached Monday-Friday 6am-5pm (PST).
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, Anhtuan Nguyen can be reached at 571-272-4963. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RYAN N HENDERSON/Primary Examiner, Art Unit 3795 January 10, 2026