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 .
Election/Restrictions
Applicant's election with traverse of Invention I, Group I, Species D, readable on claims 1 and 4 in the reply filed on 1/7/2026 is acknowledged. The traversal is on the ground(s) that (a) the apparatus and method are not patentably distinct, (b) the examiner’s assertion that broad applicability is not supported in the disclosure, (c) structural features of the apparatus define functional limitations of the method, (d) no separate inventive concept exists and (e) species are not independent or distinct. This is not found persuasive because (a) the product is capable of use in different ways than described in the method and is not required to be used in surgical procedures or limiting procedures to be formed by a single individual, (b) the holding member can be used by instruments other than endoscopes even if not explicitly taught in the disclosure (c) merely some overlap between the structure of the product and that required of the method does not preclude restriction since the method requires a different scope of search since it’s been shown that the product can be used for different applications than what’s required by the method, (d) the method requires use of the holding member with an endoscope and for a surgical procedure, wherein the product can be used in a wide range of applications, (e) the species illustrate different embodiments of a holding member in which the holding member can be mounted to a plurality of different objects, wherein each of the objects would require a separate field of search.
The requirement is still deemed proper and is therefore made FINAL.
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.
Claim 1 is rejected under 35 U.S.C. 101 as claiming the same invention as that of claim 1 of prior U.S. Patent No. 11,382,495. This is a statutory double patenting rejection.
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.
Claim 4 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1,7 of U.S. Patent No. 11,382,495 (hereinafter ‘495). Although the claims at issue are not identical, they are not patentably distinct from each other because the only difference between the claims is Claim 4 of the present application recites the intended use of the holding member holding multiple different shapes of a flexible endoscope and Claim 7 of ‘495 teaches of the intended use of the holding member holding multiple different shapes of an endoscope in which the holding member of Claim 7 of ‘495 would be capable of holding multiple different shapes of a flexible endoscope since the flexible endoscope is not a positively recited component, but rather intended use.
Allowable Subject Matter
Claim 4 would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims as well as a terminal disclaimer filed to overcome the non-statutory double patenting rejection of Claim 4.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
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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).
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/RYAN N HENDERSON/ Primary Examiner, Art Unit 3795 February 7, 2026