CTNF 18/590,475 CTNF 87221 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. Election/Restrictions 08-06 AIA Claim s 8-11 and 18-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention , there being no allowable generic or linking claim. Election was made without traverse in the reply filed on April 30, 2026. Currently, claims 1-7 and 12-17 are being examined . Specification 06-31 AIA The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification. Double Patenting 08-33 AIA 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. 08-35 Claim s 1 and 12 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim s 1, 3, 7, 9, 13, and 19 of copending Application No. 18/590,168 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the copending claims anticipate the claims of the application. Accordingly, the application claims are not patentably distinct from the copending claims. Here, the more specific copending claims encompass the broader application claims. Following the rationale in In re Goodman cited in the preceding paragraph, if applicant were to be granted a patent containing a claim for the specific narrow invention, applicant may not obtain a second patent with a claim for the generic or broader invention without first submitting an appropriate terminal disclaimer . This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented. Claim Rejections - 35 USC § 102 07-07-aia AIA 07-07 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 – 07-08-aia AIA (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. 07-15-aia AIA Claim(s) 1-5, 7, and 12-17 is/are rejected under 35 U.S.C. 102 (a)(1) as being anticipated by Murrell, U.S. 2019/0105099 (hereinafter Murrell) . Regarding claim 1, Murrell discloses ( note figs. 16-20B ) an end effector comprising: a jaw (1604) including a shank (1704) and a contact plate (1706) forming part of the shank; an electrical conductor (1614) including an insulation sheath (note paragraph 111) and a supply conductor (1616) coupled to the contact plate to supply electrical energy to the jaw (note paragraph 115); and a jaw holder (1606; note paragraphs 112 and 117) comprising a molded component capable of being overmolded onto portions of the shank, the contact plate, and the electrical conductor in a single shot, wherein the molded component encapsulates and electrically insulates the contact plate and an exposed portion of the supply conductor. It should be noted that the "patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process" (MPEP 2113). Regarding claim 2, Murrell discloses (see above) an end effector wherein the molded component defines a central aperture (1612) that aligns with an axle aperture (1712) defined in the jaw (note paragraphs 110 and 116). Regarding claim 3, Murrell discloses (see above) an end effector further comprising an axle extendable through the central aperture and the axle aperture, wherein the jaw holder is rotatable about an axis extending through the axle to thereby rotate the jaw (note paragraphs 110 and 116). Regarding claim 4, Murrell discloses (see above) an end effector wherein the supply conductor is welded to the contact plate to facilitate communication of electrical energy from the electrical conductor to the jaw (note paragraph 121). Regarding claim 5, Murrell discloses (see above) an end effector wherein the molded component defines a cable passage (1802; note paragraph 118) through which the electrical conductor extends, and an annular space is necessarily defined between an outer circumference of the electrical conductor and an inner wall of cable passage (e.g., 1804’s are disposed within this space). Regarding claim 7, Murrell discloses (see above) an end effector wherein the molded component is made of a non-conductive material selected from the group consisting of a plastic, a thermoplastic or thermosetting polymer, a composite material, and any combination thereof (note paragraph 83). Regarding claim 12, Murrell discloses ( note figs. 16-20B ) an end effector comprising: a jaw (1604) including a shank (1704) and a contact plate (1706) forming part of the shank, the jaw further defining an internal bore (space around ‘1706’); a jaw holder (1606; note paragraphs 112 and 117) comprising a molded component capable of being overmolded onto portions of the shank and the contact plate in a single shot and defining a cable passageway (1802) aligned with and in communication with the internal bore (note paragraph 118); and an electrical conductor (1614) including an insulation sheath (note paragraph 111) and a supply conductor (1616), the electrical conductor being receivable within the cable passageway and an exposed portion of the supply conductor being receivable within the internal bore (note paragraph 120). It should be noted that the "patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process" (MPEP 2113). Regarding claim 13, Murrell discloses (see above) an end effector wherein the molded component defines a central aperture (1612) that aligns with an axle aperture (1712) defined in the jaw (note paragraphs 110 and 116). Regarding claim 14, Murrell discloses (see above) an end effector wherein the internal bore is necessarily defined in the shank (note fig. 17). Regarding claim 15, Murrell discloses (see above) an end effector wherein the supply conductor is coupled to the jaw at the internal bore to supply electrical energy to the jaw (note paragraphs 120-121). Regarding claim 16, Murrell discloses (see above) an end effector wherein a pinhole aperture (1708) is defined in the jaw and in communication with the internal bore, and wherein the supply conductor is welded to the jaw through the pinhole aperture (note paragraphs 120-121). Regarding claim 17, Murrell discloses (see above) an end effector wherein the supply conductor is capable of being welded to the jaw via penetrative welding (note paragraph 121). It should be noted that the "patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process" (MPEP 2113) . Claim Rejections - 35 USC § 103 07-20-aia AIA 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. 07-21-aia AIA Claim (s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Murrell in view of Flores, U.S. 2002/0165533 (hereinafter Flores) . Regarding claim 6, Murrell discloses (see above) an end effector wherein the electrical conductor is secured within the annular space defined by the cable passage therearound (via 1804’s – note paragraph 122). However, Murrell fails to explicitly disclose a potting material filling at least a portion of the annular space. Flores teaches (note fig. 2) a relevant apparatus comprising an electrical conductor (46) that is secured within the annular space therearound by a potting material (50) filling at least a portion of said annular space (note paragraph 30). It is well known in the art that these different lead-securing configurations (i.e., retention features vs potting material) are widely considered to be interchangeable. Therefore, it would have been obvious to a person having ordinary skill in the art at the time the invention was filed, to have modified the apparatus of Murrell to secure the electrical conductor within the annular space using a potting material filling at least a portion of said annular space. This is because this modification would have merely comprised a simple substitution of interchangeable lead-securing configurations in order to produce a similar/predictable result (see MPEP 2143) . Conclusion 07-96 AIA The prior art made of record and not relied upon is considered pertinent to applicant's disclosure : U.S. 2007/0123855 (Morley). U.S. 2022/0192732 (Mumaw). U.S. 2010/0016853 (Burbank). U.S. 2011/0071347 (Rogers). Any inquiry concerning this communication or earlier communications from the examiner should be directed to THOMAS ANTHONY GIULIANI whose telephone number is (571)270-3202. The examiner can normally be reached Mon - Fri 9:00-5:00. 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, Joanne Rodden can be reached at 303-297-4276. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /THOMAS A GIULIANI/Primary Examiner, Art Unit 3794 Application/Control Number: 18/590,475 Page 2 Art Unit: 3794 Application/Control Number: 18/590,475 Page 3 Art Unit: 3794 Application/Control Number: 18/590,475 Page 4 Art Unit: 3794 Application/Control Number: 18/590,475 Page 5 Art Unit: 3794 Application/Control Number: 18/590,475 Page 6 Art Unit: 3794 Application/Control Number: 18/590,475 Page 7 Art Unit: 3794 Application/Control Number: 18/590,475 Page 8 Art Unit: 3794 Application/Control Number: 18/590,475 Page 9 Art Unit: 3794 Application/Control Number: 18/590,475 Page 10 Art Unit: 3794
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