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
Claims 3, 14, and 17 are objected to because of the following informalities:
Claim 3, line 1-2, “wherein the extending of the cannula mount arm unwinds the spring” should read “wherein extending the cannula mount arm unwinds the spring”.
Claim 14, line 1, “The system of claim 1, further comprises a damper” should read “The system of claim 1 further comprising a damper”.
Claim 17, line 1-2, “wherein the extending of the cannula mount arm unwinds the spring from the spool assembly” should read “wherein extending the cannula mount arm unwinds the spring”.
Appropriate correction is required.
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 1 and 15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,950,866 (Thompson). Although the claims at issue are not identical, they are not patentably distinct from each other because Thompson claims:
1. A system comprising:
a manipulator arm comprising a first link and a latch link coupled to the first link and configured to engage with a latch (claim 1); and
a cannula mount arm comprising the latch (claim 1);
wherein:
the cannula mount arm is configured to be manually extended from the first link to an extended position (claim 1), wherein extending the cannula mount arm stores potential energy in a spring (claim 10);
the latch link is configured to engage with the latch when the cannula mount arm is extended from the first link to the extended position so as to lock the cannula mount arm in the extended position (claim 1); and
disengagement of the latch link from the latch results in the cannula mount arm being retracted into the first link using the potential energy stored in the spring (claim 9-10).
15. A cannula mount system comprising:
a cannula dock configured to receive a cannula (claim 1);
a cannula mount arm (claim 1); and
a latch (claim 1);
wherein:
the cannula mount arm is configured to be manually extended from a first link of a manipulator arm to an extended position (claim 1), wherein extending the cannula mount arm stores potential energy in a spring (claim 10);
the latch is configured to engage with a latch link of the manipulator arm when the cannula mount arm is extended from the first link to the extended position so as to lock the cannula mount arm in the extended position (claim 1); and
disengagement of the latch link from the latch results in the cannula mount arm being retracted into the first link using the potential energy stored in the spring (claim 9-10).
Claim 11 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,950,866 (Thompson), as applied above and further in view of US 2009/0269179 (Gale). Although the claims at issue are not identical, they are not patentably distinct from each other because:
11. Thompson claims the invention substantially as claimed as discussed above but does not claim the cannula mount arm and first link being curved. Gale teaches a system in the same field of endeavor having curved cannula mount arm (arm 4) and first link (arm 5) for the purpose of telescopically nesting curved links to arcuately extend the cannula (FIG. 1). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the cannula mount arm and first of Thompson to be curved as taught by Gale in order to telescopically nest curved links to arcuately extend the cannula.
Claim 14 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,950,866 (Thompson), as applied above and further in view of US 2010/0168762 (Osawa). Although the claims at issue are not identical, they are not patentably distinct from each other because:
14. Thompson claims the invention substantially as claimed as discussed above but does not claim the system having a damper. Osawa teaches a retraction system in the same field of endeavor having a damper (FIG. 5; P0050) for the purpose of damping the rotation of an element (P0050). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the retraction system of Thompson to include a damper as taught by Osawa in order to damp the rotation of an element.
Allowable Subject Matter
Claim(s) 1-20 (as filed ) 05/18/2024 are free from prior art rejections under 35 U.S.C. 102/103. Claim(s) 1, 11, 14, and 15 are currently only rejected under double patenting.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TODD J SCHERBEL whose telephone number is (571)270-7085. The examiner can normally be reached Mon - Fri 9:00-6:00.
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TJ SCHERBEL
Primary Examiner
Art Unit 3771
/TODD J SCHERBEL/Primary Examiner, Art Unit 3771