DETAILED ACTION
Double Patenting
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 .
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 1-15, 17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 of U.S. Patent No. 11925358. Although the claims at issue are not identical, they are not patentably distinct from each other because all the claimed limitation of at least the independent claim 1 of the present application is included and claimed in the independent claims of U.S. Patent No. 11925358 .
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 17 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 17 recites the limitation " the first interchangeable tip" and “the second interchangeable tip” in line 1-2. There is insufficient antecedent basis for this limitation in the claim.
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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-14, 16 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Boury (US 20040044346 A1).
Boury discloses an elongated medical device fig. 1 having an interchangeable tip fig. 4, comprising: a blade 112 aligned for engagement with a footplate 114 for severing surgical material; a handle 122 having a lever 120, fig. 1 for disposing the blade against the footplate; an interchangeable tip fig. 4 disposing the blade in slidable communication with the footplate for actuation against the footplate responsive to movement of the lever; and a detachable linkage 150, 250 between the handle and the interchangeable tip for disengaging the interchangeable tip from the handle, wherein the detachable linkage includes a receptacle 156, 256 and a protrusion 150, 250, the protrusion adapted to engage the receptacle in a vertical direction fig. 4, wherein the detachable linkage includes a receptacle 382 and a protrusion 324, the protrusion adapted to engage the receptacle in a lateral direction, wherein the interchangeable tip includes a first tip fig. 4 and a second tip (replacement tip (abstract), the detachable linkage 150, 250 configured to: engage the first tip with the handle at the detachable linkage; disengage the first tip with the handle via the detachable linkage; and engage the second tip with the handle via the detachable linkage, wherein the interchangeable tip includes a blade portion 240 and a footplate portion 270, the blade attached to a distal end of the blade portion and the footplate attached to a distal end of the footplate portion and aligned for communication with the blade fig. 4, wherein: the handle further includes a handle base 158 and a handle slide 212, the lever 120 pivotally attached to the handle base for moving the handle slide relative to the handle base, the detachable linkage 250 attaches the blade portion to the handle slide; and the detachable linkage 150 attaches the footplate portion to the handle base, further comprising a restraining slot 238b, the restraining slot maintaining the blade portion and the footplate portion in slidable communication and a parallel alignment, wherein the restraining slot 238b further includes a linear cavity with a wide slot portion and a narrow slot portion fig. 4, the wide slot portion configured for receiving a protrusion 236a and the narrow slot portion configured for restraining the protrusion fig. 4, wherein the protrusion 236a has a varied width including a narrow width and an expanded width, the narrow width less than a width of the narrow slot portion and the wide slot portion, the expanded width wider than the width of the narrow slot portion and lass than the width of the wide slot portion fig. 4, further comprising: an interlocking member 272 on the handle base; and an engaging slot on the footplate portion, the interlocking member configured for insertion into the engaging slot when the interchangeable tip is engaged with the handle, the interlocking member locking the blade and the footplate with the handle fig. 6, para. 32, wherein the detachable linkage further comprises a receptacle 256 having rounded edges and a varied width, and a protrusion 250 having a complementary shape to the receptacle fig. 4, wherein the detachable linkage further comprises a receptacle 355, fig. 12 having a plurality of wide portions flanking narrow portions (threads 357); and a protrusion 351 having a complementary shape to the receptacle of wide portions and narrow portions, further comprising: a complementary set of a protrusion and a receptacle figs . 4, 12-20 adapted to engage the blade portion and the handle slide; a second complementary set of a protrusion and a receptacle adapted to engage the footplate portion and the handle base, the detachable linkages retained in a parallel, slidable engagement.
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.
Claim(s) 15, 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Boury.
Boury fails to teach that the blade portions and footplate portions are formed from an amorphous metal .
It would have been obvious to one having ordinary skill in the art at the time the invention was made to construct the blade portions and footplate portions are formed from an amorphous metal , since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SAMEH RAAFAT BOLES whose telephone number is (571)270-5537. The examiner can normally be reached 9-5 pm.
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, Kevin Truong can be reached at 571-272-4705. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SAMEH R BOLES/Primary Examiner, Art Unit 3775
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