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.
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Claims 1-10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2 and 4-10 of copending Application No. 18/625195 in view of SUN (CN 105662543). This is a provisional nonstatutory double patenting rejection.
Regarding claims 1 and 3 of the present application, claim 1 of Application 18/625195 recites all of the limitations exactly as claimed (it is noted that the recitation of an “A-type” stapler vs a “B-type” stapler adds no distinction between the claims since neither limitation has an art-recognized inherent structure or function) except it fails to recite: a glans protection cover, and/or a locking ring, and/or a circumcision knife; and wherein the circumcision knife is annularly arranged at an outer circumference of the thimble guide block, and is configured to cooperate with a lower end surface of the upper comprehensive cover to cut the prepuce.
However, Sun discloses these features for a similar circumcision stapler as described below which together help eliminate secondary pain to a patient, improve anastomosis effect and improve the surgical outcome ([0009]-[0013]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have provided the circumcision stapler of Application 18/625195 with the above features in order to help eliminate secondary pain to a patient, improve anastomosis effect and improve the surgical outcome.
Regarding claims 2 and 4-10 of the present application, claims 2 and 4-10 of Application No. 18/625195 recite and/or require all of the limitations as claimed, respectively (noting that claim 1 of Application 18/625195 recites all the limitations of claim 3 of the present application).
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)(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.
Claims 1-10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by SUN (CN 105662543).
Regarding claim 1, Sun discloses an A-type valgus circumcision stapler (“A-type” having no art-recognized inherent structure or function), comprising: an upper comprehensive cover (6), a lower comprehensive cover (3) and a U-nail device (4/7), wherein the upper comprehensive cover and the lower comprehensive cover are releasably connected in a matching manner ([0050]); a prepuce fixing hoop integrally formed with the upper comprehensive cover is arranged at the lower portion of the upper comprehensive cover, or the prepuce fixing hoop (641) is accommodated in the upper comprehensive cover (Figure 2); a part or all of the U-nail device is placed in the lower comprehensive cover (Figure 2); and the upper comprehensive cover, the lower comprehensive cover and the U-nail device cooperate to position a penis and/or glans and/or prepuce, and to clamp and/or squeeze and/or cut the prepuce ([0050]) wherein the U-nail device comprises a U-nail top ring (4) and a thimble guide block (7); the A-type valgus circumcision stapler further comprises a glans protection cover (10 or 711), and/or a locking ring (631), and/or a circumcision knife (5); and wherein the circumcision knife is annularly arranged at an outer circumference of the thimble guide block (see annular outer wall radially inward from members 422 in Figure 2), and is configured to cooperate with a lower end surface of the upper comprehensive cover to cut the prepuce ([0050]).
Regarding claim 2, the thimble guide block is configured to guide a movement of the suturing U-nail and/or to position and/or guide a thimble of the U-nail top ring; and the U-nail top ring is configured to cooperate with the thimble guide block to eject the U-nail in the thimble guide block ([0050]).
Regarding claim 3, a U- nail gasket (711) which is an annular gasket arranged at the top end of the thimble guide block.
Regarding claim 4, the U-nail gasket further comprises a gasket positioning stage (7111) perpendicular to and/or at an angle to the plane of the U-nail gasket; and the gasket positioning stage is one or more protrusions (Figure 1; [0036]) and/or an integral annular protrusion arranged at the inner circumference and/or the outer circumference and/or the middle of the plane of the U-nail gasket.
Regarding claim 5, a first through hole (allowing passage of shaft 621) is formed in a middle of the thimble guide block; the thimble guide block comprises a positioning stage accommodating groove (71); the positioning stage accommodating groove is formed at the top end of the thimble guide block, and is configured to accommodate the one or more protrusions and/or integral annular protrusion at the middle of the plane of the U-nail gasket (Figure 1; [0036]).
Regarding claim 6, the thimble guide block is provided with a plurality of thimble guide grooves (72) annularly formed in the annular thimble guide block; and the U-nail gasket partially or completely covers the thimble guide grooves (Figure 1).
Regarding claim 7, the U-nail top ring is provided with a plurality of thimbles (43) which is in one- to-one correspondence with the plurality of thimble guide grooves formed on the thimble guide block and which is configured to eject the suturing U-nail accommodated in each thimble guide groove ([0050]; Figure 1).
Regarding claim 8, the prepuce fixing hoop is capable of being positioned in the upper comprehensive cover (Figure 2) and cooperates with the upper comprehensive cover to clamp the prepuce, and/or the lower end of the prepuce fixing hoop is capable of cooperating with the U-nail device to clamp the prepuce ([0050]).
Regarding claim 9, the glans protection cover (711) is configured to accommodate and protect the glans ([0036]), is releasably arranged in a first through hole (72) of the thimble guide block, and upwardly corresponds to a second through hole (housing shaft 621) of the upper comprehensive cover.
Regarding claim 10, an upper end of a connecting block (15) is connected to the lower end of the comprehensive cover (Figure 1; [0044]).
Response to Arguments
Applicant’s arguments with respect to the pending claims have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Thomas McEvoy whose telephone number is (571) 270-5034 and direct fax number is (571) 270-6034. The examiner can normally be reached on Monday-Friday, 9:00 am – 6:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, please contact the examiner’s supervisor, Elizabeth Houston at (571) 272-7134. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/THOMAS MCEVOY/Primary Examiner, Art Unit 3771
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