DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of pre-AIA 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 –
(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of application for patent in the United States.
Claim(s) 1-10, 12-15, 17-18 and 20 is/are rejected under pre-AIA 35 U.S.C. 102(b) as being anticipated by Upsher (US 4,437,458).
Regarding claim 1, Upsher discloses a medical system, comprising: an instrument (fig 2) including a rigid guide tube (Col.2 ll 40-44) having a pre-formed shape with at least one change in direction between a proximal end and a distal end of the guide tube (fig 1), the guide tube including: a first channel (channel created by slot 13, figs 3 and 5) extending between the proximal end and the distal end (figs 2 and 5; Col.5 ll 53-57), wherein the first channel includes a first opening 13 extending along a side of the guide tube so that the first channel is at least partially exposed (fig 5); and a second channel extending alongside the first channel 76, wherein the guide tube further includes an optical device 74 integrally formed with the body (Col.7 ll 3-5), and wherein a cross-section of a proximal portion of the guide tube is greater than a cross-section of a distal portion of the guide tube (fig 2, due to end tip 20).
Regarding claim 2, wherein the first channel further includes a second, proximal opening (opening in fig 3) and a third, distal opening (opening at other end, fig 5), and wherein the second channel includes a proximal opening and a distal opening (opening which accepts 74 and opening out other end which allows area distal of device to be viewed).
Regarding claim 3, wherein a distal portion of the guide tube includes a ramp 20.
Regarding claim 4, wherein the ramp is distal to at least one of a second, distal opening of the first channel or a distal opening of the second channel (fig 2).
Regarding claim 5, wherein a distal end of the guide tube is tapered (due to 20).
Regarding claim 6, wherein at least one of the first channel or the second channel is configured to receive a medical tool (side opening allows another tubular device to be placed inside, in addition to other tools).
Regarding claim 7, wherein cross-sectional shapes of the first channel and the second channel are the same (circular, fig 5).
Regarding claim 8, wherein at least one of the first channel or the second channel has a first cross-sectional width along a first portion of the guide tube and a larger, second cross-sectional width along a second portion of the guide tube (first channel has a smaller cross-section at region indicated as “22” in fig 2 due to taper, than cross-section distal of it).
Regarding claim 9, wherein the first and second channels share an opening in the guide tube (both channels can be said to share an opening at either distal or proximal ends, with a dividing wall between said channels).
Regarding claim 10, further comprising a channel divider, wherein the channel divider defines the first channel from the second channel (figs 2 and 5).
Regarding claim 12, wherein the first opening is configured to allow for insertion or removal of the tool through the side of the first channel (Col.2 ll 22-26).
Regarding claim 13, Upsher discloses a medical system, comprising: an instrument (fig 2) including a rigid guide tube (Col.2 ll 40-44) having a pre-formed shape with at least one change in direction between a proximal end and a distal end of the guide tube (fig 2), the guide tube including: a first channel (channel created by slot 13, figs 3 and 5) extending between the proximal end and the distal end (figs 2 and 5; Col.5 ll 53-57), the first channel having a first proximal opening (fig 3), a first distal opening (fig 5), and a first slit 13 extending along a side of the guide tube so that the first channel is at least partially exposed (fig 3); and a second channel 76 extending alongside the first channel (figs 1 and 2), the second channel having a second proximal opening (fig 2) and a second distal opening (opening at distal end), wherein the guide tube further includes an optical device 74 integrally formed with the body (fig 2), and wherein a distal portion of the guide tube includes a ramp 20 distal to at least one of the first distal opening or the second distal opening (fig 2).
Regarding claim 14, wherein a distal end of the guide tube is tapered (fig 2, due to 20).
Regarding claim 15, wherein at least one of the first channel or the second channel is configured to receive a medical tool (side opening allows another tubular device to be placed inside, in addition to other tools).
Regarding claim 17, Upsher discloses a medical system (fig 2), comprising: a rigid guide tube (Col.2 ll 40-44) having a pre-formed shape with at least one change in direction between a proximal end and a distal end of the guide tube (fig 2), the guide tube including: a first channel (channel created by slot 13, figs 3 and 5) extending between the proximal end and the distal end (figs 2 and 5; Col.5 ll 53-57), the first channel having a first proximal opening (fig 3), a first distal opening (fig 5), and a slit 13 extending along a side of the guide tube so that the first channel is at least partially exposed (fig 3); and a second channel 76 extending alongside the first channel (figs 1 and 2), the second channel having a second proximal opening (fig 2) and a second distal opening (opening at distal end), wherein the guide tube further includes an optical device 74 integrally formed with the body (fig 2), wherein a distal portion of the guide tube includes a ramp 20 distal to at least one of the first distal opening or the second distal opening (fig 2), and wherein a cross-section of a proximal portion of the guide tube is greater than a cross-section of a distal portion of the guide tube (fig 2, due to ramp).
Regarding claim 18, wherein at least one of the first channel or the second channel is configured to receive a medical tool (side opening allows another tubular device to be placed inside, in addition to other tools).
Regarding claim 20, wherein the slit is configured to allow for insertion or removal of the tool through the side of the first channel (figs 3 and 5).
Allowable Subject Matter
Claims 11, 16 and 19 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The examiner did not find a teaching or suggestion for modifying closest art Upsher such that the first and the second channels diverge at the distal end of the guide tube. While the examiner found suggestion for convergence in fig 7 of Yokota et al (US 2007/0106121), there was no suggestion for convergence.
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 1-10, 12-15, 17-18 and 20 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 11,974,718. Although the claims at issue are not identical, they are not patentably distinct from each other because they are generally broader claims, with any differences obvious in view of Upsher.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRADLEY JAMES OSINSKI whose telephone number is (571)270-3640. The examiner can normally be reached Monday to Thursday 9AM to 5PM.
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/BRADLEY J OSINSKI/Primary Examiner, Art Unit 3783
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