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.
Claim Objections
Claims 2 and 8-10 are objected to because of the following informalities: In claim 2, line 2, “is” should be deleted; In claim 8, line 2, -a- should be inserted before “circumferential”; In claims 9 (line 3) and 10 (line 4), -the- should be inserted before “longitudinal”. Appropriate correction is required.
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 10 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 10 is found to be indefinite because Examiner is unsure of what is meant by the limitation “so that the openings with view in longitudinal direction (L) adjoin one another or overlap one another”, which renders the scope of the claim unclear. 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, 2, 8, and 10-15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 10-12, 14, and 15 of copending Application No. 18/642,171 (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, where applicant has once been 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.
Claims 1, 2, 5, 7, and 15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3, and 4 of copending Application No. 18/406,970 (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, where applicant has once been 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
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.
Claim(s) 1-7, 11-13, and 15 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Gogolin, U.S. 2022/0071684 (hereinafter Gogolin).
Regarding claim 1, Gogolin discloses (note figs. 21A-D) a plasma instrument comprising: a longitudinal body configured as a ‘hose or a tube’ (i.e., ‘shaft’ in paragraph 232) having a distal end and a proximal end as well as a lumen defining a longitudinal direction (L), which extends from the proximal end to the distal end and is configured to connect to a gas source (G) (note paragraph 234), and a head (2806) connected to the distal end comprising at least two openings (2830A-D) connected to the lumen, which are separated from one another by a ‘web’ (see divider between openings) orientated ‘obliquely’ to the longitudinal direction (L) (i.e., angled across the longitudinal direction as you move distally therealong).
Regarding claim 2, Gogolin discloses (see above) a plasma instrument further comprising a plasma creation device (2818) is arranged in the lumen or in the head.
Regarding claim 3, Gogolin discloses (see above) a plasma instrument wherein the plasma creation device comprises at least one electrode (2818) configured to connect to an electrical source (note paragraph 232).
Regarding claim 4, Gogolin discloses (see above) a plasma instrument wherein the electrode is a metallic (note paragraphs 159 and 172) non-insulated (necessarily, at least partially) electrode capable of connecting to one pole of the electrical source.
Regarding claim 5, Gogolin discloses (see above) a plasma instrument wherein the openings are ‘orientated transverse’ to the longitudinal direction (L) (i.e., the openings each have a width that could be described as extending across the longitudinal direction).
Regarding claim 6, Gogolin discloses (see above) a plasma instrument wherein the openings are orientated radially relative to the longitudinal direction (L) (note fig. 21D).
Regarding claim 7, Gogolin discloses (see above) a plasma instrument wherein the web is arranged in a distally tapering section of the head (note fig. 21A).
Regarding claim 11, Gogolin discloses (see above) a plasma instrument wherein the head comprises multiple webs, which are arranged between the openings (note fig. 21D).
Regarding claim 12, Gogolin discloses (see above) a plasma instrument wherein ‘adjacent’ webs (i.e., opposing webs – note fig. 21D) are arranged inclined in pairs in opposite directions (+U, -U) relative to one another (note how opposing webs converge toward one another at equal and opposite angles). It should be noted that “adjacent” has been defined as “near or close (to something)” according to Webster’s New World College Dictionary.
Regarding claim 13, Gogolin discloses (see above) a plasma instrument wherein the openings are configured in ‘triangular-shaped manner’ with rounded corners (the openings could necessarily be described in this manner - note fig. 21A).
Regarding claim 15, Gogolin discloses (see above) a plasma instrument wherein the openings form a ‘line’ extending around the entire circumference of the head (the openings could necessarily be described in this manner - note figs. 21C-D).
Claim(s) 1-3, 5 and 7-12 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Woloszko, U.S. 2020/0397500 (hereinafter Woloszko).
Regarding claim 1, Woloszko discloses (note figs. 1 and 6A) a plasma instrument comprising: a longitudinal body configured as a ‘hose or a tube’ (i.e., shaft ‘106’) having a distal end and a proximal end as well as a lumen (entire space within ‘106’) defining a longitudinal direction (L), which extends from the proximal end to the distal end and is configured to connect to a gas source (G), and a ‘head’ (note fig. 6A) connected to the distal end comprising at least two openings connected to the lumen, which are separated from one another by a ‘web’ (see divider between openings) orientated obliquely to the longitudinal direction (L).
Regarding claim 2, Woloszko discloses (see above) a plasma instrument further comprising a plasma creation device (‘630’ – note paragraph 68) is arranged in the lumen or in the head.
Regarding claim 3, Woloszko discloses (see above) a plasma instrument wherein the plasma creation device comprises at least one electrode (‘630’ – note paragraph 68) configured to connect to an electrical source.
Regarding claim 5, Woloszko discloses (see above) a plasma instrument wherein the openings are ‘orientated transverse’ to the longitudinal direction (L) (i.e., the openings each have a width that could be described as extending across the longitudinal direction).
Regarding claim 7, Woloszko discloses (see above) a plasma instrument wherein the web is arranged in a distally tapering section of the head (note fig. 6A).
Regarding claim 8, Woloszko discloses (see above) a plasma instrument wherein the web is ‘inclined in circumferential direction’ (U) of the head (note proximal angled webs in fig. 6A).
Regarding claim 9, Woloszko discloses (see above) a plasma instrument wherein the web is further inclined distally toward a longitudinal center axis extending centered in longitudinal direction (L) in the head (note proximal angled webs in fig. 6A).
Regarding claim 10, Woloszko discloses (see above, as best understood by Examiner) a plasma instrument wherein the web is orientated obliquely relative to the longitudinal direction (L), so that the openings with view in longitudinal direction (L) ‘adjoin one another or overlap one another’ (the openings could necessarily be described in this manner - note fig. 6A).
Regarding claim 11, Woloszko discloses (see above) a plasma instrument wherein the head comprises multiple webs, which are arranged between the openings (note fig. 6A).
Regarding claim 12, Woloszko discloses (see above) a plasma instrument wherein adjacent webs are ‘arranged inclined in pairs in opposite directions’ (+U, -U) relative to one another (the webs could necessarily be described in this manner - note fig. 6A).
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) 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Gogolin.
Regarding claim 14, Gogolin discloses (see above) a plasma instrument comprising a head with openings. However, Gogolin fails to explicitly disclose openings having the specifically-claimed shape. It would have been an obvious matter of design choice to make the different openings of whatever form or shape was desired or expedient. A change in form or shape is generally recognized as being within the level of ordinary skill in the art, absent any showing of unexpected results. In re Dailey et al., 149 USPQ 47.
Claim(s) 4, 13, and 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Woloszko.
Regarding claim 4, Woloszko discloses (see above) a plasma instrument wherein the electrode is necessarily a conductive non-insulated (at least partially) electrode capable of connecting to one pole of the electrical source. However, Woloszko fails to explicitly disclose the specifically-claimed electrode material. It would have been obvious to one having ordinary skill in the art at the time the invention was filed to have modified the electrode accordingly, 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.
Regarding claims 13 and 14, Woloszko discloses (see above) a plasma instrument comprising a head with triangular-shaped and trapezoid-shaped openings (note fig. 6A). However, Woloszko fails to explicitly disclose openings having the specifically-claimed shapes with rounded corners. It would have been an obvious matter of design choice to make the different openings of whatever form or shape was desired or expedient. A change in form or shape is generally recognized as being within the level of ordinary skill in the art, absent any showing of unexpected results. In re Dailey et al., 149 USPQ 47.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
U.S. 2021/0259756 (Atwell).
U.S. 2014/0200581 (Aluru).
U.S. 2013/0090644 (Williams).
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.
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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.
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/THOMAS A GIULIANI/Primary Examiner, Art Unit 3794
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