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 Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “cutting implement” in claim 1; “cutting implement advancement and retraction assembly” in claim 1; “first control member” in claim 1; “second control member” in claim 1.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11,154,317 in view of Fabro et al. (US 2013/0023882).
Regarding the application claim 1, the patent claim 1 effectively recites and/or requires: a system for cutting tissue (patent claim 1, lines 1-3), the system comprising: an outer tube having a proximal end and a distal end; a cutting implement slidably disposed within the outer tube, the cutting implement having a distal end and a proximal end (patent claim 1, lines 4-7); a cutting implement advancement and retraction assembly configured to engage the cutting implement to move the cutting implement longitudinally (patent claim 1, lines 10-12); a first control member coupled to the cutting implement advancement and retraction assembly to cause the cutting implement to move longitudinally so that the distal end of the cutting implement is extended towards and retracted away from the distal end of the outer tube (patent claim 1, lines 13-18); and a second control member for selectively actuating the motor to cause oscillation of the cutting implement (patent claim 1, lines 19-24).
The patent claim 1 fails to recite and/or require a motor configured to oscillate the cutting implement.
However, Fabro et al. teach that a motor can be used to cause rotation and/or oscillation of a similar cutting implement as described in the rejection below.
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 system of the patent claim 1 with the motor of Fabro et al. in order to automate the rotation of the claimed cutting implement thereby reducing the effort needed to cut tissue.
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 1-7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Fabro et al. (US 2013/0023882).
Regarding claim 1, Fabro et al. disclose a system for cutting tissue, the system comprising: an outer tube (404) having a proximal end and a distal end; a cutting implement (503/504) slidably disposed within the outer tube, the cutting implement having a distal end and a proximal end; a motor (512) configured to oscillate the cutting implement (¶[0034] - the motor can rotate the cutting implement in two directions); a cutting implement advancement and retraction assembly (514/505) configured to engage the cutting implement to move the cutting implement longitudinally (¶[0039], [0040]); a first control member (410) coupled to the cutting implement advancement and retraction assembly to cause the cutting implement to move longitudinally so that the distal end of the cutting implement is extended towards and retracted away from the distal end of the outer tube (¶[0039], [0040]); and a second control member for selectively actuating the motor to cause oscillation of the cutting implement (¶[0034] - “separate motor controle interface”).
Regarding claim 2, the cutting implement comprises a bur (¶[0033]).
Regarding claim 3, the system further comprises a handpiece (406) including the motor (Figure 4C).
Regarding claim 4, the system further comprises a spindle (510) at least partially disposed in the handpiece (Figure 4C), the spindle comprising a coupling feature (505, or the shape of the lumen of 510 which matches 518 - as is the case for Applicant’s coupling feature) configured to engage the proximal end of the cutting implement (¶[0040]). Alternatively bearing 505 can be the spindle and it must have a coupling feature to connect to 518 so that axial movement of the bearing can cause axial movement of 518.
Regarding claim 5, the handpiece comprises a drive train (510) coupled to the motor and the spindle (505 being the spindle in this interpretation) to cause oscillation of the cutting implement.
Regarding claim 6, the first control member comprises a trigger that is pivotal relative the handpiece, the trigger is manually actuated by a user to set an axial position of the cutting implement (evident from ¶[0034] and Figure 4C).
Regarding claim 7, the outer tube further comprises: a face plate (602; Figure 6C) at the distal end of the outer tube; a notch (509) spaced or positioned proximal to the face plate, the notch having a distal end and a proximal end; wherein the outer tube and the cutting implement are configured such that the tissue being cut is sheared between the face plate and the distal end of the cutting implement as the cutting implement is moved longitudinally within the outer tube (capable if 504 is not rotated and used to pinch off tissue between its distal end and the face plate; Figure 6C).
Conclusion
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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