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 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.
Claims 1-10 are 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 1 recites the limitation "the exterior portion" in line 12 of the claim. There is insufficient antecedent basis for this limitation in the claim. It is unclear if “the exterior portion“ is referencing the “exterior surface” previously mentioned in the claim, or if “the exterior portion” is referencing a different “portion” (i.e. “collar portion”, “extension portion”, “cart portion”, or “end portion”).
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 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of copending Application No. 18/676,213 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the combination claimed in the reference application requires all of the particulars of the subcombination required in the claims of the instant application.
For example, the reference application requires in claim 1:
[…] the interface comprising: an extension portion attached relative to the surgical cart, the extension portion including an end portion and a receiving aperture formed in the end portion, and the extension portion being moveable outwardly and inwardly relative to the surgical cart; a receiver portion provided on the collar portion, the receiver portion including a recess and a locking member moveable into and out of the recess, and the recess being configured to receive the end portion of the extension portion, and the locking member configured to be moved into and out of the receiving aperture; a collar portion moveably attached relative to the longitudinal cross-member of the surgical table, the collar portion including a first end, an opposite second end, an interior cavity extending between the first end and the second end, an interior surface defining a portion of the interior cavity, and at least one truck attached relative to the interior surface; and an actuator portion actuatable to facilitate movement of the at least one truck along the at least one track; wherein portions of the longitudinal cross member of the surgical table are received in the interior cavity to attach the collar portion to the surgical table with the at least one truck being engaged to at least one track portion attached to the longitudinal cross member; wherein, when the end portion of the extension portion is received in the recess, the locking member can be received in the receiving aperture to attach the extension portion and the collar portion to one another, and after attachment of the extension portion and the collar portion, the surgical cart is moveably interconnected to the surgical table via actuation of the actuator portion; and wherein the first surgical robotic arm and the second surgical robotic arm can be manipulated to position and reposition the surgical equipment thereon relative to the patient supported by the surgical table.
And the instant application’s Claim 1 requires:
An interface for moveably interconnecting a cart portion and a surgical table with one another, the interface comprising: an extension portion attached relative to the cart portion, the extension portion including an end portion and a receiving aperture formed in the end portion, and the extension portion being moveable outwardly and inwardly relative to the cart portion; a collar portion moveably attached relative to the surgical table, and including a first end, an opposite second end, an interior cavity extending between the first end and the second end, an exterior surface positioned between the first end and the second end, an interior surface defining a portion of the interior cavity, at least one truck attached relative to the interior surface, and a receiver portion provided on the exterior portion, the receiver portion including a recess and a locking member moveable into and out of the recess, and the recess being configured to receive the end portion of the extension portion, and the locking member configured to be moved into and out of the receiving aperture; wherein portions of a longitudinal cross member of the surgical table are received in the interior cavity to attach the collar portion to the surgical table with the at least one truck being engaged to at least one track portion attached to the longitudinal cross member; and wherein, when the end portion is received in the recess, the locking member can be received in the receiving aperture to attach the extension portion and the collar portion to one another, and interconnect the cart portion and the surgical table to one another.
Differences between the reference claim 1 and the instant application’s claim 1 have been bolded and underlined. These are not patentably distinct differences. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Allowable Subject Matter
Claims 1-10 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph and a proper Terminal Disclaimer is filed to obviate the provisional double patenting rejection, set forth in this Office action.
Claims 11-20 are allowed.
The following is an examiner’s statement of reasons for allowance: The closest prior art of record was determined to be Lim (US 2020/0060913). Lim discloses an interface interconnecting a cart portion (408) and a surgical table (10) with one another, the interface comprising:
an extension portion (406) attached relative to the cart portion,
a collar portion (416) movably attached to the surgical table, and including a first end, an opposite second end, an interior cavity extending between the first end and the second end, an exterior surface positioned between the first end and the second end, an interior surface defining a portion of the interior cavity, at least one truck (412) attached relative to the interior surface (see Figs. 31 and 33-34), and
wherein portions of a longitudinal cross member of the surgical table are received in the interior cavity to attach the collar portion to the surgical table with the at least one truck (412) being engaged to at least one track portion (418) attached to the longitudinal cross member (see Figs. 33-34).
Lim fails to disclose the remaining combination of claimed subject matter required in claim 1 (i.e. a receiving aperture formed in the end portion, the extension portion being moveable outwardly and inwardly relative to the cart portion, a receiver portion provided on the exterior portion, the receiver portion including a recess and a locking member moveable into and out of the recess, etc.). Independent claims 11 and 18 require similar allowable limitations vis-à-vis claim 1 while additionally requiring “telescopic movement” of the end portion, and are allowable for similar reasons.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See attached PTO-892.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ERIC J KURILLA whose telephone number is (571)270-7294. The examiner can normally be reached Monday-Thursday 7AM-6PM.
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/ERIC J KURILLA/Primary Examiner, Art Unit 3619