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 .
Priority
This application discloses and claims only subject matter disclosed in prior application, and names the inventor or at least one joint inventor named in the prior application. Accordingly, this application may constitute a continuation or divisional. Should applicant desire to claim the benefit of the filing date of the prior application, attention is directed to 35 U.S.C. 120, 37 CFR 1.78, and MPEP § 211 et seq. The presentation of a benefit claim may result in an additional fee under 37 CFR 1.17(w)(1) or (2) being required, if the earliest filing date for which benefit is claimed under 35 U.S.C. 120, 121, 365(c), or 386(c) and 1.78(d) in the application is more than six years before the actual filing date of the application.
Claim Objections
Claim 7 is objected to because of the following informalities: there is a space missing between the word “claim” and “4”.
- Appropriate correction is required.
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 use the word “means” or “step” but are nonetheless not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph because the claim limitation(s) recite(s) sufficient structure, materials, or acts to entirely perform the recited function. Such claim limitation(s) is/are: “insertion shaft is configured to/ a control unit configured to” in claims 1 and 22 respectively.
Because this/these claim limitation(s) is/are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are not being interpreted to cover only the corresponding structure, material, or acts described in the specification as performing the claimed function, and equivalents thereof (see Figs. 1-7, 12-15, 0009-0013).
If applicant intends 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 remove the structure, materials, or acts that performs the claimed function; or (2) present a sufficient showing that the claim limitation(s) does/do not recite sufficient structure, materials, or acts to perform the claimed function.
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.
The term “substantially” in claims 4, 5, 7, 15, 19 and 29 is a relative term which renders the claim indefinite. The term “substantially” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
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.
Instant Application
US11930261
Claim 1: An insertion shaft for an electrically actuated scope, the insertion shaft comprising: at least two wires having proximal ends each anchored to a respective proximal anchoring point located at a proximal end of the insertion shaft or at a predetermined location along the insertion shaft and having distal ends each anchored to a respective distal anchoring point located between a distal end of the insertion shaft and the proximal anchoring points, the wires being disposed around a central axis and extending along the insertion shaft, wherein each of the wires comprises two-way memory material configured to contract when heated to or above a first predetermined temperature and return to a predetermined original length thereof upon cooling to or below a second predetermined temperature below the first predetermined temperature; wherein for each of the wires, a length of the wire is larger than a length along the insertion shaft between the proximal anchoring point and the distal anchoring point to which the wire is anchored, such that each of the wires is incorporated in the insertion shaft with a predetermined slack; wherein the insertion shaft is configured to be joined to a control apparatus, such that each wire is configured to be independently and selectively heated by application of electrical current from the control apparatus, to yield a bending of the bendable portion.
Claim 1: An insertion shaft for an electrically actuated scope, the insertion shaft comprising:at least two shape-memory-alloy (SMA) wires having proximal ends each anchored to a respective proximal anchoring point located at a proximal end of the insertion shaft or at a predetermined location along the insertion shaft and having distal ends each anchored to a respective distal anchoring point located between a distal end of the insertion shaft and the proximal anchoring points, the SMA wires being disposed around a central axis and extending along the insertion shaft, wherein each of the SMA wires comprises two-way memory material configured to contract when heated to or above a first predetermined temperature and return to a predetermined original length thereof upon cooling to or below a second predetermined temperature below the first predetermined temperature; wherein for each of the SMA wires, a length of the SMA wire between the proximal anchoring point and the distal anchoring point to which the wire is anchored is larger than a length of the insertion shaft between the proximal anchoring point and the distal anchoring point to which the SMA wire is anchored, such that each of the SMA wires is incorporated in the insertion shaft with a predetermined slack; wherein the insertion shaft is configured to be joined to a control apparatus, such that each SMA wire is configured to be independently and selectively heated by application of electrical current from the control apparatus, to yield a bending of the bendable portion.
Claim. 22: A scope, comprising: the insertion shaft of claim 1; and a control unit configured to receive a user instruction to bend the insertion shaft in a desired direction, and to independently and selectively heat each of the wires to the predetermined temperature by applying electrical current via each of the wires, thereby controlling a length of each of the wires, to control a bending of the bendable portion of the insertion shaft according to the user instruction.
Claim 22: A scope, comprising: the insertion shaft of claim 1; and a control unit configured to receive a user instruction to bend the insertion shaft in a desired direction, and to independently and selectively heat each of the SMA wires to the predetermined temperature by applying electrical current via each of the SMA wires, thereby controlling a length of each of the SMA wires, to control a bending of the bendable portion of the insertion shaft according to the user instruction.
Claim 29: An insertion shaft for an electrically actuated scope, the insertion shaft comprising: at least two wires having proximal ends each anchored to a respective proximal anchoring point located at a proximal end of the insertion shaft or at a predetermined location along the insertion shaft and having distal ends each anchored to a respective distal anchoring point located between a distal end of the insertion shaft and the proximal anchoring point, the wires being disposed around a central axis and extending along the insertion shaft, wherein each of the wires comprises two-way memory material configured to contract when heated to or above a first predetermined temperature and return to a predetermined original length thereof upon cooling to or below a second predetermined temperature below the first predetermined temperature; wherein a bendable portion of the insertion shaft located between the proximal anchoring point and the distal anchoring point comprises a frame, comprising: a plurality of discrete slots, each slot being elongated and having a large dimension and a small dimension, the large dimension extending substantially radially or with a radial component from the central axis, each slot being traversed by a respective one of the wires and enabling movement of the wire along the large dimension; and one or more hollow spaces configured to be traversed by wiring and/or piping for tools held by the insertion shaft; wherein the insertion shaft is configured to be joined to a control apparatus, such that each wire is configured to be independently and selectively heated by application of electrical current from the control apparatus, to yield a bending of the bendable portion.
Claim 29: An insertion shaft for an electrically actuated scope, the insertion shaft comprising: at least two SMA wires having proximal ends each anchored to a respective proximal anchoring point located at a proximal end of the insertion shaft or at a predetermined location along the insertion shaft and having distal ends each anchored to a respective distal anchoring point located between a distal end of the insertion shaft and the proximal anchoring point, the SMA wires being disposed around a central axis and extending along the insertion shaft, wherein each of the wires comprises two-way memory material configured to contract when heated to or above a first predetermined temperature and return to a predetermined original length thereof upon cooling to or below a second predetermined temperature below the first predetermined temperature; wherein a bendable portion of the insertion shaft located between the proximal anchoring point and the distal anchoring point comprises a frame, comprising: a plurality of discrete slots, each slot being elongated and having a large dimension and a small dimension, the large dimension extending radially or with a radial component from the central axis, each slot being traversed by a respective one of the SMA wires and enabling movement of the SMA wire along the large dimension; and one or more hollow spaces configured to be traversed by wiring and/or piping for tools held by the insertion shaft; wherein the insertion shaft is configured to be joined to a control apparatus, such that each SMA wire is configured to be independently and selectively heated by application of electrical current from the control apparatus, to yield a bending of the bendable portion.
Claims 1-9, 14-16, 18, 20, 22-23 and 27-30 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-30 of U.S. Patent No.11930261. Although the claims at issue are not identical, they are not patentably distinct from each other because it would be obvious to one of ordinary skill in the art before the effective filing date to incorporate SMA wires amongst the wires in a scope.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TALHA M NAWAZ whose telephone number is (571)270-5439. The examiner can normally be reached Flex, M-R 6:30am-3:30pm; F 8:30am-12:30pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joe G Ustaris can be reached at 571-272-7383. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/TALHA M NAWAZ/ Primary Examiner, Art Unit 2483