I. The specification is objected to because of the following informalities: In paragraph 34, line 7, “side wall 150” should be ---side wall 50--- to accord with the way in which reference numeral 50 is used in line 10 of paragraph 34 and Figure 4.
II. 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. See 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); and 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) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the conflicting application or patent is shown to be commonly owned with this application. See 37 CFR 1.130(b).
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Claims 1-10 are rejected under the judicially created doctrine of obviousness-type double patenting as being unpatentable over claims 1-10 of U.S. Patent No. 12,016,606. Although the conflicting claims are not identical, they are not patentably distinct from each other because the only difference between claims of the present application and claims of the patent is that the patented claims are more specific. Thus the invention of the patented claims are in effect a “species” of the “generic” invention of the claims of the present application. It has been held that the generic invention is “anticipated” by the “species.” See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Since the claims of the present application are anticipated by the patented claims, they are not patentably distinct from the patented claims.
III. 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.
Regarding claim 1, “a barrel” is recited in line 6 and “a tubular barrel” is recited in line 11. It appears that said barrel and said tubular barrel may have been intended to be the same element. To avoid confusion, it is proposed that the claims reflect this, i.e. the first instance be “a tubular barrel” and subsequent instances refer to this as “the tubular barrel” or “said tubular barrel.”
Claim 1, line 6 recites that the barrel is for housing a slide assembly, but the claim never positively requires a slide assembly, i.e. no structure comprises/includes a slide assembly. Later in the claim, e.g. lines 13+, structural details of the slide assembly are set forth (e.g. “said slide assembly having a slide lock” etc), which may create confusion as to whether a slide assembly is physically required by the claim. It is proposed that the claim be amended to positively recite that the tool or the device comprises a slide assembly.
Further regarding claim 1, it is proposed that “a tubular barrel positioned within said cannulated hand grip” be amended to be “a tubular barrel configured to be positioned within said cannulated hand grip” so as to clearly express that the tubular barrel need not be positioned therein, but only be capable of such. Currently, the examiner interprets “a tubular barrel positioned within said cannulated hand grip” to mean that the tubular barrel must be positioned within the cannulated hand grip and not a tubular barrel, more broadly, being configured to be positioned within said cannulated hand grip.
Regarding claims 5-6, it may be unclear if the wire chuck is physically required as claim 5 includes it in a statement of intended use (i.e. “a wire lock bore sized to cooperate with an outer surface of a wire chuck”) and does not positively recite a wire chuck (e.g. no element comprises/includes a wire chuck). On the other hand, claim 6 may appear to suggest that a wire chuck is required via the recitation of structural details of the wire chuck (e.g. “said wire chuck includes a shoulder”).
Regarding claim 10, “a barrel” is recited in line 8 and “a tubular barrel” is recited in line 10. It appears that said barrel and tubular barrel are one and the same. To avoid confusion, it is proposed that the claims reflect this, i.e. that the first instance be “a tubular barrel” and subsequent instances refer back to this as “the tubular barrel” or “said tubular barrel.” In this way, it will be clear that there is one barrel / tubular barrel.
Further regarding claim 10, line 8 recites that the barrel is for housing a slide assembly, but the claim never positively requires a slide assembly, i.e. no structure comprises/includes a slide assembly. Later in the claim, e.g. lines 12+, structural details of the slide assembly are set forth (e.g. “said slide assembly having a slide lock” etc), which may suggest that a slide assembly is physically required by the claim. It is proposed that the claim be amended to positively recite that the tool/device comprises a slide assembly.
Regarding claim 10, line 10 it appears that “, a distal end of, a tubular barrel positioned within said cannulated hand grip” contains a typographical error. To accord with the language of claim 1 it is proposed that this be amended as follows: “,
Further regarding claim 10, it is proposed that “a tubular barrel positioned within said cannulated hand grip” be “a tubular barrel configured to be positioned within said cannulated hand grip” so as to further clarify that the tubular barrel need not be positioned therein, but only be capable of such.
IV. Upon resolution of the above matters, including positive recitation of the slide assembly, this application will be likely be in condition for allowance. The following is an examiner’s statement of reasons for allowance or the indication of allowable subject matter: The claims distinguish over closest prior art cited in the 892. For example, DiVicenzo et al. (US 2016/0030100) discloses a surgical guidance device 100 involving a cannulated hand grip (e.g. 120) and tubular barrel (e.g. 130), but fails to disclose at least a slide assembly and relationships thereof, as claimed. There would have been no obvious reason(s) to modify the DiVicenzo et al. device to satisfy at least these and/or each of applicant’s claimed limitations, and such modification(s) would have likely rendered the DiVicenzo et al. device incapable of continuing to operate/behave in the particular manner set forth within the DiVicenzo et al. reference, which would have been strongly indicative of an application of impermissible hindsight reasoning.
V. Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTIAN A. SEVILLA whose telephone number is (571)270-5621. The examiner can normally be reached on Monday through Thursday, 8:00 am to 5:00 pm. If attempts to reach the examiner by telephone are unsuccessful, please contact the examiner’s supervisor, KEVIN T. TRUONG, at 571-272-4705. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/CHRISTIAN A SEVILLA/Primary Examiner, Art Unit 3775