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 .
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 9-10 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 9, the claim recites the limitations of “the notch of the cutting element” therein. There is insufficient antecedent basis for each of “the notch” and “the cutting element” limitations in the claim. The Examiner notes that it appears that dependency from claim 9 would be on claim 7 and not on claim 8. The Examiner respectfully requests Applicant amend the claim to correct the antecedent basis issues. Claim 10 is rejected due to its dependency on claim 9. Appropriate correction is required.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-6, 8 and 11-16 are rejected under 35 U.S.C. 103 as being unpatentable over Garrison et al. (US Pat. Pub. 2013/01990753 A1).
Regarding claim 1, Garrison provides for a surgical instrument (see figures 2-3B) comprising an elongated shaft defining a longitudinal axis (shaft 12), and first and second jaws moveable relative to each other between open and closed positions (310 and 320), the instrument has a first slot having a distal portion and a proximal portion (cam slot 332a), wherein the proximal portion is oriented at a first angle transverse to the longitudinal axis when the jaws are in the closed position and the distal portion is oriented at a second angle transverse to the longitudinal axis when the jaws are in a closed position (see figure 3a with the distal portion beign the portion towards end 334 and the proximal portion being the portion away from the distal portion defined towards end 334; the respective portions of the slot 332a having a different angle relative to the longitudinal axis). Garrison further provides that the first angle is different from the second angle (via the arrangement of the two portions of the slot 332a having a different angle of longitudinal extension as shown in figures 3a and 3b, and a pin positioned within the first slot for translation from the proximal portion to the distal portion (313), wherein the distal portion of the slot engages the pin and inhibits the pin from translating in the proximal direction (see [0048] describing the detent 313 to be latched at the distal end of the slot 332a and inhibits the proximal translation until a suitable unlatching force is applied as in [0049]) .
While Garrison provides for the above claimed features with respect to the embodiment displayed in figures 3A and 3B, Garrison fails to specifically set forth in that embodiment that the first slot is specifically located in the first jaw. Garrison, however, provides for an alternative arrangement (see figures 6A/B and [0061]) where the end effector 510 is contemplated to be substantially similar as to the embodiment in figures 3A/B at 300, and where the first slot is a first jaw slot (one of 573/575) formed in the first jaw and having a distal portion and a proximal portion. Garrison further provides, with respect to figures 6A/B, for a pin 556) to be positioned within the first slot and to transition from a proximal portion to a distal portion so as to cause the open/closing of the jaws 572/574 (see [0063]).
Therefore, it is the Examiner’s position that it would have been obvious to one of ordinary skill in the art at the time of filing to have utilized the alternative connection arrangement as in figures 6A/B with the jaw slot being placed on the first jaw member, and then for the pin to be placed at the distal end of an actuation member to provide for an alternative manner of actuating the jaws of the end effector arrangement at 300 as in figures 3A/B. Again, Garrison readily contemplates in [0061] for the end effector at 510 to be substantially identical to the end effector arrangement as in figures 3A/B at 300, and with the Examiner recognizing that either arrangement of the pin and jaw slot being disclosed in Garrison as being functionally equivalent to provide for the requisite opening/closing of the jaws via a camming action between the pin and the jaw slot(s).
Regarding claims 2 and 3, in view of the combination in the rejection of claim 1 above, the Examiner is of the position that the resultant actuation wherein the jaw slot in located on the first jaw as shown in figures 6A/B would result in the first angle for the proximal portion to be greater than the second angle of the distal portion in the closed position. In making the combined arrangement, the distal portion as shown in figures 3A/B providing for the latching is at an angle that has a minimal or zero angle relative to the longitudinal axis of the shaft with the proximal portion having a greater angle. The Examiner finds that it would have been obvious to one of ordinary skill to utilize a similar angular relationship in the combination as set forth in the rejection of claim 1 to provide for the closing of the jaws and then the subsequent latching of the jaws in the closed position with the pin at the distal portion. The Examiner further finds that the selection of an angle of 5-30 degrees would have been an obvious matter to one of ordinary skill in the art since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233. In the instant case, the selection of the first angle that determines the rate at which the jaws close as the pin transverses therealong would represent a known design parameter for one of ordinary skill to select a desire range of values to providing control over the closing of the jaws relative to one another.
Regarding claim 4, in view of the combination in the rejection of claim 1 above, the Examiner is of the position that it would have been obvious to provide the second jaw with a second jaw slot having a distal portion and a proximal portion, wherein the proximal portion is oriented at a first angle transverse to the longitudinal axis when the jaws are in the closed position and the distal portion is oriented at a second angle transverse to the longitudinal axis when the jaws are in a closed position, wherein the first angle is different from the second angle (with such being a duplicate of the features for the first jaw and first jaw slot as in the rejection of claim 1 above; the Examiner notes figures 6A/B of Garrison provide for the second jaw to have the similar jaw slot therein).
Regarding claim 5, Garrison, with respect to the embodiment in figure 6 and the first and second jaw slots at 573/575 extend in the manner defined respectively above/below the longitudinal axis at times during the opening/closing of the jaws).
Regarding claim 8, Garrison specifically provides that the pin engages the distal portion of the jaw slot in a friction fit to secure the pin into a locked position relative to the jaw slot (see [0048], [0049] and [0051] discussing the frictional latching of the pin relative to the distal portion of the slot; such would be equally applicable to the proposed reversal of parts set forth in the rejection of claim 1 in light of the alternative embodiment in figures 6A/B).
Regarding claim 11, Garrison provides a surgical instrument (see figures 6A-B) comprising an elongated shaft defining a longitudinal axis (shaft 512), and first and second jaws moveable relative to each other between open and closed positions (the entirety of 572, the distal portion of 574 distal to 570), a wrist assembly coupling the shaft to the first and second jaws, wherein the wrist assembly comprises a wrist slot (the proximal portion of 574 having a slot at 573 therein), the first jaw including a jaw slot having a distal portion and a proximal portion (the respective 573 in 572), and a pin positioned within the jaw slot for translation from the proximal portion to the distal portion (556), wherein the pin is positioned within the wrist slot such that the wrist slot engages the pin when the pin is in the distal portion of the jaw slot (via the pin 556 being in both slots 573 as the pin is translating distally).
While Garrison provides for the above claimed features with respect to the embodiment displayed in figures 6A/B, Garrison fails to specifically set forth in that embodiment that the wrist slot functions to inhibit the pin from translating in the proximal direction as claimed. Garrison, however, provides for an alternative arrangement (see figures 3A/B and [0061]) where the end effector 300 is contemplated to be substantially similar as to the embodiment in figures 6A/B at 510, and where the pivot-inducing slots in portions of the device (one of 332a/b) have a distal portion and a proximal portion with a pin 313 to be positioned within respective slots such that when the pin engages the distal portion of the slot such functions to inhibit the pin from translating in the proximal direction (see [0048] describing the detent 313 to be latched at the distal end of the slot 332a and inhibits the proximal translation until a suitable unlatching force is applied as in [0049]).
Therefore, it is the Examiner’s position that it would have been obvious to one of ordinary skill in the art at the time of filing to have utilized the alternative connection arrangement as in figures 3A/B with the each of the jaw slot and the wrist slot in the embodiment in figures 6A/B to be shaped in a similar manner as set forth in figures 3A/B so as to provide for an alternative manner of actuating the jaws of the end effector arrangement at 510. Again, Garrison readily contemplates in [0061] for the end effector at 510 to be substantially identical to the end effector arrangement as in figures 3A/B at 300, and with the Examiner recognizing that either arrangement of the pin, wrist slot and jaw slot being disclosed in Garrison as being functionally equivalent to provide for the requisite opening/closing of the jaws via a camming action between the pin, the wrist slot and the jaw slot.
Regarding claim 12, in view of the combination in the rejection of claim 11 above, the the wrist slot has a distal portion and a proximal portion (via the distal and proximal portion of the slot 573). The combination with the shape of the slot in figures 3A/B of Garrison then provides that the distal portion extends at a transverse angle to the longitudinal axis (see figures 3A/B with the distal portion of either of 322a/b being transverse to the longitudinal axis of the shaft 12).
Regarding claim 13, in view of the combination in the rejection of claim 11 above and further in view of the range of angles shown in figures 6A/B of the slots 573 as such move from the open to the closed position of the jaws, the Examiner finds that the proximal portion of the wrist slot would be substantially parallel to the longitudinal axis at a point through the rotation of the jaws.
Regarding claim 14, in view of the combination in the rejection of claim 11 above, the Examiner is of the position that the resultant combination would result in the wrist slot having a first angle for the proximal portion, and a second, greater angle for the distal portion. In making the combined arrangement, the distal portion as shown in figures 3A/B providing for the latching is at an angle that has a minimal or zero angle relative to the longitudinal axis of the shaft with the proximal portion having a greater angle. The Examiner finds that it would have been obvious to one of ordinary skill to utilize a similar angular relationship in the combination as set forth in the rejection of claim 11 to provide for the closing of the jaws and then the subsequent latching of the jaws in the closed position with the pin at the distal portion. The Examiner further finds that the selection of an angle of 5-30 degrees would have been an obvious matter to one of ordinary skill in the art since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233. In the instant case, the selection of the first angle that determines the rate at which the jaws close as the pin transverses therealong would represent a known design parameter for one of ordinary skill to select a desire range of values to providing control over the closing of the jaws relative to one another.
Regarding claim 15, in view of the combination in the rejection of claim 11 above, Garrison provides that the jaw slot rotates relative to the longitudinal axis as the first jaw moves from the open position to the closed position (via 573 of the first jaw shown as rotating during movement of the jaws from the open to the closed position).
Regarding claim 16, in view of combination in the rejection of claim 11 above, Garrison provides that the wrist slot remains substantially fixed relative to the longitudinal axis as the first jaw moves from the open position to the closed position (the wrist slot remains longitudinally fixed relative to the longitudinal axis via such being longitudinally fixed through the connection through the pivot pin 570).
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 11, 12, 14, 17 and 18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 13 of U.S. Patent No. 12,029,473 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding instant independent claim 11, the Examiner is of the position that all the limitations set forth in instant claim 11 can be found in the combination of limitations set forth in independent claim 1 and dependent claim 13. The difference between instant claim 11 and the noted combination of limitations terminating with patented claim 13 includes differences in the claim language that do not result in a patentable difference between the instant claim and the patented claim(s). Further, the totality of limitations set forth in dependent claim 13 of the patent results in the the patent claim including additional elements from those required in independent claim 11 and, as such, is much more specific. Thus the invention of claim 13 of the patent is in effect a “species” of the “generic” invention of instant independent claim 11. It has been held that the generic invention is “anticipated” by the “species”. See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993).
With respect to dependent claim 12, see patented claim 11 (which is in the dependency claim of claims 1, 9, 11 and 13 of the patented claim).
With respect to dependent claim 14, see patented claim 13.
With respect to dependent claims 17 and 18, see patented claim 1.
Allowable Subject Matter
Claims 6, 7, 19 and 20 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claims 9 and 10 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: During the search of the prior art, the Examiner identified Garrison et al. (US Pat. Pub. 2013/0190753 A1) reference as the closest prior art to the instant claims. Garrison, however, fails to provide for the features set forth in each of claims 6-7, 9-10 and 19-20. In particular, Garrison fails to contemplate any manner of cutting element used in conjunction with its shaft and end effector arrangement and the Examiner has failed to identify any other prior art reference that would cure this deficiency in the Garrison reference.
For the sake of completeness, the Examiner notes that the following reference(s) is/are considered as particularly pertinent to various features of the inventions set forth in the pending claims:
Frank (EP 2522280 A1) provides for a surgical device with a plurality of jaws, a pin, and a jaw slot (at 48) wherein the jaw slot has a plurality of detents that frictionally hold the pin in a plurality of positions (See figure 2 with 64/64’/64’’).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RONALD HUPCZEY, JR whose telephone number is (571)270-5534. The examiner can normally be reached Monday - Friday; 8 am - 4 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Stoklosa can be reached at (571) 272-1213. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Ronald Hupczey, Jr./ Primary Examiner, Art Unit 3794
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