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 .
Election/Restrictions
Applicant’s election without traverse of Group I and Species A in the reply filed on May 13th, 2026 is acknowledged.
Claims 7-283 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected inventions and/or species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on May 13th, 2026.
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 1-5 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-158 of copending Application No. 18/759,974. Although the claims at issue are not identical, they are not patentably distinct from each other because the difference between the invention of claims 1-5 of the current application and the invention of claims 1-158 of the copending application lies in the fact that the invention of claims 1-158 of the copending application includes more elements and is thus more specific. Thus the invention of claims 1-158 of the copending application is in effect a "species" of the "generic" invention of claims 1-5 of the current 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 claims 1-5 are anticipated by claims 1-158, claims 1-5 are not patentably distinct from claims 1-158.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Application 18/759,974
(Example of Claims That Read on Current Application Claims)
Application 18/759,972
1, 18, 19, 20, 26, 41
1
34, 35
2
41
4, 5
64
3
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, 2, and 5 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Dressler (U.S. Publication 2022/0096248).
Dressler discloses a device (for example see Figure 3) comprising:
(claim 1) a working blade body (68)
(claim 1) wherein the working blade body is configured for operable connection to a source of movement, i.e. a motor
(claim 1) a static component (12)
(claim 1) wherein the static component is configured for operable connection to the source of movement
(claim 5) wherein the static component is substantially coupled to the motion of the working body blade to allow for transfer of physical sensor data (the static component is within the blade and is capable of transferring physical sensor data, such as the depth of the working blade body)
(claim 1) one or more sensors (26)
(claim 1) wherein the one or more sensors are attached to the static component (for example see Figure 2)
(claim 1) wherein the one or more sensors are configured to acquire data in its proximity and to communicate the acquired data to a computing device (for example see paragraphs 67-68)
(claim 2) wherein the one or more sensors are positioned on the static components for translating into the cutting plane and acquire and communicate data from there (the static component with the sensor is within the blade and therefore in the cutting plane during use)
Claims 1 and 3-6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by McGinley (U.S. Publication 2015/0141999).
McGinley discloses a device (for example see Figures 18-21C) comprising:
(claim 1) (claim 1) a working blade body (16)
(claim 1) wherein the working blade body is configured for operable connection to a source of movement, i.e. a motor
(claim 1) a static component (452)
(claim 1) wherein the static component is configured for operable connection to the source of movement
(claim 4) wherein the static component supports the working blade body during loading (for example see paragraphs 139-141; for example post 732 engages aperture 730 in the working blade body)
(claim 5) wherein the static component is substantially coupled to the motion of the working body blade to allow for transfer of physical sensor data (the static component surrounds and supports the working body blade and is capable of transferring physical sensor data, such as depth of the working body blade)
(claim 6) wherein the static component provides for gathering non-contact based sensor data (the static components do not contact the bone and are therefore collecting non-contact sensor data)
(claim 1) one or more sensors (410, 412, etc.)
(claim 1) wherein the one or more sensors are attached to the static component (for example see Figure 21C)
(claim 1) wherein the one or more sensors are configured to acquire data in its proximity and to communicate the acquired data to a computing device (for example see paragraph 136)
(claim 3) wherein the one or more sensors attached to the static components, i.e. sit on, are adjacent to a cutting plane for acquiring and communicating data from the cutting plane (elements 412 and 414 are adjacent to the cutting plane and acquire and communicate data from the cutting plane, i.e. cutting depth)
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See PTO-892 for cited references the examiner felt were relevant to the application.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Nicholas Woodall whose telephone number is (571) 272-5204. The examiner can normally be reached on Monday-Friday 8am to 5:30pm.
If attempts to reach the examiner by telephone are unsuccessful, please contact the examiner’s supervisor, Kevin Truong, at (571. 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.
/NICHOLAS W WOODALL/Primary Examiner, Art Unit 3775
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