DETAILED ACTION
This action is in response to applicant's amendments filed 03/16/26.
The examiner acknowledges the amendments to the claims.
Claims 1-16 are pending in this application.
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 .
Response to Arguments
Applicant's arguments filed 03/16/26 have been fully considered but they are not persuasive. Applicant generally argues that Burbank is silent with regards to teaching first and second stabilizing members positioned on opposite sides of a medial plane of a clip applier as claimed. As seen in annotated Figure 9 below, Burbank teaches first and second stabilizing members 120 positioned on opposite sides of a medial plane of a clip applier, and therefore the rejection is maintained.
Applicant’s arguments with respect to claim(s) 2-16 have been considered but are moot in view of the new grounds of rejection.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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, 10, 15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Burbank, III et al., hereinafter “Burbank” (U.S. Patent No. 5,431,668).
Regarding claim 1, Burbank discloses a clip applier (Figure 1) configured to apply a surgical clip, the clip applier comprising:
a first jaw member (one of pair of jaws 12; Figures 9-10) comprising a first inner surface (facing the other jaw 12) and a first stabilizing member (see protruding proximal end 120 of jaw 12; Figure 9) extending from the first inner surface, the first jaw member being configured to engage a distal portion of a first leg member of the surgical clip (such as distal end 118 of clip 14); and
a second jaw member (the other jaw 12) comprising a second inner surface (facing the first jaw member 12) and a second stabilizing member (see protruding proximal end 120 of jaw 12; Figure 9) extending from the second inner surface, the second jaw member being configured to engage a distal portion of a second leg member of the surgical clip (such as distal end 118 of clip 14),
wherein the first stabilizing member and the second stabilizing member (both 120) are positioned on opposite sides of a medial plane of the clip applier (see annotated Figure 10 below) such that the first and second stabilizing members are configured to be positioned on opposite lateral sides of a proximal portion of the surgical clip to reduce lateral movement of the surgical clip (see annotated Figure 10 below showing the first and second stabilizing members 120 laterally abutting the proximal portion of the surgical clip 14 to prevent lateral movement; col. 9, lines 10-12 states “the jaws [12] are urged together…so that the crown [proximal portion] of the clip [14] abuts the proximal ends 120 of the jaws 12”).
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Regarding claim 2, Burbank discloses wherein the first stabilizing member is integrally fixed to the first jaw member and the second stabilizing member is integrally fixed to the second jaw member (first and second stabilizing members 120 are integral or joined together with respective jaw member 12).
Regarding claim 10, Burbank discloses the first and second stabilizing members 120 do not proximally abut the proximal portion of the surgical clip when the first and second jaw members are in an open configuration (Figure 9).
Regarding claim 15, Burbank discloses the first stabilizing member 120 includes a first inner portion that (radially) overlaps the proximal portion of the surgical clip when the first and second jaw members are in an open configuration (Figure 9), the second stabilizing member includes a second inner portion that overlaps the proximal portion of the surgical clip when the first and second jaw members are in the open configuration (Id.), and the first and second stabilizing members are configured to slide over the proximal portion of the surgical clip as the first and second jaw members close (as in Figure 10).
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.
Claims 7-9 are rejected under 35 U.S.C. 103 as being unpatentable over Burbank (U.S. Patent No. 5,431,668) in view of Ortiz et al., hereinafter “Ortiz” (U.S. Pat. No. 5,163,945), cited in IDS filed 08/09/2024.
Regarding claims 7-9, Burbank discloses the claimed invention, as discussed above, except for the first jaw member includes a first distal portion having at least one first recess, the at least one first recess configured to receive a first boss member on a first portion of a first leg member of the surgical clip; and the second jaw member includes a second distal portion having at least one second recess, the at least one second recess configured to receive a second boss member on a second portion of a second leg member of the surgical clip, wherein the at least one first recess and the at least one second recess comprise semi-circular grooves, wherein the at least one first recess extends transversely through the first jaw member, and the at least one second recess extends transversely through the second jaw member.
Ortiz teaches a first jaw member 24 comprises a first distal portion including at least one first recess 28 (Figures 7-8, 10-11), the at least one first recess configured to receive a first boss member 16 on a first portion of a first leg member of a surgical clip, and a second jaw member (opposite 24) comprises a second distal portion including at least one second recess (opposite 28), the at least one second recess configured to receive a second boss member (other 16) on a second portion of a second leg member of the surgical clip, wherein the at least one first recess and the at least one second recess comprise semi-circular grooves (see semi-circular cross-sectional grooves 28 in Figures 10-11), wherein the at least one first recess 28 extends transversely through the first jaw member (Figure 7), and the at least one second recess extends transversely through the second jaw member (Id.).
It would have been obvious to one of ordinary skill before the effective filing date to modify Burbank with at least one first and second recesses as claimed, as taught by Ortiz, in order to enhance secure engagement between the clip and the first and second jaws.
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, 5-7, 10, 12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 18-19 of U.S. Patent No. 12,064,115 in view of Burbank (U.S. Patent No. 5,431,668). Although the claims at issue are not identical, they are not patentably distinct from each other because it is clear that patent claims 18-19 encompasses the limitations of Claims 1, 5-7, 10, 12 except for the first stabilizing member and the second stabilizing member are positioned on opposite sides of a medial plane of the clip applier. Burbank teaches first and second stabilizing members 120 (see annotated Figure 9 above) positioned on opposite sides of a medial plane of the clip applier. It would have been obvious to one of ordinary skill before the effective filing date to have the first and second stabilizing members on opposite sides of a medial plane, as taught by Burbank, in order to enhance lateral stabilization of the clip and prevent inadvertent movement. Burbank further teaches the first and second stabilizing members have spaced apart proximal and distal ends, and define a space therebetween configured to receive a proximal portion of the surgical clip (Figure 9).
Claims 1-7, 10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 5-6, 10-13 of U.S. Patent No. 12,023,041 in view of Burbank (U.S. Patent No. 5,431,668). Although the claims at issue are not identical, they are not patentably distinct from each other because it is clear that patent claims 1, 5-6, 10-13 encompass the limitations of Claims 1-7, 10, except for the first stabilizing member and the second stabilizing member are positioned on opposite sides of a medial plane of the clip applier. Burbank teaches first and second stabilizing members 120 (see annotated Figure 9 above) positioned on opposite sides of a medial plane of the clip applier. It would have been obvious to one of ordinary skill before the effective filing date to have the first and second stabilizing members on opposite sides of a medial plane, as taught by Burbank, in order to enhance lateral stabilization of the clip and prevent inadvertent movement. Burbank further teaches the first and second stabilizing members have spaced apart proximal and distal ends, and define a space therebetween configured to receive a proximal portion of the surgical clip (Figure 9).
Claims 1, 12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 9-10 of U.S. Patent No. 11,266,408 in view of Burbank (U.S. Patent No. 5,431,668). Although the claims at issue are not identical, they are not patentably distinct from each other because it is clear that patent claims 9-10 encompass the limitations of Claims 1, 12 except for the first stabilizing member and the second stabilizing member are positioned on opposite sides of a medial plane of the clip applier. Burbank teaches first and second stabilizing members 120 (see annotated Figure 9 above) positioned on opposite sides of a medial plane of the clip applier. It would have been obvious to one of ordinary skill before the effective filing date to have the first and second stabilizing members on opposite sides of a medial plane, as taught by Burbank, in order to enhance lateral stabilization of the clip and prevent inadvertent movement.
Claims 1-16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8, 10, 16, 18-19 of copending Application No. 18/808,553 (claims filed 04/14/26) in view of Burbank (U.S. Patent No. 5,431,668).
Although the claims at issue are not identical, they are not patentably distinct from each other because it is clear that patent claim(s) encompass the limitations of application claim(s), except for the first stabilizing member and the second stabilizing member are positioned on opposite sides of a medial plane of the clip applier. Burbank teaches first and second stabilizing members 120 (see annotated Figure 9 above) positioned on opposite sides of a medial plane of the clip applier. It would have been obvious to one of ordinary skill before the effective filing date to have the first and second stabilizing members on opposite sides of a medial plane, as taught by Burbank, in order to enhance lateral stabilization of the clip and prevent inadvertent movement.
This is a provisional nonstatutory double patenting rejection.
Allowable Subject Matter
Claims 3-6, 11-14, 16 would be allowable if a terminal disclaimer was filed to overcome the double patenting rejections set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
None of the prior art of record, alone or in combination, teaches or renders obvious a clip applier including, inter alia, a first stabilizing member extending from a first inner surface of a first jaw member, a second stabilizing member extending from a second inner surface of a second jaw member, wherein the first and second stabilizing members are positioned on opposite sides of a medial plane of the clip applier and opposite lateral sides of a proximal portion of a surgical clip to reduce lateral movement of the surgical clip, wherein the first stabilizing member comprises a first wall having a first flat inner surface, and the second stabilizing member comprises a second wall having a second flat inner surface, as in claim 3.
None of the prior art of record, alone or in combination, teaches or renders obvious a clip applier including, inter alia, a first stabilizing member extending from a first inner surface of a first jaw member, a second stabilizing member extending from a second inner surface of a second jaw member, wherein the first and second stabilizing members are positioned on opposite sides of a medial plane of the clip applier and opposite lateral sides of a proximal portion of a surgical clip to reduce lateral movement of the surgical clip, wherein the first and second stabilizing members do not proximally abut the proximal portion of the surgical clip when the first and second jaw members are in a closed configuration, as in claims 11 and 16.
None of the prior art of record, alone or in combination, teaches or renders obvious a clip applier including, inter alia, a first stabilizing member extending from a first inner surface of a first jaw member, a second stabilizing member extending from a second inner surface of a second jaw member, wherein the first and second stabilizing members are positioned on opposite sides of a medial plane of the clip applier and opposite lateral sides of a proximal portion of a surgical clip to reduce lateral movement of the surgical clip, wherein the first inner surface of the first jaw member includes a first longitudinal channel configured to receive a portion of the second stabilizing member when the first and second jaw members are in a closed configuration; and wherein the second inner surface of the second jaw member includes a second longitudinal channel configured to receive a portion of the first stabilizing member when the first and second jaw members are in the closed configuration, as in claim 12.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DIANE D YABUT whose telephone number is (571)272-6831. The examiner can normally be reached M-F 9am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Darwin Erezo can be reached at 571-272-4695. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DIANE D YABUT/Primary Examiner, Art Unit 3771
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