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.
Claim 19 is 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.
Claim 19 recites the limitation "the first projection" in line 2. There is insufficient antecedent basis for this limitation in the claim. Examiner notes amending claim 19 to depend from claim 18 instead of claim 14 would be effective to overcome this 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 1-6, 8, 9, and 13-17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Weitzner (9,044,240).
Regarding claim 1, Weitzner discloses a medical device (see figure 1), comprising: a shaft (132) having a proximal end region (not shown), a distal end region extending to a distal end of the shaft, and an outer surface extending between the proximal end region and the distal end region; a hemostasis clip (104) coupled to an exterior of the shaft (Examiner considers the “exterior” here to be the distal surface of the shaft and cap 108) along the distal end region, wherein the hemostasis clip is configured to shift between an open position and a closed position; a tension member (102) coupled to the hemostasis clip; wherein actuation of the tension member shifts the hemostasis clip between the open position and the closed position (see at least column 2, lines 43-64 and especially lines 61-64).
Regarding claim 2, the hemostasis clip includes an upper jaw pivotable to a lower jaw (both jaws are labeled 106 in figure 1).
Regarding claim 3, the tension member is coupled to a portion of the upper jaw (see figure 1).
Regarding claim 4, the upper jaw includes an aperture (126), and wherein the tension member extends through the aperture (see figure 1).
Regarding claim 5, further comprising a shear member (122), and wherein the shear member is coupled to the upper jaw, the tension member, or both the upper jaw and the tension member (see figure 1).
Regarding claim 6, the shear member is coupled to the tension member at a welded connection (120), and wherein moving the shear member relative to the tension member severs the welded connection to separate the tension member from the shear member.
Regarding claim 8, the lower jaw is held in fixed position relative to the upper jaw as the upper jaw is pivoted relative to the lower jaw (because the tension member is connected to the upper jaw).
Regarding claim 9, further comprising a cap (108) disposed along the distal end region of the shaft (see figure 1), and wherein in the hemostasis clip is releasably attached to an outer surface (distal end) of the cap.
Regarding claim 13, Weitzner discloses an endoscope, comprising: a handle (not shown); a shaft (132) coupled to the handle, the shaft having a proximal end region (not shown), and a distal end region; a cap (108) disposed along the distal end region of the shaft; a hemostasis clip (104) attached to an outer surface of the cap (Examiner considers the “outer surface” here to be the distal surface of the cap 108) such that a portion of the shaft extends distally beyond the hemostasis clip (Examiner notes here the distal end of the shaft extends beyond the proximal end of the clip), wherein the hemostasis clip is configured to shift between an open position and a closed position; a tension member (102) coupled to the hemostasis clip; wherein actuation of the tension member shifts the hemostasis clip between the open position and the closed position (see at least column 2, lines 43-64 and especially lines 61-64).
Regarding claim 14, the hemostasis clip includes an upper jaw pivotable to a lower jaw (both jaws are labeled 106 in figure 1), and wherein the tension member is coupled to a portion of the upper jaw (see figure 1).
Regarding claim 15, the upper jaw includes an aperture (126), and wherein the tension member extends through the aperture (see figure 1).
Regarding claim 16, further comprising a shear member (122), and wherein the shear member is coupled to the upper jaw, the tension member, or both the upper jaw and the tension member (see figure 1).
Regarding claim 17, the lower jaw is held in fixed position relative to the upper jaw as the upper jaw is rotated relative to the lower jaw (because the tension member is connected to the upper jaw).
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,070,227. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims are more broad than, and thus anticipated by, the claims of the patent. Instant claims 1-20 map directly to patent claims 1-20, respectively.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. See the attached PTO-892.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RYAN J SEVERSON whose telephone number is (571)272-3142. The examiner can normally be reached Monday-Friday 6:00-2:00 central.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jackie Ho can be reached at (571) 272-4696. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Ryan J. Severson/Primary Examiner, Art Unit 3771