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 .
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the “locking fingers” must be shown or the feature(s) canceled from the claim(s). The figures seem to disclose and reference the “locking arms 152” but not the “locking fingers”. Paragraphs 12-17 does reference “locking fingers” in the Summary Section of the specification but not the Detailed Description. Paragraphs 38-41 of the “Detailed Description” references the “locking arms 152”, as seen in the figures, but not the locking fingers. No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
The disclosure is objected to because of the following informalities: Paragraph 12-17 uses the term “locking fingers” as a part of the locking mechanism that will engage a corresponding locking feature of the capsule while paragraphs 38-41 uses the term “locking arms” as a part of the locking mechanism that engages a corresponding locking feature of the capsule. The specification should be consisting with the terms locking finger / locking arms and/or identify the relationship between the locking arms and locking fingers.
Appropriate correction is required.
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 36-55 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of U.S. Patent No. 11,484,314 in view of U.S. Patent 2005/0080440 to Durgin.
As to the application’s claim 36, the reference the reference patent claims a device for treating tissue (claim 1), comprising: a clip (claim 1) including a capsule (claim 1) extending longitudinally from a proximal end to a distal end and including a channel (claim 1) extending therethrough, the clip further including single clip member (claim 1) forming first and second clip arms (claim 1), proximal ends of the first and second clips arms being joined to one another (claim 1, the clip is a single piece with the proximal portions meeting at the bend, so the proximal ends of the arms are joined at the bend) and received within the channel so that the first and second clip arms are movable relative to one another between an open configuration and a closed configuration (claim 8); a yoke (claim 1) that is releasably coupled to the clip member so that movement of the yoke and the clip member moves the first and second clip arms between the open and closed configurations (claim 1); and a locking mechanism (claim 1) releasably engaged with the yoke (claim 1) and including a pair of locking fingers (claim 1, “locking arms”) configured to engage a corresponding locking feature of the capsule to lock the first and second clip arms in the closed configuration when the yoke is separated from the clip member (claim 1) but is silent about distal ends of the first and second clip arms extending out of the channel and a control wire connected to the yoke which moves with the yoke and is separable from the clip, where the control wire and clip member configured to separate from one another to release the clip from a proximal portion of the device.
Durgin teaches a similar device (clip assembly, abstract) having distal ends of the first and second clip arms (208) extending out of a channel of a capsule (200, figure 12) and a control wire (118) connected to a yoke (204) which moves with the yoke and separates from the yoke to help move the first and second clip arms between the open and closed configurations to help move the first and second clip arms between the open and closed configurations, where the control wire and clip member are configured to separate from one another to release the clip from a proximal portion of the device (paragraph 56, 65, 67, figure 12, 24) for the purpose of being able to transmit a force to the clip member to move the clip member into the open configuration where the distal ends can engage tissue. It would have been obvious to one of ordinary skill in the art before the effective filing date for the reference patent have distal ends of the first and clip arms extending out of the channel and the device to include a control wire connected to the yoke movable and separatable with the yoke and clip member in order to transmit a force to the clip member to move the clip member into the open configuration where the distal ends can engage tissue.
As to the instant application’s claim 37, see reference patent claim 1. If the one-piece clipping element is one piece, then any structure of the locking mechanism will make the locking mechanism separate from the one piece.
As to the instant application’s claim 38, see teaching reference (figure 24).
As to the instant application’s claim 39, see reference patent claim 3.
As to the instant application’s claim 40, see reference patent claim 2
As to the instant application’s claim 41, see reference patent claim 3. Teaching reference Durgin teaches the control wire is connected to a clip member (the single clip member of the reference patent) via the yoke (figure 12).
As to the instant application’s claim 42, see reference patent claim 4.
As to the instant application’s claim 43, see reference patent claim 5.
As to the instant application’s claim 44, see reference patent claim 6.
As to the instant application’s claim 45, see reference patent claim 7.
As to the instant application’s claim 46, see reference patent claim 8.
As to the instant application’s claim 47, the reference patent claims a device for treating tissue (claim 9), comprising: a clip (claim 9) including a capsule (claim 9) extending longitudinally from a proximal end to a distal end and including a channel (claim 9) extending therethrough, the clip further including a single clip member (claim 9) forming first and second clip arms (claim 9), proximal ends of the first and second clip arms being joined to one another and received within the channel (claim 9, the clip is a single piece with the proximal portions meeting at the bend, so the proximal ends of the arms are joined at the bend) so that the first and second clip arms are movable relative to one another between an open configuration and a closed configuration (claim 9); a yoke (claim 9) that is releasably coupled to the clip member so that movement of the yoke and the clip member moves the first and second clip arms between the open and closed configurations (claim 9), a locking mechanism (claim 9) releasable engaged with the yoke (claim 9) and including a pair of locking fingers (“locking arms”, claim 9) configured to engage a corresponding locking feature of the capsule to lock the first and second clip arms in the closed configuration when the yoke is separated from the clip member (claim 9), and a proximal portion (claim 9) releasable coupled to the proximal end of the capsule so that, upon separation of the yoke from a tension member, the clip is released from the proximal portion and deployed in a body over a target tissue (claim 9) but is silent about the distal ends of the first and second clip arms extending out of the channel and a control wire connected to the yoke which moves with the yoke and is separable from the clip member.
Durgin teaches a similar device (clip assembly, abstract) having distal ends of the first and second clip arms (208) extending out of a channel of a capsule (200, figure 12) and a control wire (118) connected to a yoke (204) which moves with the yoke and separates from the yoke and clip member to help move the first and second clip arms between the open and closed configurations to help move the first and second clip arms between the open and closed configurations for the purpose of being able to transmit a force to the clip member to move the clip member into the open configuration where the distal ends can engage tissue (paragraph 56, 65, 67, figure 12, 24). It would have been obvious to one of ordinary skill in the art before the effective filing date for the reference patent have distal ends of the first and clip arms extending out of the channel and the device to include a control wire connected to the yoke movable and separatable with the yoke and clip member in order to transmit a force to the clip member to move the clip member into the open configuration where the distal ends can engage tissue
As to the instant application’s claim 48, see reference patent claim 9. If the one-piece clipping element is one piece, then any structure of the locking mechanism will make the locking mechanism separate from the one piece. Teaching reference Durgin teaches the control wire is separate from the clip member
As to the instant application’s claim 49, see reference patent claim 11.
As to the instant application’s claim 50, see reference patent claim 10
As to the instant application’s claim 51, see reference patent claim 11. Teaching reference Durgin teaches the control wire is connected to a clip member (the single clip member of the reference patent) via the yoke (figure 12).
As to the instant application’s claim 52, see reference patent claim 12.
As to the instant application’s claim 53, see reference patent claim 13.
As to the instant application’s claim 54, see reference patent claim 14.
As to the instant application’s claim 55, see teaching reference (paragraph 67, 73, figure 12, 24).
Claims 36-55 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,076,015 in view of U.S. Patent 2005/0080440 to Durgin.
As to the application’s claim 36, the reference the reference patent claims a device for treating tissue (claim 1), comprising: a clip (claim 1) including a capsule (claim 1) extending longitudinally from a proximal end to a distal end and including a channel (claim 1) extending therethrough, the clip further including single clip member (claim 1) forming first and second clip arms (claim 1), proximal ends of the first and second clips arms being joined to one another (claim 1, the clip is one piece so the proximal ends of the arms are joined) and received within the channel so that the first and second clip arms are movable relative to one another between an open configuration and a closed configuration (claim 8); a yoke (claim 1) that is releasably coupled to the clip member so that movement of the yoke and the clip member moves the first and second clip arms between the open and closed configurations (claim 1); and a locking mechanism (claim 1) releasably engaged with the yoke (claim 1) and including a pair of locking fingers (claim 1, “locking arms”) configured to engage a corresponding locking feature of the capsule to lock the first and second clip arms in the closed configuration when the yoke is separated from the clip member (claim 1) but is silent about the distal ends of the first and second clip arms extending out of the channel and a control wire connected to the yoke which moves with the yoke and is separable from the clip, where the control wire and clip member configured to separate from one another to release the clip from a proximal portion of the device.
Durgin teaches a similar device (clip assembly, abstract) having distal ends of the first and second clip arms (208) extending out of a channel of a capsule (200, figure 12) and a control wire (118) connected to a yoke (204) which moves with the yoke and separates from the yoke to help move the first and second clip arms between the open and closed configurations to help move the first and second clip arms between the open and closed configurations, where the control wire and clip member are configured to separate from one another to release the clip from a proximal portion of the device (paragraph 56, 65, 67, figure 12, 24) for the purpose of being able to transmit a force to the clip member to move the clip member into the open configuration where the distal ends can engage tissue. It would have been obvious to one of ordinary skill in the art before the effective filing date for the reference patent have distal ends of the first and clip arms extending out of the channel and the device to include a control wire connected to the yoke movable and separatable with the yoke and clip member in order to transmit a force to the clip member to move the clip member into the open configuration where the distal ends can engage tissue.
As to the instant application’s claim 37, see reference patent claim 2.
As to the instant application’s claim 38, see teaching reference (figure 24).
As to the instant application’s claim 39, see reference patent claim 4.
As to the instant application’s claim 40, see reference patent claim 5
As to the instant application’s claim 41, see reference patent claim 5. Teaching reference Durgin teaches the control wire is connected to a clip member (the single clip member of the reference patent) via the yoke (figure 12).
As to the instant application’s claim 42, see reference patent claim 7.
As to the instant application’s claim 43, see reference patent claim 8.
As to the instant application’s claim 44, see reference patent claim 9.
As to the instant application’s claim 45, see reference patent claim 10.
As to the instant application’s claim 46, see reference patent claim 11.
As to the instant application’s claim 47, the reference patent claims a device for treating tissue (claim 12), comprising: a clip (claim 12) including a capsule (claim 12) extending longitudinally from a proximal end to a distal end and including a channel (claim 12) extending therethrough, the clip further including a single clip member (claim 12) forming first and second clip arms (claim 12), proximal ends of the first and second clip arms being joined to one another and received within the channel (claim 12, the clip is one piece so the proximal ends of the arms are joined) so that the first and second clip arms are movable relative to one another between an open configuration and a closed configuration (claim 12); a yoke (claim 12) that is releasably coupled to the clip member so that movement of the yoke and the clip member moves the first and second clip arms between the open and closed configurations (claim 12), a locking mechanism (claim 12) releasable engaged with the yoke (claim 12) and including a pair of locking fingers (“locking arms”, claim 12) configured to engage a corresponding locking feature of the capsule to lock the first and second clip arms in the closed configuration when the yoke is separated from the clip member (claim 12), and a proximal portion (claim 12) releasable coupled to the proximal end of the capsule so that, upon separation of the yoke from a tension member, the clip is released from the proximal portion and deployed in a body over a target tissue (claim 129) but is silent about the distal ends of the first and second clip arms extending out of the channel and a control wire connected to the yoke which moves with the yoke and is separable from the clip member.
Durgin teaches a similar device (clip assembly, abstract) having distal ends of the first and second clip arms (208) extending out of a channel of a capsule (200, figure 12) and a control wire (118) connected to a yoke (204) which moves with the yoke and separates from the yoke and clip member to help move the first and second clip arms between the open and closed configurations to help move the first and second clip arms between the open and closed configurations for the purpose of being able to transmit a force to the clip member to move the clip member into the open configuration where the distal ends can engage tissue (paragraph 56, 65, 67, figure 12, 24). It would have been obvious to one of ordinary skill in the art before the effective filing date for the reference patent have distal ends of the first and clip arms extending out of the channel and the device to include a control wire connected to the yoke movable and separatable with the yoke and clip member in order to transmit a force to the clip member to move the clip member into the open configuration where the distal ends can engage tissue
As to the instant application’s claim 48, see reference patent claim 13. Teaching reference Durgin teaches the control wire is separate from the clip member (figure 24).
As to the instant application’s claim 49, see reference patent claim 14.
As to the instant application’s claim 50, see reference patent claim 15.
As to the instant application’s claim 51, see reference patent claim 15. Teaching reference Durgin teaches the control wire is connected to a clip member (the single clip member of the reference patent) via the yoke (figure 12).
As to the instant application’s claim 52, see reference patent claim 17.
As to the instant application’s claim 53, see reference patent claim 18.
As to the instant application’s claim 54, see reference patent claim 19.
As to the instant application’s claim 55, see reference patent claim 20.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. U.S. Patent Publication 2002/0045909 to Kimura, U.S. Patent Publication 2003/0069592 to Adams, U.S. Patent Publication 2005/0049618 to Masuda, U.S. Patent Publication 2005/0143767 to Kimura, U.S. Patent 6,991,634 to Sugiyama, U.S. Patent Publication 2008/0140089 to Kogiso, U.S. Patent Publication 2009/0105533 to Fujita, U.S. Patent Publication 2010/0016873 to Gayzik, U.S. Patent Publication 2013/0072945 to Terada, and U.S. Patent Publication 2018/0140300 to Randhawa all disclose similar devices readable, combinable, or capable of providing evidence on the claims of record.
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/ALEXANDER J ORKIN/Primary Examiner, Art Unit 3771