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 .
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 35-41 is/are rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 13-17, 19, 20 of prior U.S. Patent No. 12089865. This is a statutory double patenting rejection.
Claims 42 is/are rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 22 of prior U.S. Patent No. 12089865. This is a statutory double patenting rejection.
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 23-34 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 of U.S. Patent No. 12089865. Although the claims at issue are not identical, they are not patentably distinct from each other because the difference between the application claims and the patent claims lies in the fact that the patent claims include more elements and are thus much specific. Thus the invention of the patent claims are in effect a “species” of the “generic” invention of the application claims. It has been held that the generic invention is “anticipated” by the “species”. See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Since the application claims are anticipated by the patent claims, they are not patentably distinct from the patent claims.
Claims 23-42 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 of U.S. Patent No. 11510687. Although the claims at issue are not identical, they are not patentably distinct from each other because the difference between the application claims and the patent claims lies in the fact that the patent claims include more elements and are thus much specific. Thus the invention of the patent claims are in effect a “species” of the “generic” invention of the application claims. It has been held that the generic invention is “anticipated” by the “species”. See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Since the application claims are anticipated by the patent claims, they are not patentably distinct from the patent claims.
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.
Claim(s) 23, 24, 29-31, 34 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Korner et al. (U.S. Patent No. 9211135).
Korner et al. discloses a rotary cutting tool comprising: an outer shaft (4) having a proximal end and a distal end; a drive shaft (14) disposed within the outer shaft and extending between the proximal end and the distal end (column 5, Lines 19-25); an articulating support housing (10) coupled to the distal end of the outer shaft and pivotable relative to the drive shaft between a non-articulated position (Figure 2) and one or more articulated positions (Figure 4); and a rotary cutting bit (8) coupled to the articulating support housing and pivotable with the articulating support housing and relative to the outer shaft about a constant velocity joint formed between the rotary cutting bit and drive shaft (Figure 7).
Regarding claim 24, the rotary cutting tool further comprises a trigger (44) assembly coupled to the proximal end of the outer shaft (Figure 5) and configured to cause the rotary cutting bit and articulating support housing to pivot relative to the outer shaft between the non-articulated position and the one or more articulated positions (C.
Regarding claim 29, the rotary cutting bit includes a multi-faceted ball (26) forming the constant velocity joint with the drive shaft. (Elements 32 considered facets)
Regarding claim 30, rotary cutting tool of further comprises: a connecting portion (12) connected to the distal end of the outer shaft, the connecting portion pivotably connecting the articulating support housing to the outer shaft (Figure 7).
Regarding claim 31, a rotary socket (16) rotatably fixed to the drive shaft such that rotation of the drive shaft causes the rotary socket to rotate, wherein the rotary socket and the rotary cutting bit for the constant velocity joint such that rotation of the rotary socket causes the rotary cutting bit to rotate.
Regarding claim 33, the rotary cutting tool further comprises: a fluid suction intake located at the proximal end of the outer shaft, the fluid suction intake fluidly coupled to a tunnel defined by the outer shaft and the drive shaft (Column 3, Lines 44-55).
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.
Claim(s) 34 is/are rejected under 35 U.S.C. 103 as being unpatentable over Korner et al. (U.S. Patent No. 9211135) in view of Cha (U.S. Publication No. 2005/0165420).
Korner et al. discloses the claimed invention except for the articulating support housing includes a shield integrally formed with the articulating support housing, the shield configured to protect adjacent tissue and/or structures during burring of the rotary cutting bit when in use. Cha teaches a arthroscopic rotary cutting tool with an articulating support housing (120) that includes a shied (Figure 1a). The shield allows for there to be an improved and more controlled method of removing tissue that would allow for maximal preservation of bone and ligaments (Paragraph 6). It would have been obvious to one skilled in the art to construct the device of Korner et al. with a shield on the articulating support housing in view of Korner et al. to allow for maximal preservation of tissue.
Allowable Subject Matter
Claims that are only rejected by non-statutory Double patenting would be allowable following a proper filing of a Terminal Disclaimer and incorporating said claims and all intervening claims into the independent claim.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREW YANG whose telephone number is (571)272-3472. The examiner can normally be reached 9:00 - 9:00 M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Kevin Truong can be reached at 571-272-4705. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANDREW YANG/Primary Examiner, Art Unit 3775
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