DETAILED ACTION
Applicant’s amendments and remarks, filed August 5, 2026, are fully acknowledged by the Examiner. Currently, claims 1-19 and 21-23 are pending with claims 21-23 newly added, claim 20 cancelled, and claims 9-10 and 17-19 withdrawn from consideration. The following is a complete response to the August 5, 2026 communication.
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
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 1-8, 11-16 and 21-23 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 and 11-14 of U.S. Patent No. 12,114,910 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding instant claim 1, it is clear that the majority of the limitations set forth therein can be found is substantially the same language in patented claim 1. The difference between instant claim 1 and patented claim 1 exists in instant claim 1 further requiring “the suction tip remains stationary when in the retracted position and the extended position absent activation of the actuator”. The Examiner, however, fails to find that such a limitation is structurally different, within the broadest reasonable interpretation of the claim language, when taken in view of the functionality set forth in patented claim 1 and the limitation of “a click-lock mechanism constructed and arranged to mechanically lock the suction tip in the extended position … wherein the suction tip moves into the retracted position”. Said differently, while the language of the claims differ, the Examiner is of the position that the noted functionality in instant claim 1 is not patentably distinct from the noted functionality of the device and its click-lock mechanism.
With respect to dependent claim 2; see patented claim 1;
With respect to dependent claim 3; see patented claim 2;
With respect to dependent claim 4; see patented claim 4;
With respect to dependent claim 5; see patented claim 5;
With respect to dependent claim 6; see patented claim 6;
With respect to dependent claim 7; see patented claim 7;
With respect to dependent claim 8; see patented claim 8;
With respect to dependent claim 11; see patented claim 11;
With respect to dependent claim 12; see patented claim 3;
With respect to dependent claim 13; see patented claim 1;
With respect to dependent claim 14; see patented claim 12;
With respect to dependent claim 15; see patented claim 13;
With respect to dependent claim 16; see patented claim 14.
With respect to dependent claim 21; see patented claim 11;
With respect to dependent claim 22; see patented claim 4;
With respect to dependent claim 23; see patented claim 1.
Response to Arguments
Applicant’s arguments, see page 6 of the Remarks filed August 5, 2026 with respect to prior rejection of independent claim 1 under 35 U.S.C. 102 as anticipated by DuBois et al. (US Pat. Pub. 2013/0211438 a1) have been fully considered and are persuasive. In particular, the Examiner notes that Applicant’s arguments to the point that the cutter of Dubois is not capable of remaining stationary when in both the actuated and the extended positions absent actuation of the actuator are persuasive given that the cutter 18 of Dubois is specifically arranged to stop in a proximal position when the actuator (trigger 26) is not actuated. As such, the rejection of claims 1-6, 8, 12 and 14-16 under 35 U.S.C. as anticipated by Dubois in the June 1, 2026 Non-Final Office Action has been withdrawn.
Conclusion
THIS ACTION IS MADE FINAL. 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 RONALD HUPCZEY, JR whose telephone number is (571)270-5534. The examiner can normally be reached Monday - Friday; 8 am - 4 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Stoklosa can be reached at (571) 272-1213. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Ronald Hupczey, Jr./Primary Examiner, Art Unit 3794
