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
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 21-29 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11 of U.S. Patent No. 10213271. 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 21 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 4 and 5 of U.S. Patent No. 11033352. 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) 30 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sharrah et al. (U.S. Patent No. 8511847).
Sharrah et al. discloses a control circuit (300) of an illuminated surgical retractor (the retractor is considered functional since no elements are directed to the retractor, furthermore, given the device of Sharrah et al. is handheld, it can be considered capable of use as an illuminated surgical retractor), the control circuit comprising: an input (Column 6, Lines 46-50) to receive a signal from a single control element (250); and an output to supply an electric current to control light generated by an array of illuminating elements (Column 6, Lines 46-50), wherein a level of electric current supplied by the output is based on a count of momentary closures of a switch of the single control element (Column 4, Lines 10-16).
Regarding claim 31, an incremental increase in the level of electric current supplied by the output corresponds to the count of the momentary switch closures of the single control element (Column 4, Lines 10-16, “Preferably switch 250 is a pushbutton switch that may be activated one or more times, e.g.…brightened and/or dimmed).
Regarding claim 32, the signal from the single control element corresponds to a momentary closure of the single control element (Column 4, Lines 10-16).
Regarding claim 33, the output of the control circuit includes a plurality of outputs to supply differing levels of electric current based on one or more of the momentary closures of the switch (Column 4, Lines 10-16, the push button being activated one or more times indicates a plurality of outputs in the circuitry).
Regarding claim 34, the output of the control circuit includes a plurality of outputs, and wherein an increasing current from the plurality of outputs is based on one or more increases in the count of the momentary switch closures (Column 4, Lines 10-16, the push button being activated one or more times indicates a plurality of outputs in the circuitry, and the increase in current is indicated since the light can be brightened or dimmed via a pushbutton switch).
Regarding claim 35, the output supplies 0 mA responsive to a particular count of momentary closures of the switch of the single control element (Column 4, Lines 10-16, “ON, OFF” function).
Regarding claim 36, the output supplies a current based on an additional momentary closure of the switch after the output supplies 0 mA (Column 4, Lines 10-16, the pushbutton being active, once the device is off, the next click will turn it on).
Allowable Subject Matter
Claims 37-40 allowed.
The following is a statement of reasons for the indication of allowable subject matter: The prior art alone or in combination fails to disclose a method of controlling illuminating a surgical device where a signal is received from a single control element that is moveable in axes relative a handle of the device. The single control element controls an electric current and side to side and front to back direction of illumination.
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