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.
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Claims 1, 4-6, 8-16 and 18 and 19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-5, 12, 15, and 16 of U.S. Patent No. 12,096,954 (now referred to as Pat ‘954). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding Present Claim 1, Claim 1 of Pat ‘954 discloses an endoscopic surgical tool (Column 13, Line 40), comprising:
a housing having a first aperture extending along a longitudinal axis of the housing (Column 13, Line 41-42);
a knife having a pipe (Column 13, Line 43-44), wherein the knife extends through the first aperture and wherein a part of the pipe is configured to protrude from the housing (Column 13, Line 43-45);
a rod disposed inside the pipe, wherein the rod is configured to move along the longitudinal axis of the housing with respect to the pipe (Column 13, Line 46-48);
a wire extending along the longitudinal axis of the housing, wherein the wire has a distal end and a proximal end (Column 13, Line 49-51); and
a connector coupling the distal end of the wire to the pipe (Column 13, Line 52-53).
Regarding Present Claim 4, Claim 2 of Pat ‘954 discloses the endoscopic surgical tool of claim 1, wherein the knife has an insulator coupled to the pipe.
Regarding Present Claim 5, Claim 3 of Pat ‘954 discloses the endoscopic surgical tool of claim 4, wherein the rod has an enlarged tip at a distal end of the rod, and wherein the part of the pipe configured to protrude from the housing extends from a distal end of the housing toward the enlarged tip.
Regarding Present Claim 6, Claim 3 of Pat ‘954 discloses the endoscopic surgical tool of claim 1, wherein the rod has an enlarged tip at a distal end of the rod.
Regarding Present Claim 8, Claim 12 of Pat ‘954 discloses the endoscopic surgical tool of claim 1, wherein at least part of the connector is formed in a tubular shape, and wherein a spring is located inside the connector.
Regarding Present Claim 9, Claim 15 of Pat ‘954 discloses the endoscopic surgical tool of claim 1, wherein the knife is an electrode.
Regarding Present Claim 10, Claim 5 of Pat ‘954 discloses the endoscopic surgical tool of claim 5, wherein the insulator has a first lumen, and wherein the enlarged tip is movable in the lumen in a longitudinal direction of the knife.
Regarding Present Claim 11, Claim 16 of Pat ‘954 discloses the endoscopic surgical tool of claim 1, wherein the knife has an insulator coupled to the pipe, wherein the rod has an enlarged tip at a distal end of the rod, and wherein an outer circumference of the enlarged tip is covered by the insulator when the enlarged tip contacts with a distal end of the pipe.
Regarding Present Claim 12, Claim 1 of Pat ‘954 discloses an endoscopic surgical tool, comprising:
a housing having a first aperture extending along a longitudinal axis of the housing (Column 13, Line 41-42);
a knife having a pipe (Column 13, Line 43-44), wherein the knife extends through the first aperture and wherein a part of the pipe is configured to protrude from the housing (Column 13, Line 43-45);
a rod disposed inside the pipe, wherein the rod is configured to move along the longitudinal axis of the housing with respect to the pipe (Column 13, Line 46-48);
a wire extending along the longitudinal axis of the housing, wherein the wire has a distal end and a proximal end (Column 13, Line 49-51); and
a connector coupling the distal end of the wire to the pipe (Column 13, Line 52-53).
a spring disposed between a proximal end of the rod and the wire (Column 13, Lines 54-55; the examiner notes that the connector is coupled to the distal end of the wire), wherein the spring extends along the longitudinal axis of the housing (Column 13, Lines 55-56).
Regarding Present Claim 13, Claim 2 of Pat ‘954 discloses the endoscopic surgical tool of claim 12, wherein the knife has an insulator coupled to the pipe.
Regarding Present Claim 14, Claim 3 of Pat ‘954 discloses the endoscopic surgical tool of claim 13, wherein the rod has an enlarged tip at a distal end of the rod, and wherein the part of the pipe configured to protrude from the housing extends from a distal end of the housing toward the enlarged tip.
Regarding Present Claim 15, Claim 4 of Pat ‘954 discloses the endoscopic surgical tool of claim 14, wherein the insulator includes a recess at a distal end thereof, and wherein the recess is sized and shaped to receive the enlarged tip.
Regarding Present Claim 16, Claim 4 of Pat ‘954 discloses the endoscopic surgical tool of claim 12, wherein the rod has an enlarged tip at a distal end of the rod.
Regarding Present Claim 18, Claim 12 of Pat ‘954 discloses the endoscopic surgical tool of claim 12, wherein at least part of the connector is formed in a tubular shape, and wherein the spring is located inside the connector.
Regarding Present Claim 19, Claim 15 of Pat ‘954 discloses the endoscopic surgical tool of claim 12, wherein the knife is an electrode.
Allowable Subject Matter
Claims 2-3, 7, and 17 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claim 20 is allowed.
The following is an examiner’s statement of reasons for allowance:
The closest prior art of record, Yuasa (US PGPub 2020/0315437) does not disclose or fairly suggest, either singly or in combination of any of the prior art of record, the claimed invention of Independent Claim 20, which recite, inter alia “a knife having a pipe…a rod disposed inside the pipe, wherein the rod is configured to move along the longitudinal axis of the housing with respect to the pipe; a wire extending along the longitudinal axis of the housing wherein the spring is between a proximal end of the actuator and a proximal end of the rod.".
The closest prior arts of record Yuasa (US PGP 2020/0315437) discloses an endoscopic surgical tool (Figures 4A-4C and Figures 7A-7B) similar to that of Claims 20 however the prior art of record fails to disclose the particulars of the claims outlined above.
Because none of the prior art documents of record teach an endoscopic treatment tool as recited in Claims 20, it would not have been obvious to one of ordinary skill in the art at the time the invention was made to arrive at the technical solutions of Claim 20 according to the prior art documents or a combination thereof. Therefore, in view of the prior art at its deficiencies, Applicant’s invention is rendered novel and non-obvious and thus is allowable as claimed.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MOHAMED GAMIL GABR whose telephone number is (571)272-0569. The examiner can normally be reached M-F 9am-5pm.
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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) 270-5953. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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MOHAMED GAMIL GABR
Primary Examiner
Art Unit 3771
/MOHAMED G GABR/Primary Examiner, Art Unit 3771