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 .
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 8, 12, 13 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 8 and 12 recite the limitation "the movable range". There is insufficient antecedent basis for this limitation in the claim.
Claim 12 recites the limitation "the closed configuration". There is insufficient antecedent basis for this limitation in the claim.
Claim(s) 13 is/are rejected as being dependent on, and failing to cure the deficiencies of, their rejected respective parent 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) 1-9, 11 and 14 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hayashi et al (JP 2013085859; wherein the attached English machine translation is cited below).
Hayashi et al discloses the following limitations:
Claim 1. An endoscope clip, comprising:
an arm (20) having a first arm (entirety of top arm of clip 20 extending from the distal tip 262 to the proximal base end portion 210 as seen in Fig. 4b for example) and a second arm (entirety of bottom arm of clip 20 extending from the distal tip 262 to the proximal base end portion 210 as seen in Fig. 4b for example), the arm configured to be transitioned between a first configuration (not shown, the state in between Fig. 5b and 4b - when tightening portion 24 has been moved slightly distally such that the clip 20 is partially opened) in which the first arm and the second arm are separated from each other by a first amount and a second configuration (Fig. 4b; fully opened) in which the first arm and the second arm are separated from each other by a second amount larger than the first amount (a fully opened state of clip 20 will have the first and second arms separated by a larger distance than when the clip 20 is only partially opened);
a tube (360) into which the arm inserts (Figs. 4-6), when the arm enters the tube (Figs. 5-6), the arm transitions from the second configuration (fully opened) to the first configuration (partially opened), and when the arm protrudes from the tube (Fig. 4), the arm transitions from the first configuration (partially opened) to the second configuration (fully opened),
a handle (520) ([0013], [0022]);
a slider (540) configured to operate the arm to be transitioned between the first configuration and the second configuration by moving relative to the handle (movable along slit 560; [0021]-[0024], [0064]); and
a limiter (60) configured to restrict the relative movement of the slider with respect to the handle so as to restrict transition of the arm from the first configuration to the second configuration ([0028]-[0039], [0079]-[0082]).
Claim 2. The endoscope clip according to claim 1, wherein the arm is configured to be inserted into an endoscope while in the first configuration ([0080]).
Claim 3. The endoscope clip according to claim 1, wherein the arm is configured to be transitioned from at least one of the first configuration and the second configuration to a third configuration, the third configuration being a closed configuration (Fig. 5; [0066]-[0070]) where the first arm and the second arm contact each other ([0052]).
Claim 4. The endoscope clip according to claim 3, wherein the arm is configured to be transitioned from the closed configuration to at least one of the first open configuration and the second configuration (transition from Fig. 8b to Fig. 8c; the closed configuration is interpreted as the temporarily closed configuration of Fig. 5 and thus can be released back into expansion of the clip; [0080]-[0082]).
Claim 5. The endoscope clip according to claim 1, further comprising a pressing tube (tightening portion 24 is described as having a cylindrical shape with a lumen and is therefore considered a tube; [0053]) having a lumen configured to receive the arm (Figs. 4-6; [0049], [0051], [0053]-[0055]).
Claim 6. The endoscope clip according to claim 5, wherein when the arm enters the pressing tube, the arm is deformed as a consequence of the arm engaging with an inner wall of the lumen such that the first arm and the second arm approach each other (Figs. 5-6; [0053]-[0055], [0060]-[0062]).
Claim 7. The endoscope clip according to claim 6, wherein the arm is deformed by engaging with the inner wall of the lumen in the first configuration (when the tightening portion 24 is pushed distally along the arm) (Fig. 5; [0067]-[0068]), and the deformation due to the pressing tube is removed in the second configuration (Fig. 4; [0063]).
Claim 8. The endoscope clip according to claim 5, wherein the arm is biased toward a protruding direction (radially outward direction) from the pressing tube and the arm moves toward the protruding direction from the pressing tube when the restriction to the movable range of the slider is released (Fig. 8c; [0082]).
Claim 9. The endoscope clip according to claim 1, further comprising a wire (440) configured to connect the arm with the slider and operate the arm, wherein the limiter is provided in the handle (Fig. 1; [0021]).
Claim 11. The endoscope clip according to claim 1, wherein the limiter (60) is disposed at a more distal position within the endoscope clip than the slider (540) is (Figs. 1, 2).
Claim 14. The endoscope clip according to claim 1, wherein the second amount is approximately twice the first amount (the second amount is defined as the distance of the fully expanded state as shown in Fig. 4b; the first amount is defined as when the arm is transitioning from the fully closed to the fully opened state and is at the halfway point in between, wherein the fully expanded distance is twice the amount of the partially opened distance).
Allowable Subject Matter
Claims 10, 12 and 13 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, if rewritten to obviate the 35 U.S.C. 112 rejections above, and if the double patenting rejections are obviated.
The following is a statement of reasons for the indication of allowable subject matter: The closest prior art of record, Hayashi et al, discloses the invention substantially as claimed above.
In regards to claim 10, the prior art of record does not disclose or fairly suggest either singly or in combination the claimed endoscopic clip comprising, inter alia, the limiter is detachably attached to the handle and is detachable from the handle. Instead, the limiter (60) of Hayashi et al is always attached to the handle, between two different pivoting positions (Figs. 3a, 3b).
In regards to claim 12, the prior art of record does not disclose or fairly suggest either singly or in combination the claimed endoscopic clip comprising, inter alia, the slider is configured to operate the arm to be transitioned from the closed configuration to the first configuration due to the relative movement between the slider and the handle in a state in which the movable range of the slider is restricted by the limiter. Instead, Hayashi et al discloses with the limiter (60) in place in the handle the slider cannot be operated in a manner to allow the clip be opened ([0080]).
Therefore, in view of the prior art and its deficiencies, Applicant’s invention is rendered novel and non-obvious, and thus, is allowable as claimed.
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 1-14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of U.S. Patent No. 12089852.
Although the claims at issue are not identical, they are not patentably distinct from each other because the elements of claims 1-14 of the instant application are to be found in claims 1-13 of the patent. Thus the difference between claims 1-14 of the instant application and claims 1-13 of the patent lies in the fact that the patent claims include many more elements and is thus much more specific. Thus, the invention of claims 1-13 of the patent is in effect a “species” of the “generic” invention of claims 1-14 of the instant application. It has been held that the generic invention is “anticipated” by the “species”. See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Since claims1-14 are anticipated by claims 1-13 of the patent, it is not patentably distinct from claims 1-13 of the patent.
The limitations of the instant application can be found in the corresponding claims of the patent:
Instant application claims
Patent claims
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1
2
1
3
1
4
1
5
1
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1
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1
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Claim 1, 10, 11 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 15-18 of copending Application No. 17/308,443 (reference application).
Although the claims at issue are not identical, they are not patentably distinct from each other because the elements of claims 1, 10, 11 of the instant application are to be found in claims 15-18 of the reference application. Thus the difference between claims 1, 10, 11 of the instant application and claims 15-18 of the reference application lies in the fact that the patent claims include many more elements and is thus much more specific. Thus, the invention of claims 15-18 of the reference application is in effect a “species” of the “generic” invention of claims 1, 10, 11 of the instant application. It has been held that the generic invention is “anticipated” by the “species”. See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Since claims 1, 10, 11 are anticipated by claims 15-18 of the reference application, it is not patentably distinct from claims 15-18 of the reference application t.
Instant application claims
Patent claims
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15
10
17
11
16
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KATHERINE M SHI whose telephone number is (571)270-5620. The examiner can normally be reached Mon-Thurs, 8-5 EST.
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/KATHERINE M SHI/ Primary Examiner, Art Unit 3771
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