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 1-15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12108966. Although the claims at issue are not identical, they are not patentably distinct from each other because all the claimed invention of the present application are presented and claimed in the claims of Patent No. 12108966.
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) 1-6, 8-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Culbert et al. (US. 20090149857) in view of Crawford et al. (US. 20200170723).
Culbert discloses a surgical system fig. 50 comprising an access guide (1486 a tubular head 1528), defining a bore and having a distal end and a proximal end, the proximal end having an indent 1544, 1546, fig. 52 on an exterior surface of the access guide; an initial access tool detachably connected to the access guide, wherein the initial access tool comprises: a housing 1500 retaining a locking button 1536 for engaging the indent 1544, 1546 in a first position fig. 52 wherein a boss 1538 of the locking button engages the indent of the access guide fig. 52, thereby preventing rotation between the initial access tool and the access guide; a shaft 1482 extending from the housing coaxially through the access guide fig. 51; and a distal tip 1490 attached to the shaft and protruding from a distal end of the access guide; wherein the tip 1490 is a rigid blunt tip, wherein the access guide has a plurality of teeth disposed at distal end (par. 183), wherein the access guide has a smooth chamfer disposed at an distal end fig. 50, further comprising a second guide 1484 interposed between the shaft and the access guide figs 50-51, wherein the housing retains a locking button 1510, 1536 for engaging the access guide, trapping 1534 the second guide between the housing and the access guide fig. 51, 52, wherein the housing retains a locking button for engaging the second guide and preventing rotation with respect to the second guide, wherein the second guide can have a pin 252, fig. 16 for engaging a slot 260of the access guide, thereby preventing rotation between the housing, the second guide, and the access guide (par. 163), wherein the second guide can have plurality of teeth 1498 disposed at distal end, further comprising one or more of a drilling tool para. 226, wherein the initial access tool further comprises a step 1506, fig. 51 spaced from a distal end 1490 of the shaft.
Culbert fails to teach a navigational array attached to the initial access tool for determining a three-dimensional position and orientation of the initial access tool, a controller configured to determine the three-dimensional position and orientation of the initial access tool, and configured to operate a robotic arm to position the access guide.
Crawford et al. teaches a navigational array 612, fig. 8 attached to the initial access tool for determining a three-dimensional position and orientation of the initial access tool, a controller fig. 20 capable to determine the three-dimensional position and orientation of the initial access tool, and capable to operate a robotic arm to position the access guide.
It would have been obvious to a person of ordinary skill in the art at the time of the invention was made to modify the surgical system of Culbert with a a navigational array and controller in view of Crawford in order to facilitate and accurately navigating the position and orientation of the access guide during the surgery.
Allowable Subject Matter
Claims 7, 14-15 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.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SAMEH RAAFAT BOLES whose telephone number is (571)270-5537. The examiner can normally be reached 9-5 pm.
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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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/SAMEH R BOLES/Primary Examiner, Art Unit 3775
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