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 .
Election/Restrictions
Claim 16 is withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected Group II, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 08/18/2026.
The traversal is on the ground(s) that claims of a national stage application should be considered to have unity of invention is the claims are drawn to “(3) a product and a process specially adapted for the manufacture of the said product”. Applicant thereby asserts that the restriction requirement is improper because the pending set of claims complies with the requirement of unity of invention under PCT rule 13. This is not found persuasive because reciting claims drawn to a product and a process specially adapted for the manufacture of said product are not the only conditions which must be met in order to have unity of invention. Although the claim set meets the requirements of 37 CFR 1.475(b), it must also meet the requirements of 37 CFR 1.475(a). As established in the restriction requirement of 03/27/2026, the requirements of 37 CFR 1.475(a) are not met because the two inventions fail to share a special technical feature. “The expression "special technical features" shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art”. As such, the limitations of claim 16 must overlap with the technical features of claim 1 and these features must be “special” i.e. novel and nonobvious over the prior art. The shared technical features of claims 1 and 16 are not special in view of Simi as previously presented. Therefore, the claims to different categories of invention fail to have unity of invention.
The requirement is still deemed proper and is therefore made FINAL.
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 and 17-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 3, 4, 5, 7, 8, 9, 10, 13, 14, 15, 16, 17, 18, 19, 6, 17, and 7 respectively of U.S. Patent No. 12,551,306. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the patent substantially overlap in scope with the application claims except for differences highlighted below which do not affect the scope of the claim.
Application claim
Parent claim of US 12,551,306
1. Surgical instrument comprising an articulated end comprising: a first support link, a second link articulated with respect to the support link about a rotation axis, a transmission cable fixed to the second link; wherein the first support link comprises: at least one first, convex, sliding surface which is a ruled surface with straight generator lines all parallel to each other, a second, convex sliding surface which is a ruled surface with straight generator lines all parallel to each other, and wherein: the transmission cable is configured for sliding on both said at least one first sliding surface and said second sliding surface of the first support link, when the second link rotates with respect to the support link, the straight generator lines of the at least one first convex sliding surface that is ruled, are orthogonal to the straight generator lines of the second convex sliding surface that is ruled.
1. A surgical instrument comprising an articulated end comprising: a first support link, a second link articulated with respect to the first support link about a rotation axis, and a transmission cable fixed to the second link, wherein the first support link comprises: at least one first convex sliding surface, which is a ruled surface, with straight generator lines all parallel to each other, a second convex sliding surface, which is a ruled surface, with straight generator lines all parallel to each other, and wherein the transmission cable is configured for sliding on both said at least one first convex sliding surface and said second convex sliding surface of the first support link when the second link rotates with respect to the first support link, and the straight generator lines of the at least one first convex sliding surface are orthogonal to the straight generator lines of the second convex sliding surface.
Claim Objections
Claim 1, 6, and 20 are objected to because of the following informalities:
In line 4 and line 13 of claim 1, “the support link” should be changed to “the first support link” in order to maintain consistent terminology.
In line 2 of claim 6, “at least one between the at least one” should be changed to “at least one of the at least one”.
In line 2 of claim 20, “at least one between the at least one” should be changed to “at least one of the at least one”.
Appropriate correction is required.
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 14, 15, 17, and 19 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 14, 15, 16, and 19 recite “the winding pulley” without proper antecedent basis. It is unclear if each instance of the winding pulley is intending to set forth a new limitation or if the claims should each depend from claim 2 or 3 which does provide antecedent basis for the limitation.
Claim 15 recites “the axis of rotation” in line 2. There is insufficient antecedent basis for this limitation and the claim does not establish what the axis of rotation is relative to or defined towards.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BROOKE N LABRANCHE whose telephone number is (571)272-9775. The examiner can normally be reached M-F 8-5.
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/BROOKE LABRANCHE/ Primary Examiner, Art Unit 3771
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