DETAILED ACTION
A complete action on the merits of pending claims 1-22 appears below.
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 .
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 1-22 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12137964. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of patent anticipate the claims of the application. Accordingly, the application claims are not patentably distinct from the patent claims. Here, the more specific patent claims encompass the broader application claims. Following the rationale in In re Goodman cited in the preceding paragraph, where applicant has once been granted a patent containing a claim for the specific narrow invention, applicant may not obtain a second patent with a claim for the generic or broader invention without first submitting an appropriate terminal disclaimer.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-22 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wallace US 20200107894.
Regarding claim 1, Wallace teaches a first jaw and a second jaw (Fig. 26A 208c and 208d) that are rotatable independently from each other (pars. [0150] and [0187]); a first jaw pulley coupled to the first jaw (Fig. 24A circular portion) and formed to be rotatable about a first axis (Fig. 26A where the hole is that the jaws and blade rotate around); a second jaw pulley coupled to the second jaw (Fig. 24A similar to the first since they are mirror images of one another) and formed to be rotatable about an axis that is substantially same as or parallel to the first axis (Fig. 26A where the hole is that the jaws and blade rotate around); a blade pulley (Fig. 25 circular section with 276) formed to be rotatable about an axis that is substantially same as or parallel to the first axis (Fig. 26A where the hole is that the jaws and blade rotate around), and arranged adjacent to the first jaw pulley or the second jaw pulley (Fig. 26C); and at least one blade connected to the blade pulley (Fig. 25 270c) and moving between a proximal end and a distal end of the first jaw according to a rotation of the blade pulley (Figs. 26E and F moving within the space between the proximal and distal ends of the jaws).
Regarding claim 2, Wallace teaches further comprising a blade link which is connected to the blade pulley and the blade and transfers the rotation of the blade pulley to the blade Fig. 25 the portion between the cutting portion and the groove 276).
Regarding claim 3, Wallace teaches wherein a rotational motion of the blade pulley is converted into a position movement of the blade by the blade link (Figs. 26E and F transition between the two figures).
Regarding claim 4, Wallace teaches wherein one end of the blade link is coupled to the blade pulley and the other end of the blade link is coupled to the blade, and when the blade pulley rotates in one direction, the blade link coupled to the blade pulley moves the blade while moving toward the proximal end or the distal end of the first jaw (Figs. 26E and F transition between the two figures shows the blade and therefore the link moving toward the distal end as it rotates).
Regarding claim 5, Wallace teaches wherein a blade accommodation portion, in which the blade and at least a part of the blade link are accommodated, is formed in the first jaw (Fig. 24D slot 212).
Regarding claim 6, Wallace teaches wherein the blade is moved along the blade accommodation portion of the first jaw (Figs. 26E and F transition between the two figures has the blade moving in and out of the slot 212).
Regarding claim 7, Wallace teaches wherein a slit in which at least a part of the blade drawn out from the first jaw is accommodated is formed in the second jaw (par. [0171] both jaws have slots 212 that the blade goes into).
Regarding claim 8, Wallace teaches wherein when the blade pulley rotates in one direction, the blade is moved toward the proximal end of the first jaw (Figs. 26 B and C transition between the two figures), and when the blade pulley rotates in another direction, the blade is moved toward the distal end of the first jaw (Figs. 26 E and F transition between the two figures).
Regarding claim 9, Wallace teaches a pair of end tool first jaw pitch main pulleys which are formed on one side of the first jaw pulley and formed to be rotatable about a second axis forming a certain angle with the first axis (par. [0152] and Fig. 22A the part where cables 1, 2, 3, and 4, go through); and a pair of end tool second jaw pitch main pulleys which are formed on one side of the second jaw pulley and formed to be rotatable about an axis that is substantially same as or parallel to the second axis (par. [0143] and Fig. 22A).
Regarding claim 10, Wallace teaches when the first jaw pulley and the second jaw pulley rotate about the second axis in a same direction, the blade pulley is rotated along with the first jaw pulley and the second jaw pulley (par. [0143] and Fig. 22A).
Regarding claim 11, Wallace teaches a blade second auxiliary pulley (par. [0143] yaw pullies) arranged on one side of the blade pulley (Fig. 23A).
Regarding claim 12, Wallace teaches wherein when the first jaw pulley and the second jaw pulley rotate about the first axis in a same direction, the blade pulley is rotated along with the first jaw pulley and the second jaw pulley (par. [0143] and Fig. 22A).
Regarding claim 13, Wallace teaches when the first jaw pulley and the second jaw pulley rotate about the first axis in different directions from each other, the blade pulley is rotated along with one of the first jaw pulley and the second jaw pulley (Figs. 26C and D where the jaws move away from one another to open).
Regarding claim 14, Wallace teaches wherein, while the blade pulley is rotated about the first axis by the blade wire, the first jaw pulley and the second jaw pulley do not rotate (Figs. 26E and F transition of blade while jaws are closed).
Regarding claim 15, Wallace teaches wherein a first electrode is formed on a surface of the first jaw, the surface facing the second jaw, and a second electrode is formed on a surface of the second jaw, the surface facing the first jaw (par. [0175] electrodes formed on jaw halves to clamp and cauterize tissue).
Regarding claim 16, Wallace teaches wherein electrocautery for a tissue is performed while an electric current flows in the first electrode and the second electrode (par. [0175] cauterization of tissue with electrodes).
Regarding claim 17, Wallace teaches wherein when the electrocautery is finished, the blade pulley rotates, and the blade moves from a first position to a second position, thereby cutting the tissue (par. [0175] actuation of rotary cutter after cauterization).
Regarding claim 18, Wallace teaches wherein the first jaw pulley, the blade pulley, and the second jaw pulley are sequentially stacked (Fig. 26C).
Regarding claim 19, Wallace teaches wherein the blade pulley is formed between the first jaw pulley and the second jaw pulley (Fig. 24a and 26A).
Regarding claim 20, Wallace teaches wherein the first jaw pulley, the blade pulley, and the second jaw pulley are formed to be rotatable independently from one another (pars. [0150] and [0187]).
Regarding claim 21, Wallace teaches wherein a plurality of sawtooth portions are formed on an edge portion of the blade (par. [0162] the blade can be serrated).
Regarding claim 22, Wallace teaches a first jaw wire, of which at least a part is wound on the first jaw pulley; and a second jaw wire, of which at least a part is wound on the second jaw pulley (par. [0168] one or more cables to rotate jaws).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RYAN T. CLARK whose telephone number is (408)918-7606. The examiner can normally be reached Monday-Friday 7AM-3PM MT.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Stoklosa can be reached at (571)272-1213. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/R.T.C./Examiner, Art Unit 3794
/JOSEPH A STOKLOSA/Supervisory Patent Examiner, Art Unit 3794
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