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 6-9, 11-12, 14-16, 18-19 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.
Claim 6 recites the limitation "the respective second cutting edge". There is insufficient antecedent basis for this limitation in the claim.
Claim 7 recites the limitation "the respective second cutting edge", “the respective first flute face”. There is insufficient antecedent basis for this limitation in the claim.
Claim 8 recites the limitation "the respective second flute face". There is insufficient antecedent basis for this limitation in the claim.
Claim 9 recites the limitation "the respective first flute face". There is insufficient antecedent basis for this limitation in the claim.
Claim 11 recites the limitation “the respective flute”. There is insufficient antecedent basis for this limitation in the claim.
Claim 12 recites the limitation "the respective flute ". There is insufficient antecedent basis for this limitation in the claim.
Claim 14 recites the limitation "an outer circumferential wall". There is sufficient antecedent basis for this limitation in the claim and therefore, should be “the outer circumferential wall”.
Claim 15 recites the limitation "the flutes". There is insufficient antecedent basis for this limitation in the claim. Claim 15 recites “a first cutting edge”, “A second cutting edge”. There is sufficient antecedent basis for this limitation in the claim and should recite “the”.
Claim 16 recites the limitation "the respective first cutting edge". There is insufficient antecedent basis for this limitation in the claim.
Claim 18 recites the limitation "a plurality of interlocking sections”. Claim 1 recites “a plurality of interlocking segments”. Are these the same?
Claim 19 recites the limitation "the a rigid shaft". There is insufficient antecedent basis for this limitation in the claim.
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.
Claim 1, 5, 14, 16, 20 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 12-15, 18 of U.S. Patent No. 12207805. Although the claims at issue are not identical, they are not patentably distinct from each other because they recite “a collection instrument…a rigid shaft… an articulating shaft comprising a plurality of interlocking segments…a core drill…a central passage…a plurality of cutting sections… a first cutting edge…a flute…a second cutting edge…at least one suction port…a core drill with outer circumferential wall… a uniform core drill outer diameter… a uniform articulating shaft outer diameter…the uniform core drill outer diameter…flexible sheath configured to prevent fluid central passage...”.
Allowable Subject Matter
Claims 2-4, 6-13, 15, 17-20 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form with corrections to the 112b rejections including all of the limitations of the base claim and any intervening claims.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: 5913859, 7637872, 20110112436, 20110245833, 20030078586. These patents disclose articulation/cutting members with suction.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to YASMEEN S WARSI whose telephone number is (571)272-9942. The examiner can normally be reached Monday-Friday 9 am to 5 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Alexander Valvis can be reached at 571-272-4233. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/YASMEEN S WARSI/Examiner, Art Unit 3791 /MAY A ABOUELELA/Primary Examiner, Art Unit 3791
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