DETAILED ACTION
The present application is being examined under the pre-AIA first to invent provisions.
The action is in response to the application filed on 09/23/2024. Claims 1-20 are pending and examined below.
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. US 12097026 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the Instant Application are broader in scope than those of US 12097026 B2 and thus necessarily meet the limitations of the claim.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-37 of U.S. Patent No. 9380966. Although the claims at issue are not identical, they are not patentably distinct from each other because the breadth of U.S. Patent No. 9380966 is narrower than that of the Instant Application and as such anticipates the limitation of the claim.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 10178968. Although the claims at issue are not identical, they are not patentably distinct `from each other because the breadth of U.S. Patent No. 10178968 is narrower than that of the Instant Application and as such anticipates the limitation of the claim.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11452471. Although the claims at issue are not identical, they are not patentably distinct from each other because the breadth of U.S. Patent No. 11452471 is narrower than that of the Instant Application and as such anticipates the limitation of the claim.
Conclusion
Claims 1 and 17, and claims dependent thereof, are rejected under Double Patenting rejections, but recite subject matter not found in the prior art.
Regarding claims 1 and 17, US 6994548 B2 (provided in IDS, hereinafter referred to as “Perret”) teaches a device comprising: a shaft (as shown in Figures 1-6), a handle, coupled to the proximal end of the shaft, a tip, coupled to the distal end of the shaft (as shown in Figures 1-6), an axis passes through the shaft, and the tip comprises a first portion extending a first distance from the axis in a first direction, a second portion extending a second distance from the axis a second direction that is opposite to the first direction, and a retractor blade (as shown in Figures 1-6) of the tip extends across the axis so there are blade portions on opposite side of the axis (as shown in Figures 1-6) , a sum of the first distance and the second distance is less than a width of the shaft (as shown in Figures 1-3).
US 4,945,896 (provided in IDS, hereinafter referred to as “Gade”) teaches disposing a tissue oximeter sensor (column 3, line 57-column 7, line 65; Figures 1-9).
US 4,226,228 (provided in IDS, hereinafter referred to as “Shin”) teaches a retractor device (column 2, lines 27-44, Figure 1).
However, the prior art fails to teach, wherein the tip comprises a retractor portion and an oximeter sensor on a bottom surface of the tip, and the retractor portion comprises a blade having a first edge and a second edge, opposite to the first edge, a first thickness between the first and second edges, the first edge has a first length that is greater than the first thickness, the first edge is closer to the bottom surface than the second edge, and the blade extends from the bottom surface in a first direction away from an axis that passes through the shaft, in combination with the other limitations of the claims.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ABID A MUSTANSIR whose telephone number is (408)918-7647. The examiner can normally be reached M-F 10 am to 6 pm Pacific Time.
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/ABID A MUSTANSIR/Examiner, Art Unit 3791
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