DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
2. 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.
Claim Objections
3. Previously, the numbering of claims was not in accordance with 37 CFR 1.126. However, this issue has been resolved. Therefore, the claim objections have been withdrawn.
Claim Rejections - 35 USC § 112
4. Claims 31 and 32, now listed as claims 32 and 33, were previously objected to as being of improper dependent form. However, Claim 33 is presently cancelled. Therefore, the rejection has been withdrawn.
Response to Arguments
5. Regarding the double patenting rejections of Claims 25, 26, 27, 28, 29, 30, 31, and 32, the applicant states that the submission of a properly executed terminal disclaimer overcomes these rejections. However, there is no terminal disclaimer filed at present. Therefore, the double patenting rejections stand.
Double Patenting
6. 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
7. Claims 25, 28, 31, and 32 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 4, 6, and 7 of U.S. Patent No. 12,121,256. Although the claims at issue are not identical, they are not patentably distinct from each other because reference patent anticipates the claims of the instant application.
8. Here, the more specific patent claims, i.e., Claims 1, 4, 6, and 7 encompass the broader instant application claims, such as instant application Claims 25, 28, and 31. For example, Claim 25 of the instant application discusses a generic method of controlling an ultrasonic blade coupled to an ultrasonic transducer comprising a variety of steps, which is a broader recitation compared to the limitations outlined in the reference patent. Specifically, the reference patent includes the more specific limitation that a control circuit coupled to a memory is configured to execute the steps. Following the rationale in In re Goodman cited in the preceding paragraph, wherein the applicant has once been granted a patent containing a claim for the specific narrow invention, the applicant may not obtain a second patent with a claim for the generic or broader invention without first submitting an appropriate terminal disclaimer.
9. Regarding Claim 32 of the instant application, Claim 2 of the reference patent recites essentially identical language. Therefore, Claim 32 of the instant application is unpatentable over Claim 3 of the reference patent.
10. Claims 25, 26, 28, 29, 30, 31, and 32 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 7 of U.S. Patent No. 11,701,139. Although the claims at issue are not identical, they are not patentably distinct from each other because reference patent anticipates the claims of the instant application.
11. Here, the more specific patent claims, i.e., Claims 1 and 7 encompass the broader instant application claims, such as instant application Claims 25, 26, 28, 29, 30, 31, and 32 . For example, Claim 25 of the instant application discusses a generic method of controlling an ultrasonic blade coupled to an ultrasonic transducer comprising a variety of steps, which is a broader recitation compared to the limitations outlined in the reference patent. Specifically, the reference patent includes the more specific limitation that a control circuit coupled to a memory is configured to execute the steps. Following the rationale in In re Goodman cited in the preceding paragraph, wherein the applicant has once been granted a patent containing a claim for the specific narrow invention, the applicant may not obtain a second patent with a claim for the generic or broader invention without first submitting an appropriate terminal disclaimer.
12. Claims 25, 26, 27, 28, 29, 30, 31, and 32 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3, and 5 of U.S. Patent No. 11,259,830. Although the claims at issue are not identical, they are not patentably distinct from each other because reference patent anticipates the claims of the instant application.
13. Here, the more specific patent claims, i.e., Claims 1, 3, and 5 encompass the broader instant application claims, such as instant application Claims 25, 27, 26, 28, 29, 30, 31, and 32. For example, Claim 25 of the instant application discusses a generic method of controlling an ultrasonic blade coupled to an ultrasonic transducer comprising a variety of steps, which is a broader recitation compared to the limitations outlined in the reference patent. Specifically, the reference patent includes the more specific limitation that a control circuit coupled to a memory is configured to execute the steps. Following the rationale in In re Goodman cited in the preceding paragraph, wherein the applicant has once been granted a patent containing a claim for the specific narrow invention, the applicant may not obtain a second patent with a claim for the generic or broader invention without first submitting an appropriate terminal disclaimer.
14. Claims 25, 26, 28, 30, 31, and 32 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 of U.S. Patent No. 11,571,234. Although the claims at issue are not identical, they are not patentably distinct from each other because reference patent anticipates the claims of the instant application.
15. Here, the more specific patent claims, i.e., Claims 1-7 encompass the broader instant application claims, such as instant application Claims 25, 26, 28, 30, 31, and 32. For example, Claim 25 of the instant application discusses a generic method of controlling an ultrasonic blade coupled to an ultrasonic transducer comprising a variety of steps, which is a broader recitation compared to the limitations outlined in the reference patent. Specifically, the reference patent includes the more specific limitation that a control circuit coupled to a memory is configured to execute the steps. Following the rationale in In re Goodman cited in the preceding paragraph, wherein the applicant has once been granted a patent containing a claim for the specific narrow invention, the applicant may not obtain a second patent with a claim for the generic or broader invention without first submitting an appropriate terminal disclaimer.
16. Claims 25, 29, and 31 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 5, 7, 13, and 15 of U.S. Patent No. 11,589,888. Although the claims at issue are not identical, they are not patentably distinct from each other because reference patent anticipates the claims of the instant application.
17. Here, the more specific patent claims, i.e., Claims 5 and 13 encompass the broader instant application claims, such as instant application Claim 25. For example, Claim 25 of the instant application discusses a generic method of controlling an ultrasonic blade coupled to an ultrasonic transducer comprising a variety of steps, which is a broader recitation compared to the limitations outlined in the reference patent. Specifically, the reference patent includes the more specific limitation that a control circuit coupled to a memory is configured to execute the steps. Following the rationale in In re Goodman cited in the preceding paragraph, wherein the applicant has once been granted a patent containing a claim for the specific narrow invention, the applicant may not obtain a second patent with a claim for the generic or broader invention without first submitting an appropriate terminal disclaimer.
Conclusion
18. THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
19. Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANNIE L SHOULDERS whose telephone number is (571)272-3846. The examiner can normally be reached Monday-Friday (alternate Fridays) 8AM-5PM EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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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/ANNIE L SHOULDERS/Examiner, Art Unit 3794
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