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 . 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 (i.e., changing from AIA to pre-AIA ) 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.
Specification
The disclosure is objected to because the first paragraph does not provide the most current status for the related application. That is, the parent application is referenced as a U.S. application even though it has issued as a patent. The paragraph should be amended to include the appropriate patent number.
Furthermore, the lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
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 1-7 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 1 recites the limitation "ratio of a collective proximal height… to a collective distal height… at the distal tip portion" in claims 7-9. The antecedent basis for this limitation is confusing, since it’s unclear which “distal tip portion” is being referred to. Appropriate correction is required.
It should be noted that all other cited claims have been rejected for being dependent upon a rejected base 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 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 11 of U.S. Patent No. 11,376,062. Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims anticipate the claims of the application. Accordingly, the application claims are not patentably distinct from the patented 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.
Claims 1-6 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 12-17 of copending Application No. 17/856,001 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the copending claims anticipate the claims of the application. Accordingly, the application claims are not patentably distinct from the copending claims. Here, the more specific copending 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.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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.
Claim(s) 1-12 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Artale, U.S. 9,498,279 (hereinafter Artale).
Regarding claim 1, Artale discloses (note figs. 4A-5C) an electrosurgical forceps comprising: a first jaw member (110) including a first ‘distal tip portion’ and a second jaw member (120) including a second ‘distal tip portion’; and a pivot (66) coupling the first and second jaw members with one another such that the first and second jaw members are movable relative to one another between an open position (see fig. 5A) and a closed position (see fig. 5B), wherein a ratio of a ‘collective proximal height’ of the first jaw member and the second jaw member to a ‘collective distal height’ of the first jaw member and the second jaw member ‘at the distal tip portion’ when the first jaw member and second jaw member are disposed in the closed position is necessarily in a range from ‘about’ 1.80 to ‘about’ 2.10 (necessarily met since these heights could be measured at a variety of locations along the jaws - see breadth of the term “at the distal tip portion”; the location of the proximal measurement is not specified).
Regarding claims 2-4, Artale discloses (see above) an electrosurgical forceps wherein the ratio is necessarily about 1.94 (as above, this ratio is necessarily met since these heights could be measured at a variety of locations along the jaws - see breadth of ratio and the term “at the distal tip portion”; the location of the proximal measurement is not specified).
Regarding claim 5, Artale discloses (see above) an electrosurgical forceps wherein the distal tip portion of each of the first and second jaw members necessarily defines a half-ellipse (note figs. 4B-C).
Regarding claim 6, Artale discloses (see above) an electrosurgical forceps wherein a ‘lockbox configuration’ (see ‘box’ around pivot ‘66’) necessarily surrounds the pivot.
Regarding claim 7, Artale discloses (see above) an electrosurgical forceps further comprising a shaft member (‘12a’ or ‘12b’) necessarily having a distal ‘clevis portion’ (see distal end of ‘box’ around pivot ‘66’), wherein the collective proximal height is taken at a position where the first jaw member emerges from the distal clevis portion (see junction between jaws and ‘box’ around pivot).
Regarding claim 8, Artale discloses (note figs. 4A-5C) an electrosurgical forceps comprising: a first jaw member (110) including a first distal tip portion and a second jaw member (120) including a second distal tip portion; a pivot (66) coupling the first and second jaw members with one another such that the first and second jaw members are movable relative to one another between an open position (see fig. 5A) and a closed position (see fig. 5B); and a ‘lockbox configuration’ (see ‘box’ around pivot ‘66’) necessarily surrounding the pivot, wherein a ratio of a length extending from a midpoint of the pivot ‘to the first distal tip portion’ to a distance from the midpoint of the pivot ‘to a distal end of the lockbox configuration’ is necessarily in a range from about 1.80 to 2.40 (necessarily met since these lengths could be measured up to a variety of locations along the jaws - see breadth of the terms “to”, “distal tip portion”, and “distal end of the lockbox configuration”).
Regarding claims 9-11, Artale discloses (see above) an electrosurgical forceps wherein the ratio is necessarily about 2.09 (as above, this ratio is necessarily met since these lengths could be measured up to a variety of locations along the jaws - see breadth of ratio and the terms “to”, “distal tip portion”, and “distal end of the lockbox configuration”).
Regarding claim 12, Artale discloses (see above) an electrosurgical forceps wherein the ‘distal end’ of the lockbox configuration ‘corresponds’ to a position at which the first jaw member emerges from a distal ‘clevis portion’ (see distal end of ‘box’ around pivot ‘66’) of a shaft member (‘12a’ or ‘12b’) of the electrosurgical forceps (see junction between jaws and ‘box’ around pivot).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
U.S. 2015/0066026 (Hart).
U.S. 2008/0312653 (Arts).
U.S. 2003/0199869 (Johnson).
U.S. 2005/0119655 (Moses).
U.S. 7,909,823 (Moses).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to THOMAS ANTHONY GIULIANI whose telephone number is (571)270-3202. The examiner can normally be reached Mon - Fri 9:00-5:00.
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, Joanne Rodden can be reached at 303-297-4276. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/THOMAS A GIULIANI/Primary Examiner, Art Unit 3794
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