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 .
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 5-9 and 13-25 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6, 8-11, and 13-14 of U.S. Patent No. 12,343,089. Although the claims at issue are not identical, they are not patentably distinct from each other because patent ‘089 anticipates the subject matter in the instant claims. Claim 5 recites a method comprising: receiving, at a controller (encompassed by controller in claim 1 of ‘089), in real time, a first data regarding a first surgical instrument operating on a target tissue at a surgical treatment site within a patient (encompassed by first sensor in claim 1 of ‘089), wherein the first data comprises a first magnitude and a first direction of a first tissue load applied by the first surgical instrument to the target tissue (encompassed by first magnitude and direction in claim 1 of ‘089); receiving, at the controller, in real time, a second data regarding a second surgical instrument anchoring the first surgical instrument at the surgical treatment site relative to the target tissue (encompassed by second sensor in claim 1 of ‘089), wherein the second data comprises a second magnitude and a second direction of a second tissue load applied by the first surgical instrument to the target tissue (encompassed by second magnitude and direction in claim 1 of ‘089); determining, at the controller, based at least the first data received regarding the first surgical instrument and the second data regarding the second surgical instrument, a total amount of tissue load being applied to the target tissue by the first surgical instrument and the second surgical instrument (encompassed by total amount of tissue load in claim 1 of ‘089); and applying, using the controller, limits to the first tissue load and the second tissue load of the first surgical instrument and the second surgical instrument respectively on the target tissue to maintain the total amount of tissue load on the target tissue below a predefined threshold (encompassed by apply limits to tissue load in claim 1 of ‘‘089). Claim 6 is encompassed by claim 1 of ‘089. Claim 7 is encompassed by claim 1 of ‘089. Claim 8 is encompassed by claim 5 of ‘089. Claim 9 is encompassed by claim 6 of ‘089. Claim 13 is encompassed by claim 9 of ‘‘089. Claim 14 is encompassed by claim 2 of ‘089. Claim 15 is encompassed by claim 3 of ‘089. Claim 16 is encompassed by claim 4 of ‘089. Claim 17 is encompassed by claim 8 of ‘089. Claim 18 is encompassed by claim 1 of ‘089. Claim 19 is encompassed by claim 10 of ‘‘089. Claim 20 is encompassed by claim 11 of ‘089. Claim 21 is encompassed by claim 13 of ‘089. Claim 22 is encompassed by claim 1 of ‘089. Claim 23 is encompassed by claim 14 of ‘089. Claim 24 is encompassed by claim 14 of ‘‘089. Claim 25 is encompassed by claim 14 of ‘089.
Response to Arguments
Applicant's arguments filed 4/7/2026 have been fully considered but they are not persuasive.
Applicant’s arguments with respect to the double patenting rejection have been considered but they are not persuasive as the amendment has omitted the terminal disclaimer. Therefore, the double patenting rejection stands.
Applicant’s arguments, see page 5, filed 4/7/2026, with respect to claim rejections under 35 USC 112b have been fully considered and are persuasive. The rejection of claims 6-9 has been withdrawn.
Conclusion
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PETER LUONG whose telephone number is (571)270-1609. The examiner can normally be reached M-F 9-6.
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, Anhtuan T Nguyen can be reached at (571)272-4963. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PETER LUONG/Primary Examiner, Art Unit 3797
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