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.
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Claims 29 and 42 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 13 and 14 of U.S. Patent No. 12,245,773 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the difference between the application claims and the patent claims lies in the fact that the patent claims include more elements and are thus much specific. Thus the invention of the patent claims are in effect a “species” of the “generic” invention of the application claims. It has been held that the generic invention is “anticipated” by the “species”. See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Since the application claims are anticipated by the patent claims, they are not patentably distinct from the patent claims.
In the case, claims 29 or 42 of the current application requires housing, mechanical spring, motor and a trigger.
In the US patent, claim 1, discloses a motor and mechanical spring, claim 13 discloses a trigger, and claim 14 discloses a housing.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 29 – 38 and 40 – 46 is/are rejected under 35 U.S.C. 102(a)(1)/102(a)(2) as being anticipated by Donald et al. (US Pub. 2015/0196343 A1).
Claim 29, Donald discloses a surgical tool [abstract, Figs. 1 – 15], comprising:
a housing [at least a portion of 10];
a mechanical spring [at least one of springs 70] housed by the housing [i.e. Fig.3] and configured to move between a compressed configuration and a decompressed configuration, wherein the mechanical spring in the compressed configuration is configured to store potential energy [¶64 - ¶70]; and
a trigger configured to be actuated [at least one of switches 11, 18, 19, 20 and 22, ¶63];
wherein the actuation of the trigger is configured to cause the mechanical spring to move from the compressed configuration to the decompressed configuration to release the potential energy [¶79 - ¶85];
the release of the potential energy is configured to cause the surgical tool to provide an impact force to a surgical target [¶15, ¶19 and claim 1];
the impact force is in a user-selected one of a forward direction relative to the surgical target and a rearward direction relative to the surgical target [¶69 - ¶70, downward and upward directions. Note: the claim is understood as requiring only one direction from the claimed forward and rearward directions];
the impact force is configured to be user-selected in the forward direction by a user applying a force to the surgical tool in the forward direction [¶69, downward directions]; and
the impact force is configured to be user-selected in the rearward direction by a user applying a force to the surgical tool in the rearward direction [¶70, upward directions].
Donald discloses the limitations of claim 29, as above, and further, Donal discloses:
Claim 30, wherein the impact force is a single impact force [¶84 - ¶85, single mode].
Claim 31, wherein the impact force is multiple impact forces [¶84 - ¶85, continuous mode].
Claim 32, a rotatable element housed by the housing [the combination of drive shafts 42 and 48, and/or the combination of shafts 50 and 54, define at least a rotatable element housed in 10];
wherein the rotatable element is configured to rotate in a first direction relative to the housing with the user-selected force being the forward direction [¶69 - ¶70, downward and upward directions]; and
the rotatable element is configured to rotate in a second direction relative to the housing with the user-selected force being the rearward direction [¶69 - ¶70, downward and upward directions].
Claim 33, wherein the mechanical spring includes a first mechanical spring and a second mechanical spring [¶66, two springs 70];
with the user-selected force being the forward direction, the actuation of the trigger is configured to cause the first mechanical spring to move from the compressed configuration to the decompressed configuration to release the potential energy [¶69, downward directions]; and
with the user-selected force being the rearward direction, the actuation of the trigger is configured to cause the second mechanical spring to move from the compressed configuration to the decompressed configuration to release the potential energy [¶70, upward directions].
Claim 34, a motor configured to drive the rotation of the rotatable element [the combination of motors 40 and 46, define at least one motor].
Claim 35, a sensor configured to detect the force applied to the surgical tool [¶71 - ¶72].
Claim 36, an electronic controller [¶77, i.e. circuit board 92 including at least a processor and memory]; and
a rotatable element housed by the housing [the combination of drive shafts 42 and 48, and/or the combination of shafts 50 and 54, define at least a rotatable element housed in 10];
wherein the electronic controller is configured to cause the rotatable element to rotate in a first direction relative to the housing with the force applied to the surgical tool being detected to be in the forward direction [¶69, downward directions]; and
the electronic controller is configured to cause the rotatable element to rotate in a second direction relative to the housing with the force applied to the surgical tool being detected to be in the rearward direction [¶70, upward directions].
Claim 37, a motor configured to drive the rotation of the rotatable element [the combination of, or at least one of motors 40 and 46, define at least one motor].
Claim 38, a handle configured to allow user handling of the surgical tool [at least a gripping portion of housing 10 defines a handle].
Claim 40, wherein the mechanical spring includes a first mechanical spring and a second mechanical spring [¶66, two springs 70].
Claim 41, wherein the mechanical spring includes a single mechanical spring [¶66, at least one spring 70].
Claim 42, Donald discloses a surgical tool [abstract, Figs. 1 – 15], comprising:
a housing [at least a portion of 10];
a mechanical spring [at least one of springs 70] housed by the housing [i.e. Fig.3] and configured to move between a compressed configuration and a decompressed configuration, wherein the mechanical spring in the compressed configuration is configured to store potential energy [¶64 - ¶70];
a motor [the combination of, or at least one of motors 40 and 46, define at least one motor] configured to drive the storing of the potential energy in the mechanical spring and to drive release of the potential energy from the mechanical spring [¶64 - ¶70]; and
a trigger configured to be actuated [at least one of switches 11, 18, 19, 20 and 22, ¶63] and thereby cause the mechanical spring to move from the compressed configuration to the decompressed configuration to release the potential energy [¶69 - ¶70, downward and upward directions];
wherein the release of the potential energy is configured to cause the surgical tool to provide an impact force to a surgical target [¶15, ¶19 and claim 1]; and
the potential energy is configured to be stored in the mechanical spring prior to the actuation of the trigger that causes the mechanical spring to move from the compressed configuration to the decompressed configuration [¶79 - ¶85].
Donald discloses the limitations of claim 42, as above, and further, Donal discloses:
Claim 43, a gear [the combination of drive shafts 42 and 48, and/or the combination of shafts 50 and 54, define at least a gear housed in 10];
wherein the mechanical spring includes a first mechanical spring and a second mechanical spring [¶66, two springs 70];
rotation of the gear in a first direction is configured to cause the first mechanical spring, but not the second mechanical spring, to move from the compressed configuration to the decompressed configuration [¶69 - ¶70, downward and upward directions];
rotation of the gear in a second direction is configured to cause the second mechanical spring, but not the first mechanical spring, to move from the compressed configuration to the decompressed configuration [¶69 - ¶70, downward and upward directions]; and
the first and second directions are opposite to one another [Fig.3, ¶69 - ¶70, to cause the downward and upward movement].
Claim 44, wherein the first and second mechanical springs are aligned along a longitudinal axis [Fig.3, springs 70 aligned longitudinally]; the impact force is configured to be provided along the longitudinal axis [¶69 - ¶70, downward and upward directions]; and the gear is offset from the longitudinal axis [Fig.5].
Claim 45, wherein the mechanical spring includes a single mechanical spring [¶66, at least one spring 70].
Claim 46, wherein the impact force is in a user-selected one of a forward direction relative to the surgical target and a rearward direction relative to the surgical target [¶69 - ¶70, downward and upward directions].
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 39 is/are rejected under 35 U.S.C. 103 as being unpatentable over Donald et al. (US Pub. 2015/0196343 A1) in view of Malackowski et al. (US Pub. 2014/0200621 A1).
Claim 39, Donal discloses the limitations of claim 29, as above.
Donald does not disclose a mount interface configured to allow the surgical tool to be mounted to a robot.
Malackowski teaches an analogous tool [abstract, Figs. 1 – 3] comprising a mount interface [at least a portion of 56] configured to allow a surgical tool [22] to be mounted to a robot [Fig.3, ¶14, ¶76, ¶87 and ¶217 - ¶218].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the current application to combine the teachings of Donald and Malackowski, and provide a mount interface to mount the tool of Donald to a robot in view of Malackowski. One would have been motivated to do so in order to automate the manipulation of the tool relative to a subject .
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SAMUEL S. HANNA whose telephone number is (571)270-3248. The examiner can normally be reached 8-5 M-F.
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/SAMUEL S HANNA/Primary Examiner, Art Unit 3775