DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Claim Objections
Claim 1 is objected to because of the following informalities: the limitation recites “the motor is configured rotate” in line 4 which is believed should recite “the motor is configured to rotate” (emphasis added). Appropriate correction is required.
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 1-15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of U.S. Patent No. 12137919B2, referred to herein as Pat. ‘919. Although the claims at issue are not identical, they are not patentably distinct from each other because:
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of Pat. ‘919. Pat. ‘919 recites a bone, cartilage, and disk removal tool assembly. Specifically in regards to claim 1, Pat. ‘919 recites a housing [claim 1 col. 11 line 25]; a motor mounted in the housing [claim 1 col. 11 line 26-27]; a cam mechanism having a plurality of cam profiles, wherein the motor is configured rotate the cam mechanism [claim 1 col. 11 line 28-31]; a follower mechanism mounted for rotation in the housing, the follower mechanism including a plurality of follower profiles, each follower profile configured to engage one of the plurality of cam profiles [claim 1 col. 11 line 32-42]; and a spindle mounted to the housing in engagement with the follower mechanism for providing a rotary oscillating cutting operation [claim 1 col. 11 line 43-45], wherein the follower profiles prevent over-rotation of the spindle [claim 1 col. 11 line 46-47].
Claim 2-6 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 2-6 of Pat. ‘919 for reciting substantially similar limitations.
Claim 7-8 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 7-8 of Pat. ‘919. Pat. ‘919 recites a bone, cartilage, and disk removal tool assembly. Specifically in regards to claim 7-8, Pat. ‘919 recites: a housing [claim 7 col. 12 line 12]; a motor mounted in the housing [claim 12 col. 12 line 12-14]; a spindle mounted for rotation to the housing [claim 12 col. 12 line 15]; and a cam and follower mechanism operably driven by the motor and connected to the spindle to oscillate the spindle for providing a rotary oscillating cutting operation [claim 7 col. 12 line 16-20]; wherein the follower profiles prevent over-rotation of the spindle [claim 7 col. 12 line 27-28]; and wherein the cam and follower mechanism further includes: a plurality of cams supported in the housing and driven for rotation by the motor; a plurality of followers mounted for rotation to the housing with the spindle, in engagement with the plurality of cams so that rotation of the plurality of cams oscillates the plurality of followers [claim 12 col. 12 line 21-26].
Claim 9-15 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 8-14 of Pat. ‘919 for reciting substantially similar limitations.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Yedlicka et al (US Patent Pub. 20070282344A1) was considered in regards to the claims since it discloses a cutting instrument having cams and followers however it does not recite wherein the follower surfaces prevent over-rotation of the spindle device.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARCELA I SHIRSAT whose telephone number is (571)270-5269. The examiner can normally be reached M-F 9:00am-5:30pm MST.
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/MARCELA I. SHIRSAT/ Primary Examiner, Art Unit 3775