The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
DETAILED ACTION
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 2-4, 6, 8-9, 15-18, 22, and 26 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 2 recites one or more magnets arranged at the attachment portion and claim 5 recite a corresponding magnet sensor located at the cannula mount. It is unclear as to whether the magnets and the magnet sensor is an integral part of the attachment portion and the cannula mount respectively.
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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 2-9, 15-18, and 22-26 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sjostrom et al, US Patent No. 5,749,885.
As best understood by the examiner, Sjostrom et al disclose a surgical instrument with embedded coding element comprising: four magnets embedded within holes of a plastic hub of the surgical instrument; and a set of sensors mounted in walls of a hand-piece of the surgical instrument, wherein the sensors detects at least one of a presence or absence of the magnets and a code by the position of a polarity of magnets which indicate a set of operating conditions of the surgical instrument (See column 3, line 56 - column 8, line 67; claims 1-33; figures 1-16); the sensors detect at least one of a presence or absence of the magnets and a code by position of a polarity of magnets which indicate a set of operating conditions of the surgical instrument (See column 3, line 56 - column 6, line 47; figures 1-3D), the magnets and sensors can be easily applied to the cannula and surgical system; a cylindrical wall of the hub of the surgical instrument engageable with a cylindrical chamber in the hand-piece, wherein the magnets are located in the hub (See column 3, line 56 - column 6, line 47; figures 1-3D); the hub of the surgical instrument engageable with the cylindrical chamber in the hand-piece (See column 3, line 56 - column 6, line 47; figures 1-3D); a round plastic cap covering the magnets (See column 6, lines 4-28; figures 3A-3B); Sjostrom et al further disclose the sensors being Hall effect devices (See column 5, lines 34-36), that a set of sensors detects at least one of a presence or absence of the magnets and a code by position of a polarity of magnets which indicate a set of operating conditions of the surgical instrument (See column 3, line 56 - column 6, line 47; figures 1-3D); the sensor group comprising the presence and polarity sensors and the unipolar polarity sensors, and the reader comprising the omni polar polarity or the magnetic field direction sensor, that the sensors detect the presence or the absence of the magnets for receiving a set of operating conditions of the surgical instrument (See column 3, line 56 - column 6, line 47; figures 1-3D), that the position of the magnet has any of three coding states: magnet absent, magnet present with north (N) pole facing radially outwardly, and magnet present with south (S) pole facing radially outwardly (See column 5, lines 34-43; figures 1-3D).
Sjostrom et al fail to disclose that the attachment portion protruding radially outward from one side of the bowl portion, including the specific position of each sensor, each and every type of sensor, the specific number of sensors, material, shape, size, etc., and the specific components of a patient side cart and the magnet and a reader applied to the cannula and an arm.
However, these limitations are either a matter of choices for meeting specific customer requirements, a duplication of elements for achieving a required results. Furthermore, the components of the patient side cart are auxiliary technical features derived by a person skilled in the art. Also, considering that the sensors detects at least one of a presence or absence of the magnets and a code by position of a polarity of magnets which indicate a set of operating conditions of the surgical instrument (See column 3, line 56 - column 6, line 47; figures 1-3D), the magnet and the reader can be easily applied to the cannula and the arm by a person skilled in the art.
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 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.
Claims 2-9, 15-18, and 22-26 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of U.S. Patent No. 12,138,130 (hereinafter ‘130 Patent). Although the claims at issue are not identical, they are not patentably distinct from each other because instant claimed invention is a broader recitation of the ‘1303 Patent. For instance, in claim 2 of the current application and in the ‘343 Patent, the applicant claims:
Applicant No. 18/935,961
Patent No. 12,138,130
A cannula for insertion of a medical instrument, the cannula comprising: a bowl portion; a tube portion extending distally from the bowl portion; and an attachment portion protruding radially outward from one side of the bowl portion, the attachment portion insertable into a receptacle of a cannula mount to mount the cannula in a position to permit removable insertion of the medical instrument through the tube portion, wherein the attachment portion comprises one or more magnets arranged to encode identifying information of the cannula.
A cannula for insertion of a medical instrument, the cannula comprising: a tube portion; and an attachment portion coupled to the tube portion and insertable into a receptacle of a cannula mount to mount the cannula in a position to permit removable insertion of the medical instrument through the tube portion; and one or more magnets arranged at the attachment portion and configured to encode identifying information of the cannula, wherein the attachment portion comprises a plurality of encoding positions that each indicate part of the identifying information; and wherein for each encoding position of the plurality of encoding positions, absence of one of the one or more magnets at the respective encoding position indicates a first value, presence of one of the one of the magnets with a first orientation at the respective encoding position indicates a second value, and presence of one of the one of the magnets with a second orientation at the respective encoding position indicates a third value.
Thus, in respect to above discussions, it would have been obvious to an artisan at the time the invention was made to use the teaching of claims 1-14 of the ‘130 Patent as a general teaching for a cannula for insertion instrument, to perform the same function as claimed in the present invention. The instant claims obviously encompass the claimed invention of the ‘130 Patent and differ only in terminology. The extent that the instant claims are broaden and therefore generic to claimed invention of ‘130 Patent [species], In re Goodman 29 USPQ 2d 2010 CAFC 1993, states that a generic claim cannot be issued without a terminal disclaimer, if a species claim has been previously been claimed in a co-pending application.
The obviousness-type double patenting rejection is a judicially established doctrine based upon public policy and is primarily intended to prevent prolongation of the patent term by prohibiting claims in a second patent not patentably distinct from the claims in a first paten. IN re Vogel, 164 USPQ 619 (CCPA 1970). A timely filed terminal disclaimer in compliance with 37 C.F.R. & 1.321(b) would overcome an actual or provisional rejection on this ground provided the conflicting application or patent is shown to be commonly owned with this application. See 37 C>FR> &1.78(d).
Response to Arguments
Applicant's arguments filed 12/05/25 have been fully considered but they are not persuasive. See examiner remarks.
Remarks:
After further considerations in argument the prior art rejection for claims 5, 7, and 23-25 has been withdrawn.
Regarding claim 2, as best understood by the examiner, the prior art still render claim obvious. It is not clear how the magnets are arranged at the attachment portion. The claim remain rejected as set forth above. With respect to the specific materials or the size of the equipment, such limitations are matters of choice for meeting specific customer requirements. In view of the argument, the prior art rejection of claim 5, has been withdrawn. The claims remain rejection under double patent rejection, a terminal disclaimer is required. The applicant’s general argument is not persuasive. Refer to the rejection above.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 DANIEL ST CYR whose telephone number is (571)272-2407. The examiner can normally be reached on M to F 8:00-8:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael G Lee can be reached on 571-272-2398. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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DANIEL . ST CYR
Examiner
Art Unit 2876
DS
/DANIEL ST CYR/
Primary Examiner, Art Unit 2876