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 .
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) 16-19 and 30 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Peterson (US 20160022256 A1).
Regarding claim 16, Peterson discloses a surgical instrument (10) (Figure 1), comprising:
a base unit (14) (Figure 1; Paragraph 0018);
a probe (22) disposed through a base unit opening (opening at 20) in a distal end (94) of the base unit (Figure 1; Paragraph 0019);
a stiffener (26) formed of a hollow tubular member slidably coupled to and surrounding at least a portion of the probe (Figure 1; Paragraph 0019), wherein the stiffener comprises an annular flange (48) integral with or affixed to the stiffener (Figure 1; Paragraph 0023);
a first biasing device (38) (Figure 1; Paragraph 0023);
a de-coupler (82) (Figure 1; Paragraph 0028); and
wherein the first biasing device is configured to apply a first biasing force through the de-coupler, against the annular flange of the stiffener in a distal direction to extend the stiffener along a length of the probe in the distal direction (Paragraph 0023).
Regarding claim 17, Peterson further discloses wherein the base unit is configured to be held by a user (Paragraph 0018); wherein the probe has a length parallel to a probe longitudinal axis thereof (Figure 1; Paragraph 0019); and wherein the stiffener is disposed through the base unit opening in the base unit (Figure 1; Paragraph 0021).
Regarding claim 18, Peterson further discloses wherein the probe is a vitrectomy probe (Paragraph 0003).
Regarding claim 19, Peterson further discloses wherein the probe is an illuminator probe (Paragraph 0003).
Regarding claim 30, Peterson further discloses wherein: the stiffener further comprises a keying feature (Paragraph 0028); and the base unit opening in the distal end (94) of the base unit is configured to operatively engage the keying feature to prevent rotation of the stiffener (Paragraph 0028) (according to the present spec [0047], the keying feature can be a protrusion, and Peterson discloses “In some constructions the first end 94 and/or the reinforcing slider 26 include additional features (e.g., protrusions, bumps, etc.) to ensure positive engagement between the first end 94 and the reinforcing slider 26.”).
Allowable Subject Matter
Claims 20-29 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
Regarding claim 20, Peterson discloses the surgical instrument of claim 17 and further discloses a control member (90) configured to lock the stiffener in position (Figure 4; Paragraph 0028); wherein the de-coupler is configured to interact with the control member (Paragraph 0028-29); wherein the de-coupler comprises a de-coupler opening (area for receiving 90) and wherein the de-coupler opening comprises a de-coupler channel (lumen of 90) (Figure 2, 4) but fails to disclose wherein the control member comprises a protrusion configured to operatively engage the de-coupler opening of the de-coupler to lock the stiffener in position, the control member and the protrusion having a control member longitudinal axis perpendicular to the probe longitudinal axis of the probe.
Since the control member 90 is a spring, it would not be obvious to one of ordinary skill in the art to have modified the spring to include protrusions, as it is not common in the art and would not serve a benefit to the function of the device. As such, claim 20 is indicated as allowable subject matter, and claims 21-29 which depend on this claim are indicated as allowable due to their dependence on claim 20.
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 16-30 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 and 6-16 of U.S. Patent No. US 12186236 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims are directed to the same subject matter.
Regarding claim 16, claim 1 of US 12186236 B2 claims a surgical instrument, comprising (Col 17, line 2):
a base unit (Col 17, line 3);
a probe disposed through a base unit opening in a distal end of the base unit (Col 17, line 4);
a stiffener formed of a hollow tubular member slidably coupled to and surrounding at least a portion of the probe, wherein the stiffener comprises an annular flange integral with or affixed to the stiffener (Col 17, line 7-10; 20-23);
a first biasing device (Col 17, line 15);
a de-coupler (Col 17, line 16); and
wherein the first biasing device is configured to apply a first biasing force through the de-coupler, against the annular flange of the stiffener in a distal direction to extend the stiffener along a length of the probe in the distal direction (Col 17, line 24-29).
Regarding claim 16, claim 6 of US 12186236 B2 claims a surgical instrument, comprising (Col 17, line 44):
a base unit (Col 17, line 45);
a probe disposed through a base unit opening in a distal end of the base unit (Col 17, line 46);
a stiffener formed of a hollow tubular member slidably coupled to and surrounding at least a portion of the probe, wherein the stiffener comprises an annular flange integral with or affixed to the stiffener (Col 17, line 49-52, 58-59);
a first biasing device (Col 17, line 56);
a de-coupler (Col 17, line 57); and
wherein the first biasing device is configured to apply a first biasing force through the de-coupler, against the annular flange of the stiffener in a distal direction to extend the stiffener along a length of the probe in the distal direction (Col 17, line 60-62).
Regarding claim 17, claim 6 of US 12186236 B2 claims wherein the base unit is configured to be held by a user (Col 17, line 45); wherein the probe has a length parallel to a probe longitudinal axis thereof (Col 17, line 47-48); and wherein the stiffener is disposed through the base unit opening in the base unit (Col 17, line 49-50).
Regarding claim 20, claim 6 of US 12186236 B2 claims a control member configured to lock the stiffener in position (Col 17, line 63-64); wherein the de-coupler is configured to interact with the control member (Col 17, line 65-66); wherein the de-coupler comprises a de-coupler opening and wherein the de-coupler opening comprises one or more through holes or a de-coupler channel (Col 17, line 67-Col 18, line 2); and wherein the control member comprises a protrusion configured to operatively engage the de-coupler opening of the de-coupler to lock the stiffener in position, the control member and the protrusion having a control member longitudinal axis perpendicular to the probe longitudinal axis of the probe (Col 18, line 5-10).
Regarding claim 21, claim 7 of US 12186236 B2 claims wherein the control member is partially disposed within a base unit channel formed in the base unit and the base unit channel is formed along the control member longitudinal axis (Col 18, line 11-14).
Regarding claim 22, claim 8 of US 12186236 B2 claims wherein pushing the control member along the base unit channel operatively engages the one or more through holes of the de-coupler (Col 18, line 16-18).
Regarding claim 23, claim 9 of US 12186236 B2 claims wherein the control member further comprises a control member biasing device, and wherein the control member biasing device is: disposed in the base unit channel formed in the base unit, and configured to apply a control member biasing force against the control member in a direction radially-outward from the de-coupler (Col 18, line 19-26).
Regarding claim 24, claim 10 of US 12186236 B2 claims wherein: the control member further comprises a flange, the control member biasing device is a spring, and the control member biasing force is applied against the flange of the control member (Col 18, line 27-32).
Regarding claim 25, claim 11 of US 12186236 B2 claims wherein the de-coupler opening of the de-coupler further comprises a groove extending in a direction that is perpendicular to the probe longitudinal axis of the probe (Col 18, line 33-36).
Regarding claim 26, claim 12 of US 12186236 B2 claims wherein the protrusion of the control member comprises a shaft with a notch configured to operatively engage the de-coupler opening of the de-coupler (Col 18, line 37-40).
Regarding claim 27, claim 13 of US 12186236 B2 claims wherein the de-coupler is configured to move about the probe longitudinal axis of the probe when rotated about the probe longitudinal axis, the notch of the control member is configured to operatively engage the groove of the de-coupler when the stiffener is rotated in a first direction, and the notch of the control member is configured to operatively disengage the groove of the de-coupler when the stiffener is rotated in a second direction (Col 18, line 41-51).
Regarding claim 28, claim 14 of US 12186236 B2 claims: the control member is partially disposed within a guide channel formed in the base unit and the guide channel is formed about the probe longitudinal axis of the probe, the control member is configured to move about the probe longitudinal axis when slid along the guide channel, the notch of the control member is configured to operatively engage the groove of the de-coupler when the control member is slid in a first direction, and the notch of the control member is configured to operatively disengage the groove of the de-coupler when the control member is slid in a second direction (Col 18, line 52-65).
Regarding claim 29, claim 15 of US 12186236 B2 claims wherein the guide channel is a linear channel or a curved channel (Col 18, line 66-67).
Regarding claim 16, claim 16 of US 12186236 B2 claims a surgical instrument, comprising (Col 19, line 1):
a base unit (Col 19, line 2);
a probe disposed through a base unit opening in a distal end of the base unit (Col 19, line 3);
a stiffener formed of a hollow tubular member slidably coupled to and surrounding at least a portion of the probe, wherein the stiffener comprises an annular flange integral with or affixed to the stiffener (Col 19, line 6-9; 15-19);
a first biasing device (Col 19, line 13);
a de-coupler (Col 19, line 14); and
wherein the first biasing device is configured to apply a first biasing force through the de-coupler, against the annular flange of the stiffener in a distal direction to extend the stiffener along a length of the probe in the distal direction (Col 19, line 16-19).
Regarding claim 30, claim 16 of US 12186236 B2 claims wherein the stiffener further comprises a keying feature (Col 19, line 21); and
the base unit opening in the distal end of the base unit is configured to operatively engage the keying feature to prevent rotation of the stiffener (Col 19, line 22-24).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ZEHRA JAFFRI whose telephone number is (571)272-7738. The examiner can normally be reached 8 AM-5:30 PM.
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/Z.J./Examiner, Art Unit 3771
/KATHERINE H SCHWIKER/Primary Examiner, Art Unit 3771
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