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 .
Response to Amendment
In response to the amendment filed on 01/08/2025, Claim 1 has been cancelled, and Claims 2-19 are pending.
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 1-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6, 8-14, and 17-20 of U.S. Patent No. 12,186,038. Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding Present Claim 2, Claim 8 of Pat ‘038 discloses a medical device, comprising:
a clevis, an instrument tip, an end effector, and a tip cover (Column 20, Line 8),
the clevis comprising a proximal end portion and a distal end portion, the distal end portion of the clevis supporting the end effector, the proximal end portion including a locking protrusion disposed between the distal end portion and the proximal end portion of the clevis (Column 20, Lines 9-14),
the tip cover being mounted over at least the clevis (Column 20, Line 21), the tip cover comprising a first shoulder portion and a second shoulder portion, each of the first shoulder portion and the second shoulder portion protrudes from an inner surface of the tip cover (Column 20, Lines 22-26),
the first shoulder portion including a proximal contact surface, the proximal contact surface defining a proximal travel limit of the tip cover relative to the clevis (Column 20, Lines 27-30),
the second shoulder portion including a distal contact surface, the distal contact surface defining a distal travel limit of the tip cover relative to the clevis (Column 20, Lines 31-33), and
the locking protrusion of the clevis positioned such that as the tip cover moves between the proximal travel limit and the distal travel limit, and the locking protrusion is maintained between the first shoulder portion and the second shoulder portion (Column 20, Lines 34-38).
Regarding Present Claim 3, Claim 9 of Pat ‘038 discloses the medical device of claim 2, wherein:
the instrument tip defines a longitudinal axis; and
the distal contact surface of the second shoulder portion is perpendicular to the longitudinal axis.
Regarding Present Claim 4, Claim 10 of Pat ‘038 discloses the medical device of claim 3, wherein the proximal contact surface of the first shoulder portion is perpendicular to the longitudinal axis.
Regarding Present Claim 5, Claim 11 of Pat ‘038 discloses the medical device of claim 2, wherein the end effector comprises a blade set.
Regarding Present Claim 6, Claim 12 of Pat ‘038 discloses the medical device of claim 5, wherein the blade set comprises monopolar-curved scissors.
Regarding Present Claim 7, Claim 13 of Pat ‘038 discloses the medical device of claim 2, wherein the tip cover comprises an electrically non- conductive material.
Regarding Present Claim 8, Claim 14 of Pat ‘038 discloses the medical device of claim 2, wherein the tip cover comprises a polyurethane thermoplastic elastomer.
Regarding Present Claim 9, Claim 17 of Pat ‘038 discloses a medical device, comprising:
a clevis, an instrument tip, an end effector, and a tip cover (Column 20, Lines 61),
the clevis comprising a proximal end portion and a distal end portion, the distal end portion of the clevis supporting the end effector, and the proximal end portion of the clevis being coupled to the instrument tip (Column 20, Lines 62-65),
the tip cover being mounted over at least the clevis, the tip cover comprising (Column 20, Lines 66-67) a shoulder portion and a proximal protrusion (Column 21, Lines 1-2),
the shoulder portion protruding from an inner surface of the tip cover (Column 21, Lines 3-4),
the shoulder portion including a proximal contact surface, the proximal contact surface defining a proximal travel limit of the tip cover relative to the clevis (Column 21, Lines 5-8), and
the proximal protrusion configured to engage an outer circumferential surface of the instrument tip when the tip cover is at the proximal travel limit (Column 21, Lines 12-14).
Regarding Present Claim 10, Claim 18 of Pat ‘038 discloses the medical device of claim 9, wherein the tip cover comprises an electrically non- conductive material.
Regarding Present Claim 11, Claim 19 of Pat ‘038 discloses the medical device of claim 9, wherein the tip cover comprises a polyurethane thermoplastic elastomer.
Regarding Present Claim 12, Claim 20 of Pat ‘038 discloses the medical device of claim 9, wherein the end effector comprises monopolar-curved scissors.
Regarding Present Claim 13, Claim 20 of Pat ‘038 discloses the medical device of claim 9, wherein the end effector comprises a blade set (scissors are reasonably considered blade set).
Regarding Present Claim 14, Claim 1 of Pat ‘038 discloses a medical device, comprising:
an end effector body configured to support an end effector, the end effector body defining a longitudinal axis and comprising a protrusion extending in a direction perpendicular to the longitudinal axis (Column 19, Lines 21-24); and
a tip cover movably mounted onto the end effector body (Column 19, Lines 25), the tip cover comprising a first shoulder portion, a second shoulder portion, and a circumferential interior surface extending between the first shoulder portion and the second shoulder portion, each of the first shoulder portion and the second shoulder portion extending from an inner surface of the tip cover (Column 19, Lines 30-39),
the tip cover being movably mounted on the end effector body to move relative to the end effector body along the longitudinal axis such that the protrusion contacts the circumferential interior surface between the first shoulder portion and the second shoulder portion between a distal travel limit and a proximal travel limit (Column 19, Lines 40-46).
Regarding Present Claim 15, Claim 2 of Pat ‘038 discloses the medical device of claim 14, wherein:
the distal travel limit is defined by the protrusion abutting the first shoulder portion such that the first shoulder portion prevents the tip cover from moving past the distal travel limit; and
the proximal travel limit is defined by the protrusion abutting the second shoulder portion such that the second shoulder portion prevents the tip cover from moving past the proximal travel limit.
Regarding Present Claim 16, Claim 3 of Pat ‘038 discloses the medical device of claim 14, wherein:
the first shoulder portion comprises a proximal contact surface, the proximal contact surface being perpendicular to the longitudinal axis; and
the second shoulder portion comprises a distal contact surface, the distal contact surface being perpendicular to the longitudinal axis.
Regarding Present Claim 17, Claim 4 of Pat ‘038 discloses the medical device of claim 14, wherein the end effector comprises a blade set.
Regarding Present Claim 18, Claim 5 of Pat ‘038 discloses the medical device of claim 17, wherein the blade set comprises monopolar-curved scissors.
Regarding Present Claim 19, Claim 6 of Pat ‘038 discloses the medical device of claim 14, wherein the tip cover comprises an electrically non- conductive material.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MOHAMED GAMIL GABR whose telephone number is (571)272-0569. The examiner can normally be reached M-F 9am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jackie Ho can be reached at (571) 270-5953. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MOHAMED G GABR/Primary Examiner, Art Unit 3771
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