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.
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of U.S. Patent No. 11,116,568. Although the claims at issue are not identical, they are not patentably distinct from each other because patent ‘568 anticipates the subject matter in the instant claims. Claim 1 recites a transoral ultrasound probe for imaging a temporomandibular joint, comprising: a handle section having a longitudinal axis (encompassed by handle in claim 1 of ‘568); an intraoral section configured to be received in a patient’s mouth, the intraoral section having a cephalad angulation such that the intraoral section is positioned at an operative angle with respect to the longitudinal axis of the handle section, the intraoral section being configured to emit and receive sound waves (encompassed by intraoral section in claim 1 of ‘568); wherein the handle and the intraoral sections are shaped and sized to provide an ergonomic configuration to the transoral ultrasound probe (encompassed by width and thickness in claim 1 of ‘568). Claim 2 is encompassed by claim 1 of ‘568. Claim 3 is encompassed by claim 5 of ‘568. Claim 4 is encompassed by claim 1 of ‘568. Claim 5 is encompassed by claim 4 of ‘568. Claim 6 is encompassed by claims 5-7 of ‘568. Claim 7 is encompassed by claim 2 of ‘568. Claim 8 is encompassed by claim 3 of ‘568. Claim 9 is encompassed by claim 1 of ‘568. Claim 10 is encompassed by claim 8 of ‘568. Claim 11 is encompassed by claim 8 of ‘568. Claim 12 is encompassed by claims 1 and 5 of ‘568. Claim 13 is encompassed by claim 1 of ‘568. Claim 14 is encompassed by claims 5-7 of ‘568. Claim 15 is encompassed by claim 1 of ‘568. Claim 16 is encompassed by claim 8 of ‘568. Claim 17 is encompassed by claim 8 of ‘568. Claim 18 is encompassed by claim 2 of ‘568. Claim 19 is encompassed by claim 3 of ‘568. Claim 20 is encompassed by claim 4 of ‘568.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5 and 7-9 of U.S. Patent No. 11,839,421. Although the claims at issue are not identical, they are not patentably distinct from each other because patent ‘421 anticipates the subject matter in the instant claims. Claim 1 recites a transoral ultrasound probe for imaging a temporomandibular joint, comprising: a handle section having a longitudinal axis (encompassed by handle in claim 1 of ‘421); an intraoral section configured to be received in a patient’s mouth, the intraoral section having a cephalad angulation such that the intraoral section is positioned at an operative angle with respect to the longitudinal axis of the handle section, the intraoral section being configured to emit and receive sound waves (encompassed by intraoral section in claim 1 of ‘421); wherein the handle and the intraoral sections are shaped and sized to provide an ergonomic configuration to the transoral ultrasound probe (encompassed by width and thickness in claim 1 of ‘421). Claim 2 is encompassed by claim 1 of ‘421. Claim 3 is encompassed by claim 3 of ‘421. Claim 4 is encompassed by claim 1 of ‘421. Claim 5 is encompassed by claim 7 of ‘421. Claim 6 is encompassed by claims 4-5 of ‘421. Claim 7 is encompassed by claim 2 of ‘421. Claim 8 is encompassed by claim 8 of ‘421. Claim 9 is encompassed by claim 1 of ‘421. Claim 10 is encompassed by claim 9 of ‘421. Claim 11 is encompassed by claim 9 of ‘421. Claim 12 is encompassed by claims 1 and 3 of ‘421. Claim 13 is encompassed by claim 1 of ‘421. Claim 14 is encompassed by claims 4-5 of ‘421. Claim 15 is encompassed by claim 1 of ‘421. Claim 16 is encompassed by claim 9 of ‘421. Claim 17 is encompassed by claim 9 of ‘421. Claim 18 is encompassed by claim 2 of ‘421. Claim 19 is encompassed by claim 8 of ‘421. Claim 20 is encompassed by claim 7 of ‘421.
Claims 1-4, 6, 8-17, and 19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 of U.S. Patent No. 12,167,887. Although the claims at issue are not identical, they are not patentably distinct from each other because patent ‘887 anticipates the subject matter in the instant claims. Claim 1 recites a transoral ultrasound probe for imaging a temporomandibular joint, comprising: a handle section having a longitudinal axis (encompassed by handle in claim 1 of ‘887); an intraoral section configured to be received in a patient’s mouth, the intraoral section having a cephalad angulation such that the intraoral section is positioned at an operative angle with respect to the longitudinal axis of the handle section, the intraoral section being configured to emit and receive sound waves (encompassed by intraoral section in claim 1 of ‘887); wherein the handle and the intraoral sections are shaped and sized to provide an ergonomic configuration to the transoral ultrasound probe (encompassed by width and thickness in claims 2 and 4 of ‘887). Claim 2 is encompassed by claim 2 of ‘887. Claim 3 is encompassed by claim 1 of ‘887. Claim 4 is encompassed by claim 4 of ‘887. Claim 6 is encompassed by claims 5-6 of ‘887. Claim 8 is encompassed by claim 3 of ‘887. Claim 9 is encompassed by claim 1 of ‘887. Claim 10 is encompassed by claim 7 of ‘887. Claim 11 is encompassed by claim 7 of ‘887. Claim 12 is encompassed by claim 1 of ‘887. Claim 13 is encompassed by claim 4 of ‘887. Claim 14 is encompassed by claims 5-6 of ‘887. Claim 15 is encompassed by claim 1 of ‘887. Claim 16 is encompassed by claim 7 of ‘887. Claim 17 is encompassed by claim 7 of ‘887. Claim 19 is encompassed by claim 3 of ‘887.
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) 1-4, 6-10, 12-16, and 18-19 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yeung (US 5,779,639).
Yeung discloses an ultrasound probe for imaging comprising a handle section (104) having a longitudinal axis (108), the handle section being configured for connection (cable; 110) to power source (col. 5, lines 10-17); and a section (102) having an angulation (106) such that the section is positioned at an operative angle with respect to the longitudinal axis of the handle section (Fig. 1), the section being configured to emit and receive sound waves (116; col. 4, lines 53-58), wherein the operative angle of the section is an acute angle (Fig. 1; col. 5, lines 5-10). Yeung discloses the angle is less than 45 degrees (col. 5, lines 5-10). Yeung discloses the angle is about 30 degrees (col. 5, lines 5-10). Yeung discloses the handle and angular section with two widths (Fig. 1). Yeung discloses a transducer aperture (116). Yeung discloses a control unit (col. 5, lines 10-19). Yeung discloses wherein the handle section and the intraoral section have substantially the same thickness (Fig. 1; wherein the handle meets the angular section).
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) 5 and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yeung (US 5,779,639).
Yeung discloses the handle section has a longitudinal length and the angular section has a length shorter than the length of the handle (Fig. 1; col. 4, line 66 to col. 5, line 5). Yeung does not teach the length is about one third-shorter. However, it would have been obvious to one of ordinary skill in the art to have modified the length of the angular section in proportion to the handle section since Yeung discloses the section is shorter than the handle section and the majority of the components are located in the handle section (col. 4, line 66 to col. 5, line 5) and a change in size is well within the skill level of one of ordinary skill in the art (MPEP 2144.04(IV)(A)).
Claim(s) 10 and 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yeung (US 5,779,639) in view of Barthe et al. (US 2012/0016239).
Yeung discloses the subject matter substantially as claimed except for wherein the power source is a least one battery. However, Barthe et al. teaches in the same field of endeavor the power supply may be a battery or any other alternative source ([0150]). Therefore, it would have been obvious to one of ordinary skill in the art to have provided Yeung with a battery as taught by Barth et al. as a substitution of one power source for another is well within the skill level of one of ordinary skill in the art.
Response to Arguments
Applicant's arguments filed 9/21/2026 have been fully considered but they are not persuasive.
Applicant’s arguments with respect to claim rejections under double patenting have been considered but they are not persuasive. Applicant’s arguments fail to overcome the rejection, therefore, the rejection stands.
In response to applicant's argument that the invention is not transoral, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
Applicant's arguments fail to comply with 37 CFR 1.111(b) because they amount to a general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references.
Applicant’s argument with respect to claim limitations on ergonomics and size have been considered but they are not persuasive. The Examiner notes the claims fails to recite specific dimensions. The Examiner further notes the claimed limitation of greater than or larger than or about one third shorter are relative terminologies with specific dimensions that are not set forth. Applicant further argues size in respect to intended use, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. In this case, the reference probe is capable for the same intended use when used in a large mammal.
Applicant's arguments fail to comply with 37 CFR 1.111(b) because they amount to a general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references.
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, Barthe et al. teaches a battery as a source of power. The Examiner’s position is that one of ordinary skill in the art is capable of substituting one power source for another. The Examiner notes that the claim recites “wherein power source is at least one battery connected to the handle section”. Under broadest reasonable interpretation, connected to encompasses a wired connection.
Conclusion
THIS ACTION IS MADE FINAL. 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 PETER LUONG whose telephone number is (571)270-1609. The examiner can normally be reached M-F 9-6.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Anhtuan T Nguyen can be reached at (571)272-4963. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PETER LUONG/Primary Examiner, Art Unit 3797
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