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 . In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Specification
The disclosure is objected to because the first paragraph does not provide the most current status for a related application. That is, the parent application is referenced as a U.S. application even though it has issued as a patent. The paragraph should be amended to include the appropriate patent number.
Claim Objections
Claim 14 is objected to because of the following informalities: the ‘/’ at the end of line 6 should be deleted. Appropriate correction is required.
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 8-18 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 8 recites the limitation "said second hollow tubular member" in line 6. There is insufficient antecedent basis for this limitation in the claim.
Claim 8 recites the limitation "a non-conductive insulating material" in lines 10-11. The antecedent basis for this limitation is confusing, since it’s unclear how/whether it’s related to the previously-recited ‘heat shrinkable sleeve’ and ‘protective layer’. Appropriate correction is required.
Claim 9 recites the limitation "a cover member" in line 1. The antecedent basis for this limitation is confusing, since it’s unclear how/whether it’s related to the previously-recited ‘heat shrinkable sleeve’, ‘protective layer’, and ‘non-conductive insulating material’. Appropriate correction is required.
Claim 14 recites the limitation "the recessed area" in line 7. There is insufficient antecedent basis for this limitation in the claim.
It should be noted that all other cited claims have been rejected for being dependent upon a rejected base claim.
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 1-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-23 of U.S. Patent No. 9,687,292. Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims anticipate the copending claims of the application. Accordingly, the application claims are not patentably distinct from the patented claims. Here, the more specific patent claims encompass the broader application claims. Following the rationale in In re Goodman cited in the preceding paragraph, where applicant has once been granted a patent containing a claim for the specific narrow invention, applicant may not obtain a second patent with a claim for the generic or broader invention without first submitting an appropriate terminal disclaimer.
Claims 1-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 10,213,249. Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims anticipate the copending claims of the application. Accordingly, the application claims are not patentably distinct from the patented claims. Here, the more specific patent claims encompass the broader application claims. Following the rationale in In re Goodman cited in the preceding paragraph, where applicant has once been granted a patent containing a claim for the specific narrow invention, applicant may not obtain a second patent with a claim for the generic or broader invention without first submitting an appropriate terminal disclaimer.
Claims 1-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of U.S. Patent No. 10,675,083. Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims anticipate the copending claims of the application. Accordingly, the application claims are not patentably distinct from the patented claims. Here, the more specific patent claims encompass the broader application claims. Following the rationale in In re Goodman cited in the preceding paragraph, where applicant has once been granted a patent containing a claim for the specific narrow invention, applicant may not obtain a second patent with a claim for the generic or broader invention without first submitting an appropriate terminal disclaimer.
Claims 1-7 and 14-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-14 of U.S. Patent No. 11,751,935. Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims anticipate the copending claims of the application. Accordingly, the application claims are not patentably distinct from the patented claims. Here, the more specific patent claims encompass the broader application claims. Following the rationale in In re Goodman cited in the preceding paragraph, where applicant has once been granted a patent containing a claim for the specific narrow invention, applicant may not obtain a second patent with a claim for the generic or broader invention without first submitting an appropriate terminal disclaimer.
Claims 1-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of U.S. Patent No. 12,268,431. Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims anticipate the copending claims of the application. Accordingly, the application claims are not patentably distinct from the patented claims. Here, the more specific patent claims encompass the broader application claims. Following the rationale in In re Goodman cited in the preceding paragraph, where applicant has once been granted a patent containing a claim for the specific narrow invention, applicant may not obtain a second patent with a claim for the generic or broader invention without first submitting an appropriate terminal disclaimer.
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) 1-18 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Busch-Madsen, U.S. 2014/0052131 (hereinafter Busch).
Regarding claim 1, Busch discloses (note figs. 1-7b) an electrosurgery pencil comprising: a hollow tubular handpiece member (4) having a first (distal) end and a second (proximal) end; a planar platform (surface of ‘4’ seen in fig. 6) having a recessed area (see ‘45’ in fig. 6 and ‘indentations’ in paragraph 73; also see fig. 4) located above a top outer surface of the hollow tubular handpiece member (i.e., planar platform is located above top outer surface); an electrode (1) positioned within the first end of the hollow tubular handpiece member; a circuit board (portion of [2] including [3’s] and [21] therebetween) seated within the recessed area of said planar platform; at least one ‘wire’ (22/23) for connecting the circuit board to the electrode; an electrical cord (11) necessarily containing one or more insulated wires for connecting said circuit board to an energy source (note paragraph 84); and one or more depressable button members (71) positioned above said circuit board for enabling selective contact with said circuit board.
Regarding claim 2, Busch discloses (see above) an electrosurgery pencil further comprising a cover member (7) that covers the circuit board and the planar platform.
Regarding claim 3, Busch discloses (see above) an electrosurgery pencil necessarily comprising a ‘swivel member’ (‘62’ - junction between ‘11’ and ‘6’) connected to the second end of the hollow tubular handpiece member such that the electrical cord passes therethrough.
Regarding claim 4, Busch discloses (see above) an electrosurgery pencil wherein said planar platform comprises a ‘rectangular shape’ and said recessed area of the planar platform comprises a rectangular shape (see fig. 6).
Regarding claim 5, Busch discloses (see above) an electrosurgery pencil further comprising an insulator (7) that covers an area of said circuit board where said one or more insulated wires are connected to the circuit board (via ‘21’).
Regarding claim 6, Busch discloses (see above) an electrosurgery pencil wherein said one or more depressable button members comprise a depressable button member for performing cutting and a depressable button member for performing coagulation (note paragraph 79).
Regarding claim 7, Busch discloses (see above) an electrosurgery pencil further comprising a plastic sleeve (7) that could have been heat shrunk to conform to the circuit board and a protective layer (note ‘film’ in paragraph 78) that covers the circuit board prior to encapsulating the circuit board with the sleeve. It should be noted that the “patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process” (MPEP 2113).
Regarding claim 8, Busch discloses (note figs. 1-7b) an electrosurgery pencil comprising: a hollow tubular handpiece member (4) having a first (distal) end and a second (proximal) end; a planar platform (surface of ‘4’ seen in fig. 6) located near a top of the hollow tubular handpiece member; a nozzle member (5) connected to an interior of the first end of the hollow tubular handpiece member; an electrode (1) positioned within said nozzle member (as best understood); a circuit board (portion of [2] including [3’s] and [21] therebetween) seated on said planar platform wherein the circuit board is covered with a protective layer (note ‘film’ in paragraph 78) which is in turn encapsulated with a ‘heat shrinkable’ sleeve (‘7’ – sleeve capable of being shrunk by heat; note sleeve material disclosed in paragraph 54) and wherein (as best understood) all electrical connections to the circuit board are covered with a non-conductive insulating material (‘7’ – note paragraph 54); at least one ‘wire’ (22/23) for connecting the circuit board to the electrode; an electrical cord (11) necessarily containing one or more insulated wires for connecting said circuit board to an energy source (note paragraph 84); and one or more depressable button members (71) positioned above said circuit board for enabling selective contact with said circuit board.
Regarding claim 9, Busch discloses (see above; as best understood) an electrosurgery pencil further comprising a cover member (7) that covers the circuit board and the planar platform.
Regarding claim 10, Busch discloses (see above) an electrosurgery pencil necessarily comprising a ‘swivel member’ (‘62’ - junction between ‘11’ and ‘6’) connected to the second end of the hollow tubular handpiece member such that the electrical cord passes therethrough.
Regarding claim 11, Busch discloses (see above) an electrosurgery pencil wherein said planar platform comprises a ‘rectangular shape’ (see fig. 6) and the planar platform includes a recessed area (see ‘45’ in fig. 6 and ‘indentations’ in paragraph 73; also see fig. 4) and a non-recessed area (i.e., remainder of planar platform).
Regarding claim 12, Busch discloses (see above) an electrosurgery pencil wherein the non-recessed area of the planar platform includes one or more longitudinal channels (see slit in planar platform extending distally from ‘45’ – note fig. 6).
Regarding claim 13, Busch discloses (see above) an electrosurgery pencil wherein said one or more depressable button members comprise a depressable button member for performing cutting and a depressable button member for performing coagulation (note paragraph 79).
Regarding claim 14, Busch discloses (note figs. 1-7b) an electrosurgery pencil comprising: a hollow tubular handpiece member (4) having a first (distal) end and a second (proximal) end; a planar platform (surface of ‘4’ seen in fig. 6) located above a top outer surface of the hollow tubular handpiece member (i.e., planar platform is located above top outer surface) wherein the planar platform includes a plurality of ‘longitudinal channels’ (see ‘45’ in fig. 6 and ‘indentations’ in paragraph 73; also see fig. 4); an electrode (1) positioned within the first end of the hollow tubular handpiece member; a circuit board (portion of [2] including [3’s] and [21] therebetween) seated within a recessed area (see ‘45’ in fig. 6 and ‘indentations’ in paragraph 73; also see fig. 4) of said planar platform (as best understood); at least one ‘wire’ (22/23) for connecting the circuit board to the electrode; an electrical cord (11) necessarily containing one or more insulated wires for connecting said circuit board to an energy source (note paragraph 84); and one or more depressable button members (71) positioned above said circuit board for enabling selective contact with said circuit board.
Regarding claim 15, Busch discloses (see above) an electrosurgery pencil further comprising a cover member (7) that covers the circuit board and the planar platform.
Regarding claim 16, Busch discloses (see above) an electrosurgery pencil necessarily comprising a ‘swivel member’ (‘62’ - junction between ‘11’ and ‘6’) connected to the second end of the hollow tubular handpiece member such that the electrical cord passes therethrough.
Regarding claim 17, Busch discloses (see above) an electrosurgery pencil further comprising an insulator (7) that covers an area of said circuit board where said one or more insulated wires are connected to the circuit board (via ‘21’).
Regarding claim 18, Busch discloses (see above) an electrosurgery pencil wherein said one or more depressable button members comprise a depressable button member for performing cutting and a depressable button member for performing coagulation (note paragraph 79).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
U.S. 2014/0135757 (Bernard).
U.S. 5,256,138 (Burek).
WO 2015/039232 (Ineson).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to THOMAS ANTHONY GIULIANI whose telephone number is (571)270-3202. The examiner can normally be reached Mon - Fri 9:00-5:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joanne Rodden can be reached at 303-297-4276. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/THOMAS A GIULIANI/Primary Examiner, Art Unit 3794
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