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.
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Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 12,178,498. Although the claims at issue are not identical, they are not patentably distinct from each other because the present claims are broader than the patented claims with the addition of an extremely well known processor controlled procedure.
Claim Rejections - 35 USC § 103
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.
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.
Claims 1, 12, 16, and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Dycus et al. (U.S. Patent Application Publication 2004/0254573) in view of Marczyk et al. (U.S. Patent Application Publication 2013/0123783).
Regarding claim 1, Dycus et al. disclose a system comprising:
an energy source (comprising: 1) “electrically conductive sealing surfaces 112 and 122,” and 2) the reciprocating knife for cutting tissue, see [0027], [0055], [0095], [0099], and figures 8-12);
a sheath (“cannula” 510 in figure 36);
an elongate shaft (“shaft 12,” see figures 1-4, and 9-12 for example) comprising an elongate axis (the central longitudinal axis), the elongate shaft configured to move the energy source with translation of the elongate shaft along the elongate axis relative to the sheath, the elongate shaft located within the sheath to allow rotation and translation of the energy source relative to the sheath to treat the tissue (see figure 36); and
an extension (“upper jaw member 110,” see [0085] and figures 8-10 for example) coupled to the elongate shaft with a link (“pivot pin 103,” see [0091] and figure 8 for example) to rotate the extension about the link to move the energy source away from the elongate axis with movement of the extension away from the elongate axis to offset the energy source from the elongate axis (see figures 1-4, 8-9, and 11-12 for example).
Dycus et al. fail to recite a processor operatively coupled to the elongate shaft, the extension and the energy source to rotate and translate the energy source and the extension with the energy source and the extension displaced from the elongate axis.
Like Dycus et al., Marczyk et al. disclose an electrical forceps device/system similar to that of Dycus et al. having an energy source, an elongate shaft having an elongate axis, and an extension and a link and teach providing the system with a programmable processor/microprocessor to control the functioning of the electrical forceps device/system in order to provide programmably controlable translational movement of the energy source (knife) and rotatable motion of the energy source (electrically conductive clamping jaw) in order to provide a known and workable system and method for sealing and cutting tissue (see [0023], [0057]-[0058], [0123]-[0125]).
Therefore, at the time of the of invention it would have been obvious to one of ordinary skill in the art to modify the invention of Dycus et al., as taught by Marczyk et al., to provide the system with a programmable processor/microprocessor to control the functioning of the electrical forceps device/system in order to provide programmably controlable translational movement of the energy source (knife) and rotatable motion of the energy source (electrically conductive clamping jaw) in order to provide a known and workable system and method for sealing and cutting tissue.
Regarding claim 12, Dycus et al. disclose the required stiffness since the sheath does not collapse under compression from the incised tissue opening see figure 36.
Regarding claim 16, Dycus et al. disclose electrode (electrically conductive surface 112).
Regarding claim 19, Dycus et al. disclose the claimed synchronous movement, wherein synchronous is interpreted as having or being in a definite chronological pattern (i.e., simultaneous or sequential) .
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AARON F ROANE whose telephone number is (571)272-4771. The examiner can normally be reached generally Mon-Fri 8am-9pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Niketa Patel can be reached at (571) 272-4156. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/AARON F ROANE/Primary Examiner, Art Unit 3792
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