DETAILED ACTION
A complete action on the merits of pending claims 1-7, 11-18, and 21-24 appears below.
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 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.
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 1-7, 10-18, and 21-24 are rejected on the grounds of nonstatutory double patenting as being unpatentable over claims 1, 10-18 and 25-32 of U.S. Patent No. 12,186,007. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of patent anticipate the claims of the application. Accordingly, the application claims are not patentably distinct from the patent 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.
Allowable Subject Matter
Claims 1-7, 10-18, and 21 would be allowed with the filing of a terminal disclaimer and overcoming the 112 issues below.
The following is a statement of reasons for the indication of allowable subject matter: the prior art of record does not teach the limitations of claim 9 and all proceeding claims.
The closest prior art of record is Park US 20160175060.
Park teaches a robotic surgical system that has an adaptor 120 attached to a robotic arm 113. The adaptor 120 is attached to a shaft 130 and coupled to the other end of the shaft is an end effector 105. The end effector is disposable and has a base to release the end effector from the shaft (par. [0040]). However, the prior art of record does not explicitly teach the locking channels, alignment channels, lip, lock protrusions, and stop protrusions in relation to one another as required by the independent claims.
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 10-17, 23 and 24 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.
Claims 10, 11, 23 and 24 recite the limitation “the drive structure”. There is insufficient antecedent basis for this limitation in the claim. Claims 12-17 are rejected based on dependency.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 22-24 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Park US 20160175060.
Regarding claim 22, Park teaches a base (Fig. 2 tip interface 245) configured to attach to a distal end of a shaft (Fig. 2 main tube 230); and a disposable distal portion configured to removably attach to the base to be disposed of after use (par. [0066]), wherein the base is configured to directly removably mechanically engage the blades or jaws to actuate the blades or jaws (Fig. 4B socket 447 of 245).
Regarding claim 23, Park teaches a base (Fig. 2 tip interface 245) configured to attach to a distal end of a shaft (Fig. 2 main tube 230); and a disposable distal portion configured to removably attach to the base to be disposed of after use (par. [0066]), wherein the distal portion includes: a mount portion configured to abut the base (Fig. 4B socket 447); and a clevis connected to the mount portion (Fig. 4B ball 409), wherein the blades or jaws are mounted to the clevis to pivot about a pivot joint of the clevis (Fig. 4B), and wherein the clevis further comprises a non-conductive material (par. [0092] tip interface is made of insulating material) , and the mount portion further comprises a non-conductive center post configured to mechanically connect the blades or jaws to the drive structure to actuate the blades or jaws between an open and a closed position (Fig. 4B locking device 412).
Regarding claim 24, Park teaches a base (Fig. 2 tip interface 245) configured to attach to a distal end of a shaft (Fig. 2 main tube 230); and a disposable distal portion configured to removably attach to the base to be disposed of after use (par. [0066]), wherein the base includes a base clevis (Fig. 4B ball 409) and an actuation assembly (Fig. 8 drive tendon 452 and Fig. 11 pulley) connected to the base clevis and the drive structure (Fig. 4B socket 447) to actuate the drive structure relative to the base clevis (Figs. 8 and 9 movement of 452 and socket to move the blades), and wherein the actuation assembly includes: an actuator housing connected to the drive structure (Fig. 11 lever 1175); and a pulley assembly (Fig. 11 pully 1174) within the actuator housing (Fig. 11 pulley between arms 1162 and 1165 of lever 1175) and configured to move the actuator housing relative to the base clevis (par. [0144]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RYAN T. CLARK whose telephone number is (408)918-7606. The examiner can normally be reached Monday-Friday 7AM-3PM MT.
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, Joseph Stoklosa can be reached at (571)272-1213. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/R.T.C./Examiner, Art Unit 3794
/SEAN W COLLINS/Primary Examiner, Art Unit 3794
