CTNF 18/956,325 CTNF 88249 DETAILED ACTION Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia 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 08-33 AIA 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. 08-34 AIA Claim s 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim s 1-19 of U.S. Patent No. 12,181,906 to Aswatha et al .. Although the claims at issue are not identical, they are not patentably distinct from each other because they are merely broader in scope than the claims of US 12,181,906 and require nearly identical structural elements (i.e., a first control knob, a second control knob having a geometrically off-centered opening, varying lever arm lengths, gripping surfaces, etc.) . 08-34 AIA Claim s 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim s 1-20 of U.S. Patent No. 11,445,895 to Aswatha et al .. Although the claims at issue are not identical, they are not patentably distinct from each other because they are merely broader in scope than the claims of US 11,445,895 and require nearly identical structural elements (i.e., a first control knob, a second control knob having a geometrically off-centered opening, varying lever arm lengths, gripping surfaces, etc.) . Specification 07-44 AIA The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required: the specification does not provide proper antecedent basis for the “a lever arm”, “a first lever arm”, or “a second lever arm” . Drawings 06-36 AIA The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the “lever arm” must be shown or the feature(s) canceled from the claim(s). No new matter should be entered. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance. Claim Rejections - 35 USC § 112 07-30-02 AIA 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 2, 11 and 15-20 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 2, 11 and 15-20 each recite the control knob(s) having lever arms. However, as discussed above, the specification lacks antecedent basis for this terminology and “lever arms” are not shown in the drawings. Thus, it is not entirely clear what is considered the lever arms, and more specifically, the first lever arm of the first control knob and the second through fourth lever arms on the second control knob. Appropriate correction is required. Claim Rejections - 35 USC § 102 07-06 AIA 15-10-15 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. 07-07-aia AIA 07-07 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 – 07-08-aia AIA (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. 07-15-aia AIA Claim(s) 1, 3, 5-6, 9-10 and 12 is/are rejected under 35 U.S.C. 102 (a)(1) as being anticipated by Moriyama (JP 2005-245545 A) . Regarding claim 1, Moriyama discloses a medical device (1; Fig. 1), comprising: a control handle (13; Fig. 1) operably attached to a proximal end of a shaft (12; Fig. 1); a first control knob (25; Figs. 1-6) rotatably attached to the control handle (13) via a first opening of the first control knob (page 5, first paragraph) and configured to move a distal end of the shaft in a first direction (page 5, second paragraph), wherein the first opening is geometrically centered within the first control knob (25; Figs. 2 and 6); and a second control knob (30; Figs. 1-6) rotatably attached to the control handle (13) via a second opening of the second control knob (page 5, third paragraph) and configured to move a distal end of the shaft in a second direction (page 5, fifth paragraph), wherein the second opening is geometrically off-centered within the second control knob (protrusions 30a and 30b, see Fig. 6, shift the geometric center such that the second opening is geometrically off-centered). Regarding claim 3, Moriyama discloses the medical device of claim 1, wherein the second control knob (30) includes a plurality of radially outermost points (30a-30f; Fig. 6), and wherein a first lever arm length extending from the second opening to an end of a first radially outermost point (30a; Fig. 6) of the plurality of radially outermost points is greater than a second lever arm length extending from the second opening to an end of a second radially outermost point (30f; Fig. 6) of the plurality of radially outermost points Regarding claim 5, Moriyama discloses the medical device of claim 1, wherein an outer circumference of the first control knob (25; Fig. 2) includes a gripping surface (Fig. 2 – outer surface of 25 where an operator can place his/her fingers), wherein the gripping surface extends an entirety of the outer circumference of the first control knob (Fig. 2 – the entire outer circumference can be grasped by an operator). Regarding claim 6, Moriyama discloses the medical device of claim 5, wherein the outer circumference of the first control knob (25; Fig. 2) includes a plurality of valleys (Fig. 2 – between protrusions 25a-25e), and wherein each of the plurality of valleys is located between adjacent radially outermost points (25a-25e; Fig. 2). Regarding claim 9, Moriyama discloses a medical device comprising: a control handle (13; Fig. 1) operably attached to a proximal end of a shaft (12; Fig. 1); a first control knob (25; Figs. 1-6) rotatably attached to the control handle (13) via a first opening of the first control knob (page 5, first paragraph)and configured to move a distal end of the shaft in a first direction (page 5, second paragraph), wherein an outer circumference of the first control knob (25) is defined by a first plurality of radially outermost points about a first geometric center (25a-25e; Figs. 2 and 6); and a second control knob (30; Figs. 1-6) rotatably attached to the control handle (13) via a second opening of the second control knob (page 5, third paragraph) and configured to move a distal end of the shaft in a second direction (page 5, fifth paragraph), wherein an outer circumference of the second control knob is defined by a second plurality of radially outermost points (protrusions 30a and 30b, see Fig. 6) about a second geometric center; wherein a first distance between the first geometric center and the first opening differs from a second distance between the second geometric center and the second opening (protrusions 30a and 30b, see Fig. 6, shift the geometric center such that the second opening is geometrically off-centered). Regarding claim 10, Moriyama discloses the medical device of claim 9, wherein the first distance is zero (page 5, first paragraph; Figs. 2 and 6). Regarding claim 12, Moriyama discloses the medical device of claim 9, wherein a first lever arm length extending from the second opening to an end of a first radially outermost point (30a; Fig. 6) of the second plurality of radially outermost points (30a-30f; Fig. 6) is greater than a second lever arm length extending from the second opening to an end of a second radially outermost point (30f; Fig. 6) of the second plurality of radially outermost points. (30a-30f; Fig. 6) . 07-15-aia AIA Claim(s) 15-17 is/are rejected under 35 U.S.C. 102 (a)(1) as being anticipated by Okamoto (US 2016/0367111 A1) . Regarding claim 15, Okamoto discloses a medical device (1; Fig. 1), comprising: a control handle (3; Fig. 1) operably attached to a proximal end of a shaft (2; Fig. 1); a first control knob (4; Fig. 1; par. [0031]) rotatably attached to the control handle (3) via a first opening (at O1; Fig. 10; par. [0087]) of the first control knob (4) and configured to move a distal end of the shaft in a first direction (par. [0032]), wherein an outer circumference of the first control knob is defined by a first plurality of radially outermost points (Fig. 10), and wherein first lever arms (Fig. 10 – lever arm between Pe and O1, and lever arm between O1 and 1, see inserted Fig. 10 of Okamoto) between the first opening (at O1) and the first plurality of radially outermost points all have a same first length (Fig. 10 – lever arm lengths from O1 to Pe and from O1 to 1, see inserted Fig. 10 of Okamoto); and a second control knob (5; par. [0031]) rotatably attached to the control handle (3) via a second opening of the second control knob (at O1; Fig. 10; par. [0084] and [0087]), wherein an outer circumference of the second control knob is defined by a second plurality of radially outermost points (Fig. 10), wherein a second lever arm extends between the second opening and a first radially outermost point of the second plurality of radially outermost points (Fig. 10 – lever arm between Pe and O1), wherein a third lever arm extends between the second opening and a second radially outermost point of the second plurality of radially outermost points (Fig. 10 – lever arm between O1 and 3, see inserted Fig. 10 of Okamoto), and wherein a second length of the second lever arm differs from a third length of the third lever arm (the third lever arm length is larger than the second lever arm length). Regarding claim 16, Okamoto discloses the medical device of claim 15, wherein a fourth lever arm extends between the second opening and a third radially outermost point of the second plurality of radially outermost points (Fig. 10 – lever arm between O1 and 4, see inserted Fig. 10 of Okamoto), wherein a fourth length (O1 to 4, see inserted Fig. 10 of Okamoto) of the fourth lever arm differs from the second length (O1 to Pe, see inserted Fig. 10 of Okamoto) of the second lever arm and the third length (O1 to 3, see inserted Fig. 10 of Okamoto) of the third lever arm (the fourth lever arm length is smaller than both the third and second lever arm lengths, and the third lever arm length is larger than the second lever arm length). Regarding claim 17, Okamoto discloses the medical device of claim 15, wherein the first plurality of radially outermost points are arranged symmetrically about a geometric center of the first control knob (4; Fig. 10) . Claim Rejections - 35 USC § 103 07-06 AIA 15-10-15 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. 07-20-aia AIA 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. 07-21-aia AIA Claim (s) 4 and 13-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Moriyama, as applied to claims 1 and 9 above, in view of Golden et al. (US 2009/0287188 A1) . Regarding claim 4, Moriyama discloses the medical device of claim 3, but does not specifically disclose wherein a first texture of the first radially outermost point is different from a second texture of the second radially outermost point. Golden teaches an analogous medical device having analogous control knobs wherein outer surfaces of radially outermost points include textures (Figs. 4 and 5). It would have been obvious to one having ordinary skill in the art to provide a different texture on the first radially outermost point in order to provide an enhanced gripping surface for the operator and also to provide the operator with tactile information regarding the portion of the knob being grasped. Regarding claim 13, Moriyama discloses the medical device of claim 12, but does not specifically disclose wherein a first texture of the first radially outermost point is different from a second texture of the second radially outermost point. Golden teaches an analogous medical device having analogous control knobs wherein outer surfaces of radially outermost points include textures (Figs. 4 and 5). It would have been obvious to one having ordinary skill in the art to provide a different texture on the first radially outermost point in order to provide an enhanced gripping surface for the operator and also to provide the operator with tactile information regarding the portion of the knob being grasped. Regarding claim 14, Moriyama discloses the medical device of claim 9, but does not specifically disclose wherein the outer circumference of the first control knob includes a first gripping surface of a same width as a second gripping surface of the second control knob. Golden teaches an analogous medical device wherein the outer circumference of the first control knob (62; Figs. 1 and 3-5) includes a gripping surface of a same width as a gripping surface of the second control knob (64; Figs. 1 and 3-5). It would have been obvious to one having ordinary skill in the art to make the widths of the gripping surfaces of the two control knobs equal in order to help the operator maintain a grip on the gripping surface when the operator alternates operation of the control knobs . 07-21-aia AIA Claim (s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Moriyama, as applied to claim 1 above, in view of Ludwin (US 2013/0018306 A1) . Regarding claim 7, Moriyama discloses the medical device of claim 6, but does not specifically disclose wherein a portion of the outer circumference having at least one of the radially outermost points includes an integrated surface feature to provide tactile feedback for identifying a relative position of the first control knob and the second control knob and an associated orientation of the distal end of the shaft. Ludwin teaches an analogous medical device (Figs. 4-5) wherein an exterior surface having at least one of the plurality of radially outermost points (96/98; Figs. 4 and 5) includes an integrated surface feature (100/102 and 104/106; par. [0042] and [0044]; Figs. 4 and 5) to provide tactile feedback for identifying a position of the control knob and an associated orientation of the distal end of the shaft (par. [0042] and [0044]; Figs. 4 and 5). It would have been obvious to one having ordinary skill in the art to provide an integrated surface feature on a radially outermost point on the control knob of Moriyama in order to provide the operator with tactile feedback regarding the orientation of the shaft due to the change in position of the control knob, as taught by Ludwin . 07-21-aia AIA Claim (s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Moriyama, as applied to claim 1 above, in view of Seki et al. (US 2003/0187328 A1) . Regarding claim 8, Moriyama discloses the medical device of claim 5, but does not specifically disclose wherein the first control knob is comprised of a first material and the gripping surface is comprised of a second material different than the first material. Seki teaches an analogous medical device wherein the control knob (40) is comprised of a first material (par. [0038] - "a different material may be selected arbitrarily for the insert member 40 as long as it has the required properties in resistance to chemicals, rigidity and lightness") and the gripping surface (30/33) is comprised of a second material different than the first material (par. [0038]). Seki teaches that the materials may be the same or different as long as the materials for each have the required properties for optimal performance (par. [0038]). It would have been obvious to one having ordinary skill in the art to make the material of the gripping surface different from that of the control knob, as taught by Seki, in order to provide the control knob with the required properties, as taught by Seki . 07-21-aia AIA Claim (s) 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Okamoto, as applied to claim 15 above, in view of Golden et al. (US 2009/0287188 A1) . Regarding claim 18, Okamoto discloses the medical device of claim 15, but does not specifically disclose wherein a first texture of the first radially outermost point is different from a second texture of the second radially outermost point. Golden teaches an analogous medical device having analogous control knobs wherein outer surfaces of radially outermost points include textures (Figs. 4 and 5). It would have been obvious to one having ordinary skill in the art to provide a different texture on the first radially outermost point in order to provide an enhanced gripping surface for the operator and also to provide the operator with tactile information regarding the portion of the knob being grasped . 07-21-aia AIA Claim (s) 19-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Okamoto in view of Golden, as applied to claim 18 above, in view of Seki et al. (US 2003/0187328 A1) . Regarding claim 19, Okamoto in view of Golden disclose the medical device of claim 18, and Golden teaches wherein the outer circumference of the first control knob (62; Figs. 1 and 3-5) includes a gripping surface of a same width as a gripping surface of the second control knob (64; Figs. 1 and 3-5). It would have been obvious to one having ordinary skill in the art to make the widths of the gripping surfaces of the two control knobs equal in order to help the operator maintain a grip on the gripping surface when the operator alternates operation of the control knobs. However, Okamoto in view of Golden does not specifically disclose wherein the first control knob is comprised of a first material and the gripping surface is comprised of a second material different than the first material. Seki teaches an analogous medical device wherein the control knob (40) is comprised of a first material (par. [0038] - "a different material may be selected arbitrarily for the insert member 40 as long as it has the required properties in resistance to chemicals, rigidity and lightness") and the gripping surface (30/33) is comprised of a second material different than the first material (par. [0038]). Seki teaches that the materials may be the same or different as long as the materials for each have the required properties for optimal performance (par. [0038]). It would have been obvious to one having ordinary skill in the art to make the material of the gripping surface different from that of the control knob, as taught by Seki, in order to provide the control knob with the required properties, as taught by Seki. Regarding claim 20, Okamoto in view of Golden in view of Seki disclose the medical device of claim 19, wherein the outer circumference of the first control knob is further defined by a plurality of valleys (Fig. 10), wherein each of the plurality of valleys is located between adjacent radially outermost points of the first plurality of radially outermost points (valleys are located between P3, 3, 1 and 4 in inserted Fig. 10 of Okamoto). Inserted Figure 10 of Okamoto [AltContent: rect][AltContent: arrow][AltContent: rect][AltContent: rect][AltContent: arrow][AltContent: arrow] PNG media_image1.png 404 489 media_image1.png Greyscale Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to RYNAE E BOLER whose telephone number is (571)270-3620. The examiner can normally be reached Mon - Fri 9:00-5:00. 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 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. 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. /RYNAE E BOLER/Examiner, Art Unit 3795 /ANH TUAN T NGUYEN/Supervisory Patent Examiner, Art Unit 3795 05/04/26 Application/Control Number: 18/956,325 Page 2 Art Unit: 3795 Application/Control Number: 18/956,325 Page 3 Art Unit: 3795 Application/Control Number: 18/956,325 Page 4 Art Unit: 3795 Application/Control Number: 18/956,325 Page 5 Art Unit: 3795 Application/Control Number: 18/956,325 Page 6 Art Unit: 3795 Application/Control Number: 18/956,325 Page 7 Art Unit: 3795 Application/Control Number: 18/956,325 Page 8 Art Unit: 3795 Application/Control Number: 18/956,325 Page 9 Art Unit: 3795 Application/Control Number: 18/956,325 Page 10 Art Unit: 3795 Application/Control Number: 18/956,325 Page 11 Art Unit: 3795 Application/Control Number: 18/956,325 Page 12 Art Unit: 3795 Application/Control Number: 18/956,325 Page 13 Art Unit: 3795 Application/Control Number: 18/956,325 Page 14 Art Unit: 3795 Application/Control Number: 18/956,325 Page 15 Art Unit: 3795 Application/Control Number: 18/956,325 Page 16 Art Unit: 3795 Application/Control Number: 18/956,325 Page 17 Art Unit: 3795
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