CTNF 18/966,601 CTNF 80924 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 2 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 9 of U.S. Patent No. 12,188,838 . Although the claims at issue are not identical, they are not patentably distinct from each other because claim 9 of the patent, which also includes the limitation of claims 8, 2 and 1, requires and anticipates all of the limitations of claim 2 of the application . 08-34 AIA Claim 8 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 16 of U.S. Patent No. 12,188,838 . Although the claims at issue are not identical, they are not patentably distinct from each other because claim 16 of the patent, which also includes the limitations of claims 15 and 11, requires and anticipates all of the limitations of claim 8 of the application . Allowable Subject Matter 12-151-07 AIA 07-97 12-51-07 Claim s 15-20 are allowed. Claims 2 and 8 would be allowable if the non-statutory double patenting rejection were overcome with a properly filed terminal disclaimer. 12-151-08 AIA 07-43 12-51-08 Claim s 3-7 and 9-14 objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. 13-03-01 AIA The following is a statement of reasons for the indication of allowable subject matter: With regard to claim 2, Hein et al. (US 2017/0172509) disclose an apparatus, comprising: a medical instrument 110 (catheter, see Abstract) comprising a mechanical structure (130,136), a force sensor unit 140 coupled to the mechanical structure, and a shaft 134 coupled to the mechanical structure (130,136); wherein the force sensor unit comprises a rod (152 and affixed to either end, see par. 0082 last four lines), a magnet 152 coupled to the rod, a first coil 156 coupled to the mechanical structure; wherein the rod comprises a distal portion and a proximal portion, and a center axis of the rod is defined between the proximal and distal portions of the rod (see Figs. 6A-C); and wherein the magnet 152 translates within the first coil along the center axis of the rod (Id., and see par. 0088). Hein et al. do not disclose and a second coil coupled to the mechanical structure and coaxial with the first coil such that magnet 152 also translates within the second coil along the center axis; Sugiura et al. (JP 2000-172355) disclose an apparatus that senses displacement and force of a moving rod, comprising a mechanical structure 40 and a force sensor unit coupled to the mechanical structure; wherein the force sensor unit comprises a rod (3,31), a magnet coupled to the rod (see par. 0010, rod is magnetic) a first coil 42 coupled to the mechanical structure, and a second coil 42 coupled to the mechanical structure and coaxial with the first coil (see Fig. 6, two sets of coils 42); wherein the rod comprises a distal portion and a proximal portion, and a center axis of the rod is defined between the proximal and distal portions of the rod; and wherein the magnet translates within the first coil and the second coil along the center axis of the rod (see Fig. 6 showing rod moving in and out of coils 42). Neither Hein et al. nor Sugiura et al., alone or in combination, teach or suggest signals from each of two coils having a different frequency and a microprocessor being configured to determine linear displacement of the shaft and/or determine a force on the instrument shaft based on the two frequencies. With regard to claim 8, Hein et al. disclose an apparatus, comprising: an instrument shaft 134 comprising a proximal end and a distal end; a medical end effector 113 coupled to the distal end of the instrument shaft; a mechanical structure 132,114,120 coupled to the proximal end of the instrument shaft; and a force sensor unit 140 coupled to the mechanical structure and to the instrument shaft 134 (see par. 0069, and Fig. 4, force sensor 140 is part of catheter structure 110 and is therefore coupled with the mechanical structure 132,114,120); wherein the force sensor unit comprises a first coil 156 wound about a first coil axis, and a magnet 152; wherein an instrument shaft axis is defined between the proximal and distal ends of the instrument shaft 134; and wherein the magnet is operably coupled to the instrument shaft and moves along the first coil axis as the instrument shaft moves along the instrument shaft axis (see par. 0088, relative movement of shaft 134 causes movement of magnet relative to coil). Hein et al. do not disclose a second coil wound about a second coil axis coaxial with the first coil axis. Sugiura et al. disclose an apparatus that senses displacement and force of a moving instrument shaft, comprising an instrument 40 with a force sensor unit coupled to the instrument mechanical structure; wherein the force sensor unit comprises a first coil 42 wound about a first coil axis, a second coil 42 wound about a second coil axis coaxial with the first coil axis, and a magnet 3 (see Fig. 6, two sets of coils 42), wherein the magnet moves along the first and second coil axis to detect axial movement relative to mechanical structure (see Fig. 6 showing rod moving in and out of coils 42). Neither Hein et al. nor Sugiura et al., alone or in combination, teach or suggest signals from each of two coils having a different frequency and a microprocessor being configured to determine linear displacement of the shaft and/or determine a force on the instrument shaft based on the two frequencies. With regard to claim 15, Hein et al. disclose an apparatus, comprising: a mechanical structure (130,136); a shaft 134 coupled to the mechanical structure; and a force sensor unit (combination of elements 140 around shaft 134) coupled to the mechanical structure, the force sensor unit comprising a first magnet 152, a second magnet 152, a first coil 156, a second coil 156 (Fig. 7, multiple elements 140 around shaft 134 each with a magnet and coil), and a microprocessor 127, the first magnet and the second magnet each being operably coupled to the shaft such that translational movement of the shaft relative to the mechanical structure moves the first magnet relative to the first coil and the second magnet relative to the second coil, the first coil generating a first signal associated with a position of the first magnet with reference to the first coil, the second coil generating a second signal associated with a position of the second magnet with reference to the second coil. Hein et al. do not disclose or suggest the first signal having a first frequency, the second signal have a second frequency different from the first frequency, with the microprocessor being configured to determine a linear displacement of the shaft along a center axis of the shaft based on the first frequency and the second frequency . Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to PAUL M WEST whose telephone number is (571)272-2139. The examiner can normally be reached M-F 9 am - 5:30 pm (CT). 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, Kristina DeHerrera can be reached at 303-297-4237. 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. /PAUL M. WEST/Primary Examiner, Art Unit 2855 Application/Control Number: 18/966,601 Page 2 Art Unit: 2855 Application/Control Number: 18/966,601 Page 3 Art Unit: 2855 Application/Control Number: 18/966,601 Page 4 Art Unit: 2855 Application/Control Number: 18/966,601 Page 5 Art Unit: 2855 Application/Control Number: 18/966,601 Page 6 Art Unit: 2855 Application/Control Number: 18/966,601 Page 7 Art Unit: 2855 Application/Control Number: 18/966,601 Page 8 Art Unit: 2855
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