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 .
Response to Arguments
Applicant's arguments filed August 5, 2026 have been fully considered but they are not persuasive in view of the rejection set forth below addressing the amendments to the claims.
Claim Rejections - 35 USC § 102
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 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) 17-36 are rejected under 35 U.S.C. 1029a)(1) as being anticipated by Matwijcow (US 5207696).
Regarding claim 17, Matwijcow discloses a surgical knife comprising: a handle (10) defining a longitudinal axis; and a blade (see image below) having a distal end( 31) and an opposite proximal end (32, 36) connected the handle, the blade having opposite inner and outer edges each extending parallel to the longitudinal axis (see image below), the distal end including a cutting edge extending from the inner edge to the outer edge, wherein the blade is connected to the handle such that the longitudinal axis does not intersect the cutting edge and is offset from the inner and outer edges, and the outer edge is offset from an outer surface of the handle (see image below, offset from both outer surface 1 and 2).
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Regarding claim 18, Matwijcow discloses all of the limitations set forth in claim 17, wherein the longitudinal axis is a central longitudinal axis (see image above).
Regarding claim 19, Matwijcow discloses all of the limitations set forth in claim 17, wherein the cutting edge is continuously curved from the inner edge to the outer edge (figure 3).
Regarding claim 20, Matwijcow discloses all of the limitations set forth in claim 17, wherein the blade comprises an aperture (34) positioned between the inner edge to the outer edge.
Regarding claim 21, Matwijcow discloses all of the limitations set forth in claim 20, wherein the aperture is spaced apart from the cutting edge (figure 3).
Regarding claim 22, Matwijcow discloses all of the limitations set forth in claim 20, wherein the aperture is spaced apart from the handle (figure 3).
Regarding claim 23, Matwijcow discloses all of the limitations set forth in claim 17, wherein the blade has a width that is greater than a radius of the handle (the limitation ‘a radius of the handle’ is sufficiently broad to encompass the radius of circular gear 50, meeting the limitations).
Regarding claim 24, Matwijcow discloses all of the limitations set forth in claim 17, wherein the blade has a width in a plane of the blade between the inner and outer edges that is greater than a radius of the handle (the limitation ‘a radius of the handle’ is sufficiently broad to encompass the radius of circular gear 50, meeting the limitations).
Regarding claim 25, Matwijcow discloses all of the limitations set forth in claim 17, wherein the blade has a width in a plane of the blade between the inner and outer edges that is greater than one-half of a radius of the handle (the limitation ‘a radius of the handle’ is sufficiently broad to encompass the radius of circular gear 50, meeting the limitations).
Regarding claim 26, Matwijcow discloses all of the limitations set forth in claim 17, wherein the blade has a width in a plane of the blade between the inner and outer edges that is greater than a dimension of the handle, the dimension being perpendicular to the longitudinal axis, the dimension being defined by the outer surface of the handle (the limitation ‘a dimension of the handle’ is sufficiently broad to encompass the dimension annotated below defined on one side by an outer surface of the handle).
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Regarding claim 27, Matwijcow discloses all of the limitations set forth in claim 17, wherein the blade has a width in a plane of the blade between the inner and outer edges that is greater than one-half of a dimension of the handle, the dimension being perpendicular to the longitudinal axis, the dimension being defined by the outer surface of the handle (see image above, the limitation ‘a dimension of the handle’ is sufficiently broad to encompass the dimension annotated above defined on one side by an outer surface of the handle).
Regarding claim 28, Matwijcow discloses all of the limitations set forth in claim 17, wherein the blade has a width in a plane of the blade between the inner and outer edges that is 0.8 times greater than a dimension of the handle, the dimension being perpendicular to the longitudinal axis, the dimension being defined by the outer surface of the handle (see image above, the limitation ‘a dimension of the handle’ is sufficiently broad to encompass an dimension annotated above defined on one side by an outer surface of the handle and meeting the claimed dimensions) .
Regarding claim 29, Matwijcow discloses all of the limitations set forth in claim 17, wherein the handle (50) includes a cylindrical portion (50), a transition portion (43), a reduced portion (17) and a bridge segment (44), the bridge segment being coupled directly to the proximal end, the cylindrical portion defining the longitudinal axis.
Regarding claim 30, Matwijcow discloses all of the limitations set forth in claim 29, wherein the transition portion is positioned between the cylindrical portion and the reduced portion, opposite inner and outer edges extending parallel to the longitudinal axis (figure 3).
Regarding claim 31, Matwijcow discloses all of the limitations set forth in claim 29, wherein the transition portion (43) is positioned between the cylindrical portion and the reduced portion, an inner edge of the transition portion extending non-parallel to the longitudinal axis, an opposite outer edge of the transition portion extending parallel to the longitudinal axis.
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Regarding claim 32, Matwijcow discloses all of the limitations set forth in claim 31, wherein the transition portion is positioned between the cylindrical portion and the reduced portion, opposite inner and outer edges extending parallel to the longitudinal axis (figure 3).
Regarding claim 33, Matwijcow discloses all of the limitations set forth in claim 29, wherein the longitudinal axis intersects the transition portion, the reduced portion and the bridge segment (figure 3).
Regarding claim 34, Matwijcow discloses all of the limitations set forth in claim 29, wherein the bridge segment includes a relief recess (opening for blade, figure 2) configured to provide clearance for the bridge segment to exit a cannula.
Regarding claim 35, Matwijcow discloses a surgical knife comprising: a handle (10) defining a central longitudinal axis; and a blade having a distal end (31) and an opposite proximal end (32) connected the handle, the blade having opposite inner and outer edges each extending parallel to the central longitudinal axis (See image above), the distal end including a cutting edge (35) extending from the inner edge to the outer edge, the cutting edge being continuously curved from the inner edge to the outer edge, the blade comprising an aperture (34) positioned between the inner edge to the outer edge, the aperture is spaced apart from the cutting edge and the handle wherein the blade is connected to the handle such that the central longitudinal axis does not intersect the cutting edge and is offset from the inner and outer edges (see image above), and the outer edge is offset from an outer surface of the handle (see image below, offset from both outer surface 1 and 2).
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Regarding claim 36, Matwijcow discloses a surgical knife comprising: a handle (10) defining a central longitudinal axis; and a blade having a distal end (31) and an opposite proximal end (32) connected the handle, the blade having opposite inner and outer edges each extending parallel to the central longitudinal axis (See image above), the distal end including a cutting edge extending from the inner edge to the outer edge, wherein the blade is connected to the handle such that the central longitudinal axis does not intersect the cutting edge and is offset from the inner and outer edges (See image above), wherein the blade has a width in a plane of the blade between the inner and outer edges that is greater than one-half of a radius of the handle (the limitation ‘a radius’ is sufficiently broad to encompass the radius of member 50), and wherein the blade has a width in a plane of the blade between the inner and outer edges that is greater than one-half of a dimension of the handle, the dimension being perpendicular to the central longitudinal axis, the dimension being defined by an outer surface of the handle (see image above, ‘a dimension’ is sufficiently broad to encompass the dimension in the annotated figure above), and the outer edge is offset from an outer surface of the handle (see image above, offset from both outer surface 1 and 2).
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 17-35 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12185971. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-20 of Patent 12185971 recites a handle defining a longitudinal axis; and a blade having a distal end and an opposite proximal end connected the handle, the blade having opposite inner and outer edges each extending parallel to the longitudinal axis, the distal end including a cutting edge extending from the inner edge to the outer edge, wherein the blade is connected to the handle such that the longitudinal axis does not intersect the cutting edge and is offset from the inner and outer edges (claim 1). Therefore, patent 12185971 claims 1-20 are in
essence a “species” of the generic invention of application claims 17-35. It has been held that a
generic invention is “anticipated” by a “species” within the scope of the generic invention. Since
application claims 17-35 are is anticipated by patent 12185971 claims 1-20, it is not patentably
distinct from patent claim 12185971.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANH TIEU DANG whose telephone number is (571)270-3221. The examiner can normally be reached Monday-Thursday (9am-4pm EST).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Darwin Erezo can be reached at (571) 272-4695. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANH T DANG/Primary Examiner, Art Unit 3771
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