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 .
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 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.
Claims 19, 21-22 and 24 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Twomey (US Patent No. 8,702,749).
Regarding claim 19, Twomey discloses (Figures 1-5B) a medical device (10) for operating an end effector (100), the medical device comprising: a housing (20) that forms at least a portion of a handle (50); a drive shaft (234) that is moveable relative to the housing to actuate the end effector (Col. 7, lines 10-50); a drive body (230) operably coupled to the drive shaft, wherein the drive body is configured to translate with respect to the housing (Figures 5A-5B) (Col. 6, lines 39-67), the drive body having a proximal collar (see annotated figure below) and a distal collar (see annotated figure below); and a drive link (290) pivotably coupled to the housing at a first end (292) and pivotably coupled to an actuator (244) at a second end (276), the drive link actuatable by the actuator, wherein the drive link is actuatable to translate the drive shaft with respect to the housing (Figures 5A-5B), and wherein the drive link includes a proximal cam surface (see annotated figure below) and a distal cam surface (see annotated figure below) opposite the proximal cam surface, wherein the proximal cam surface is configured to interface with the proximal collar when the drive link displaces proximally to translate the drive body in a proximal direction (clearly shown in Figures 5A-5B), wherein the distal cam surface is configured to interface with the distal collar when the drive link displaces distally to translate the drive shaft in a distal direction (clearly shown in Figures 5A-5B), and wherein the proximal cam surface is defined by a first curvature defined by a first radius with a first center point (see annotated figure below) and the distal cam surface is defined by a second curvature defined by a second radius with a second center point (see annotated figure below).
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Regarding claim 21, wherein the first radius is not equal to the second radius (see annotated figure above).
Regarding claim 22, Twomey discloses (Figures 1-5B) a medical device (10) for operating an end effector (100), the medical device comprising: a housing (20) that forms at least a portion of a handle (50); a drive shaft (234) that is moveable relative to the housing via a pair of opposing surfaces (230) to actuate the end effector (Col. 7, lines 10-50); and a drive link (290) pivotably coupled to the housing at a first end (292) and pivotably coupled to an actuator (244) at a second end (276), wherein the drive link is pivotable about the first end by the actuator to engage one or more of the pair of opposing surface to translate the drive shaft with respect to the housing (Figures 5A-5B), wherein the pair of opposing surfaces comprises a distal facing proximal face (see annotated figure above) and a proximal-facing distal face (see annotated figure above), and wherein the drive link includes a proximal cam surface (see annotated figure above) configured to engage the distal-facing proximal face (clearly shown in Figures 5A-5B) and a distal cam surface (see annotated figure above) configured to engage the proximal-facing distal face (clearly shown in Figures 5A-5B), and wherein the proximal cam surface is defined by a first curvature defined by a first radius with a first center point (see annotated figure above) and the distal cam surface is defined by a second curvature defined by a second radius with a second center point (see annotated figure above).
Regarding claim 24, wherein the first radius is not equal to the second radius (see annotated figure above).
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 §§ 706.02(l)(1) - 706.02(l)(3) 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-24 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 12,193,694. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the instant application are fully contained within the claim of the patent application.
Claims
18/969,734
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Claims
Patent 12,193,694
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Allowable Subject Matter
Claims 1-18 would be allowable if they overcome the double patenting rejection set forth in this Office Action.
Claims 20 and 23 are 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 and also, if they overcome the double patenting rejection set forth in this Office Action.
The following is an examiner’s statement of reasons for indicating allowable subject matter in the dependent claims:
The prior art of record fails to disclose or render obvious the combination of features as claimed. In particular, the prior art of record fails to disclose wherein the proximal cam surface is defined by a first curvature defined by a first radius with a first center point and the distal cam surface is defined by a second curvature defined by a second radius with a second center point that is the same as the first center point (claim 1) and wherein the first radius is equal to the second radius (claims 20 and 23).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MAJID JAMIALAHMADI whose telephone number is (571) 270-0172. The examiner can normally be reached on Monday-Friday 7am-5pm EST.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Darwin Erezo can be reached on (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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/MAJID JAMIALAHMADI/Primary Examiner, Art Unit 3771