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 .
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 1-20 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12207826. Although the claims at issue are not identical, they are not patentably distinct from each other because the difference between the application claims and the patent claims lies in the fact that the patent claims include more elements and are thus much specific. Thus the invention of the patent claims are in effect a “species” of the “generic” invention of the application claims. It has been held that the generic invention is “anticipated” by the “species”. See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Since the application claims are anticipated by the patent claims, they are not patentably distinct from the patent claims.
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.
Claim(s) 1-3, 8, 9 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Osawa et al. (U.S. Publication No. 2015/0133226).
Osawa et al. discloses a surgical instrument comprising: a shaft (32) having a proximal end, a distal end, and a longitudinal axis (Figure 1); and a tapered head (14, Figure 2, shows a tapering) proximate the distal end of the shaft (Figure 2), said tapered head comprising: a longitudinal axis generally coaxial to the longitudinal axis of the shaft (Figure 1); a lateral axis generally transverse to the longitudinal axis of the tapered head (Figure 1 and 2, it can be construed that the head has a longitudinal axis and a lateral axis); an outer surface; a plurality of longitudinal channels (18) and a plurality of threaded sections (16), each being circumferentially and intermittently spaced around the outer surface (Figure 2, 3); and at least one lateral lumen (46), wherein the at least one lateral lumen extends laterally along a direction of the lateral axis of the tapered head (Figure 2).
Regarding claim 2, the at least one lateral lumen (46) has a first end and a second end, wherein the first end of the at least one lateral lumen interfaces with a first longitudinal channel of the plurality of longitudinal channels (Figure 2), wherein the second end of the at least one lateral lumen interfaces with a second longitudinal channel (18) of the plurality of longitudinal channels (Figure 2).
Regarding claim 3, the at least one lateral lumen is one of a plurality of lateral lumens, and each of the plurality of lateral lumens is intermittently spaced along the longitudinal axis of the tapered head (paragraph 52).
Regarding claim 8, the plurality of lateral lumens comprises: a first set of lateral lumens and a second set of lateral lumens arranged at approximately 90 degrees relative to each other (paragraph 52, Figure 2).
Regarding claim 9, the first longitudinal channel (18) and the second longitudinal channel (18) are spaced opposite each other on the outer surface of the tapered head (Figure 2).
Claim(s) 1 and 10 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Moseley et al. (U.S. Patent No. D818592).
Moseley et al. discloses a surgical instrument comprising: a shaft (Figure 2) having a proximal end, a distal end, and a longitudinal axis (Figure 2); and a tapered head (the figures show a tapered head in solid line) proximate the distal end of the shaft (Figure 2), said tapered head comprising: a longitudinal axis generally coaxial to the longitudinal axis of the shaft (Figure 2); a lateral axis generally transverse to the longitudinal axis of the tapered head (Figure 2 and 4, it can be construed that the head has a longitudinal axis and a lateral axis); an outer surface; a plurality of longitudinal channels (Figure 2) and a plurality of threaded sections (figure 2), each being circumferentially and intermittently spaced around the outer surface (Figure 1, 2); and at least one lateral lumen (Figure 2-4), wherein the at least one lateral lumen extends laterally along a direction of the lateral axis of the tapered head (Figure 4).
Regarding claim 10, the tapered head further comprises: a first sloped side wall extending from the distal end of the shaft at a first angle relative to the longitudinal axis of the shaft; and a second sloped side wall intersecting with the first sloped side wall to form an enlarged diameter proximal section, said second sloped side wall extending circumferentially outwardly from the shaft at a second angle relative to the longitudinal axis of the shaft (Figures 1-3).
Claim Rejections - 35 USC § 103
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.
Claim(s) 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Moseley et al. (U.S. Patent No. D818592).
Moseley et al. discloses the claimed invention except for the second sloped side wall extends circumferentially outwardly from the shaft at an angle of 10-50 degrees from the longitudinal axis. It would have been obvious to one having ordinary skill in the art to construct the second sloped side wall having an angle of 10-50 degrees, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREW YANG whose telephone number is (571)272-3472. The examiner can normally be reached 9:00 - 9:00 M-F.
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/ANDREW YANG/Primary Examiner, Art Unit 3775