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.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3, 4 of U.S. Patent No. 10,575,840. 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) 14, 15, 19, 20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Butler et al. (U.S. Patent No. 7540839).
Butler et al. discloses a retractor/protector comprising: a flexible outer ring (110) having an inner circumference (Figure 1); an inner ring (105); a flexible sheath (106) having a proximal end and a distal end and being disposed between the flexible outer ring and the inner ring (Figure 1), the flexible outer ring being attached to the proximal end of the flexible sheath (Figure 2) and comprising an annular axis around which the flexible outer ring is rotatable (Figure 2, it can be construed that the outer ring 110 can rotate by twisting the proximal end of the device) and the flexible sheath is rolled up (Figure 50, the sheath is rolled up and around an base); and a longitudinal axis defining an instrument access channel extending through the flexible sheath from the flexible outer ring at the proximal end of the flexible sheath to the inner ring at the distal end of the flexible sheath (Figure 50), the inner ring being attached to distal end of the flexible sheath (Figure 50); and a base (171) having an outer circumference with a groove arranged to receive the flexible outer ring, the base being configured to be mounted inside the inner circumference of the flexible outer ring (Figure 47, 50).
Regarding claim 15, the flexible outer ring is configured to receive a sealing cap to provide a seal, and wherein the sealing cap further provides a working channel through the sealing cap into a body cavity (Column 10, Lines 49-63).
Regarding claim 19, the flexible outer ring (110) comprises a rigid support ring (111).
Regarding claim 20, the retractor/protector further comprising linked rigid segments (155) detachably connected to the flexible outer ring (Figure 35), the linked rigid segments configured to provide increased rigidity to a portion of the flexible outer ring having the linked rigid segments attached thereto.
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) 16, 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Butler et al. (U.S. Patent No. 7540839) in view of Nguyen et al. (U.S. Patent No. 7650887).
Butler discloses the claimed invention except for the flexible outer ring comprises at least two separate tubes. Nguyen et al. teaches a wound retractor with an outer ring with at least two separate tubes (108, 110). The two tubes allow for easy retraction of a sleeve (106) (Column 4, Lines 31-44). It would have been obvious to one skilled in the art to construct the device of Butler et al. with flexible outer ring comprising two separate tubes in view of Nguyen et al. to allow for easy retraction of the retractor sleeve.
Regarding claim 17, Nguyen et al. further teaches that the device comprises an elastic ring (302) in one of the at least two separate tubes to provide audible feedback retraction stability (Column 4, Lines 54-62). It is noted that stainless steel has elastic properties as does all materials). Thus, including an elastic ring in the device of Butler and Nguyen et al. would have been obvious to one skilled in the art as described above.
Allowable Subject Matter
Claims 2-13, 18 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.
The following is a statement of reasons for the indication of allowable subject matter: Claim 1 includes the allowable subject matter from related application 15/288,846 and is only rejected under double patenting. A terminal disclaimer or incorporating one of the dependent claims will place the claims in condition for allowance. Regarding claim 20, magnetic material in at least one of the two tubes of the and a second magnetic material in the sheath of a wound retractor is not disclosed in the prior art.
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Kevin Truong can be reached at 571-272-4705. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANDREW YANG/Primary Examiner, Art Unit 3775