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 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims of U.S. Patent No. 12193664. Although the claims at issue are not identical, they are not patentably distinct from each other because the limitations claimed within the current claims are covered by the patented claims. Please see the explanation of the independent claims below:
Claim 1. Patent claim 1 recites a powered surgical stapler having a motor-driven firing assembly and a speed-control circuit that drives the assembly through initial, middle, and final distances, reduces the target speed in the final distance, detects impact of the distal firing assembly with the end effector, and ceases driving in response. Examined claim 1 recites the corresponding firing-zone, slowdown, impact-detection, and stopping operations as processor-executable instructions stored on a non-transitory computer-readable medium. Patent claim 1 additionally specifies an initial-to-middle speed increase; examined claim 1 does not require that particular speed relationship. It would have been an obvious implementation of the speed-control circuit expressly recited in patent claim 1 to store instructions that cause its processor to perform the claimed control operations. The broader description of the earlier firing zones in examined claim 1 does not make its final-zone slowdown and impact-responsive stopping sequence patentably distinct from patent claim 1.
Claim 10. Patent claim 1 recites driving the firing assembly at a decreased target speed through the final distance, detecting its distal portion’s impact with the end effector, and ceasing drive in response. Examined claim 10 recites processor-executable instructions that decrease the target speed by adjusting a motor-drive signal and intentionally continue driving through the final distance until impact. Implementing the patent claim’s commanded motor speeds through a motor-drive signal and stored control instructions would have been an obvious way to operate its motor and speed-control circuit. Further, the patent claim’s sequence of driving through the final distance and detecting the resulting distal impact supports the conclusion that continuing drive to that impact would have been an obvious variation. The difference in statutory claim form and the express description of intentional continued drive do not, on this construction, render examined claim 10 patentably distinct.
Claim 19. Patent claim 1 and examined claim 19 each recite a powered stapler comprising a longitudinally translating staple-firing assembly, a mechanically coupled motor assembly, and a speed-control circuit that reduces target firing speed in a final distance associated with distal impact. Patent claim 1 further requires an initial-to-middle speed increase and impact-responsive cessation of drive. Examined claim 19 instead expressly specifies adjusting the motor-drive signal and intentionally continuing drive until impact, without requiring the particular earlier speed increase. Adjusting a motor-drive signal to carry out the patent claim’s target-speed commands and continuing the claimed final-distance drive to its detected impact, would have been obvious ways to implement the operation defined by patent claim 1. Examined claim 19 therefore does not define a patentably distinct invention.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MASUD AHMED whose telephone number is (571)270-1315. The examiner can normally be reached M-F 9:00-8:30 PM PST with IFP.
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, Abby Lin can be reached at 571 270 3976. 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.
MASUD . AHMED
Primary Examiner
Art Unit 3657A
/MASUD AHMED/Primary Examiner, Art Unit 3657
Prosecution Insights