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
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) 1-26 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Bechtel et al. (USPN 2021/0177312).
Regarding claim 1, Bechtel discloses a device comprising: a housing (oximetry system 500) comprising a first structure (605) and a second structure (478 optical port and coupler 419), wherein the housing comprising the first and second structures is reusable with a plurality of laparoscopic elements that are disposable (501/608/708), the first structure comprises a first opening at an end of the first portion, a processor (420), a memory coupled to the processor (422), and a light engine coupled to the processor (440), the second structure, coupled to the first structure, comprises a second opening at a first end of the second portion, wherein the second opening is coupled to the first opening (implied from description and figures), a first optical interface at a second end of the second portion (coupler 419), a first optical conductor coupled from the light engine through the first and second openings to the first optical interface (optical fibers 447), and a photodetector (525) coupled to the first optical interface and the processor (fig. 5); a laparoscopic element (501), removably couplable to the second structure of the housing (para. [0009] " The laparoscopic element can be removed"), comprising a third structure (417), a fourth structure (508), and a second optical conductor (450), wherein the third structure comprises a third opening at a first end of the laparoscopic element and a fourth opening oppositely located from the third opening (implied from description and figures), an interior surface of the third structure couples over and mates with an outside surface of the second structure through the third opening (implied from fig. 1), forming a connection coupling, when the laparoscopic element is removably coupled to the second structure of the housing (para. [0079],"Turning to coupler elements 417 and 419, the coupler elements are adapted to releasably connect to each other"), the fourth structure comprises a sensor head (2457) located at a second end of the fourth structure that is oppositely located from a first end of the fourth structure, and the second optical conductor is optically coupled to the first optical conductor (para. [0084]) in an interior space of the third structure when the laparoscopic element is removably coupled to the second structure of the housing and is coupled through the interior space to the sensor head (para. [0084]); and a third optical conductor (464; fig. 5) is optically coupled to the photodetector (455) in the interior space of the third structure when the laparoscopic element is removably coupled to the second structure of the housing and is coupled through the interior space to the sensor head.
Regarding claims 2 and 24, Bechtel discloses the second structure comprises a male portion and the third structure comprises a female portion of a removable coupling interface between the housing and the laparoscopic element ([0111]).
Regarding claims 3, 25, Bechtel discloses the third opening of the third structure comprises a first diameter and the fourth opening of the third structure comprises a second diameter less than the first diameter (figure 1).
Regarding claim 4, Bechtel discloses the fourth opening is at a position closer to a tip of the laparoscopic element than the first end of the laparoscopic element ([0083]-[0084]).
Regarding claims 5, 26, the second structure comprises exterior threads that removably couple to interior threads of the third structure to form the connection coupled when the housing and laparoscopic element are removably coupled ([0083]-[0084]).
Regarding claim 6, Bechtel discloses the connection coupling is a latched connection coupling ([0111]).
Regarding claim 7, Bechtel discloses the connection coupling is a spring-loaded connection coupling ([0111]).
Regarding claim 8, Bechtel discloses the first portion comprises a display coupled to the processor and visible from an exterior of the first portion ([0087]).
Regarding claim 9, Bechtel discloses the first end of the fourth structure is located in the interior space through the fourth opening of the third structure ([0083]-[0084]).
Regarding claim 10, Bechtel discloses the second optical conductor is longer than the first optical conductor ([0083]-[0084]).
Regarding claim 11, Bechtel discloses the second optical conductor is at least partially located in an interior space of the fourth structure ([0083]-[0084]).
Regarding claim 12, Bechtel discloses the first and second optical conductors are end-to- end coupled when the housing and laparoscopic element are removably coupled (display 115, figure 1).
Regarding claim 13, Bechtel discloses the second structure comprises a printed circuit board (PCB), a photodetector located on a surface of the PCB and coupled to the processor, and a third optical conductor coupled to the photodetector, and wherein the laparoscopic element comprises a fourth optical fiber optically coupled to the photodetector when the housing and laparoscopic element are removably coupled and coupled to the sensor head ([0083]-[0084]).
Regarding claim 14, Bechtel discloses the fourth optical fiber is longer than the third optical fiber ([0083]-[0084]).
Regarding claim 15, Bechtel discloses the surface of the PCB that the photodetector is located faces away from the laparoscopic element ([0079], ([0083]-[0084])).
Regarding claim 16, Bechtel discloses the fourth optical fiber is at least twice as long as the third optical fiber ([0079], ([0083]-[0084])).
Regarding claim 17, Bechtel discloses the fourth optical fiber is longer than the first optical fiber and the second optical fiber is longer than the third optical fiber ([0079], ([0083]-[0084])).
Regarding claim 18, Bechtel discloses the second optical fiber is at least twice as long as the first optical fiber ([0079], ([0083]-[0084])).
Regarding claim 19, Bechtel discloses the second structure comprises a first axis extending through the first opening of the first structure and the first optical interface positioned opposite of the first opening of the first structure, the third structure comprises a second axis extending through the third opening of the third structure and the fourth opening of the third structure, the fourth structure comprises a third axis extending through the sensor head and an opening at the first end of the fourth structure, and the first, second, and third axes are coaxial ([0079], ([0083]-[0084])).
Regarding claim 20, Bechtel discloses the first structure comprises a first key structure, the third structure comprises a second key structure, and when the first and second key structures are mates the first, second, and third axes are coaxially aligned ([0079], ([0083]-[0084])).
Regarding claim 21, Bechtel discloses the first key structure comprises at least one pin, the second key structure comprise at least one slot, and the pin is positioned in the slot when the laparoscopic element is removably coupled to the second structure of the housing ([0079], ([0083]-[0084])).
Regarding claim 22, Bechtel discloses third structure comprises a first diameter outside of a first end of the third structure that includes the third opening, the third structure comprises a second diameter outside of a second end of the third structure that includes the fourth opening, and the first diameter is greater than the second diameter ([0079], ([0083]-[0084])).
Regarding claim 23, Bechtel discloses a device comprising: a housing (oximetry system 500) comprising a first structure (605) and a second structure (478 optical port and coupler 419), wherein the housing comprising the first and second structures is reusable with a plurality of laparoscopic elements that are disposable (501/608/708), the first structure comprises a first opening at an end of the first portion, a processor (420), a memory coupled to the processor (422), and a light engine coupled to the processor (440), the second structure, coupled to the first structure, comprises a second opening at a first end of the second portion, wherein the second opening is coupled to the first opening (implied from description and figures), a first optical interface at a second end of the second portion (coupler 419), a first optical conductor coupled from the light engine through the first and second openings to the first optical interface (optical fibers 447), and a photodetector (525) coupled to the first optical interface and the processor (fig. 5); a laparoscopic element (501), removably couplable to the second structure of the housing (para. [0009] " The laparoscopic element can be removed"), comprising a third structure (417), a fourth structure (508), and a second optical conductor (450), wherein the third structure comprises a third opening at a first end of the laparoscopic element and a fourth opening oppositely located from the third opening (implied from description and figures), an interior surface of the third structure couples over and mates with an outside surface of the second structure through the third opening (implied from fig. 1), forming a connection coupling, when the laparoscopic element is removably coupled to the second structure of the housing (para. [0079],"Turning to coupler elements 417 and 419, the coupler elements are adapted to releasably connect to each other"), the fourth structure comprises a sensor head (2457) located at a second end of the fourth structure that is oppositely located from a first end of the fourth structure, and the second optical conductor is optically coupled to the first optical conductor (para. [0084]) in an interior space of the third structure when the laparoscopic element is removably coupled to the second structure of the housing and is coupled through the interior space to the sensor head (para. [0084]); and a third optical conductor (464; fig. 5) is optically coupled to the photodetector (455) in the interior space of the third structure when the laparoscopic element is removably coupled to the second structure of the housing and is coupled through the interior space to the sensor head; the second structure comprises a printed circuit board (PCB), a photodetector located on a surface of the PCB and coupled to the processor, and a third optical conductor coupled to the photodetector, and the laparoscopic element comprises a fourth optical fiber optically coupled to the third optical conductor when the housing and laparoscopic element are removably coupled and coupled to the sensor head ([0083]-[0084]).
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 1-26 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-27 of copending Application No. 19/014,124 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims are directed towards similar subject matter.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
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/MARJAN FARDANESH/Primary Examiner, Art Unit 3791