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 .
Specification
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
The disclosure is objected to because of the following informalities: paragraph 60, line 5, “one ore more” should read “one or more”.
Appropriate correction is required.
Claim Objections
Claims objected to because of the following informalities:
Claim 7, “the housing further comprises”
Claim 8, “the laparoscopic element further comprises”
Claim 10, “the third structure further comprises”
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-28 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites the limitations "the first portion" in line 5 and “the second portion” in lines 8-9. There is insufficient antecedent basis for these limitations in the claim. It seems these should instead refer to “the first structure” and “the second structure,” respectively. Claims 12 and 19 also recites the limitations “the first portion” and “the second portion” and should also be corrected.
Claim 2 recites the limitation "the third optical fiber" in line 2. There is insufficient antecedent basis for this limitation in the claim. It seems this refers to the third optical conductor.
Claim 9 recites “the sixth structure”. There is insufficient antecedent basis for this limitation in the claim. It seems claim 9 should depend from claim 8.
Claim 25 recites the limitations “the second optical fiber,” “the first optical fiber,” “the third optical fiber,” "the fourth optical fiber," and “the fifth optical fiber.” There is insufficient antecedent basis for these limitations in the claim. It seems these should refer to respective optical conductors rather than optical fibers.
Claim 28 recites the limitations “the first optical fiber” and “the second optical fiber”. There is insufficient antecedent basis for these limitations in the claim. It seems these should refer to first and second optical conductors, respectively.
Claims 3-8, 10-18, 20-24, and 26-27 are rejected by virtue of dependency.
Claim Rejections - 35 USC § 103
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 (i.e., changing from AIA to pre-AIA ) 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 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.
Claims 1-6, 12-22, and 24-28 are rejected under 35 U.S.C. 103 as being unpatentable over Bechtel (US 2021/0177312, cited by Applicant) in view of Poll (US 2022/0378279).
Regarding claim 1, Bechtel teaches a device (Figs. 17, 19) comprising:
a housing (probe unit 1905) comprising a first structure (probe unit 1905b) and a second structure (probe unit 1905a), wherein the housing comprising the first and second structures is reusable with a plurality of laparoscopic elements that are disposable (“laparoscopic element 1908 can be disposable elements of the oximeter probe and the probe unit can be reusable,” par. 160),
the first structure (probe unit 1905b) comprises a processor (420), a memory (422) coupled to the processor, and a light engine (440) coupled to the processor,
the second structure (probe unit 1905a), coupled to the first structure (Fig. 19), comprises a first optical interface (optical port 449, Fig. 17) at a second end of the second portion, a first optical conductor (light guides 447) coupled from the light engine to the first optical interface (Fig. 17), and a photodetector (455) coupled to the first optical interface and the processor (Fig. 19);
a laparoscopic element (1908), removably couplable to the second structure of the housing, comprising a third structure (trocar 485), a fourth structure (laparoscopic tube 452, Fig. 12), and a second optical conductor (light guides 450), wherein the third structure comprises a third opening (top part of trocar 485, Fig. 19) at a first end of the laparoscopic element and a fourth opening oppositely located from the third opening (bottom part of trocar 485, Fig. 19),
the fourth structure comprises a sensor head (1957) located at a second end of the fourth structure that is oppositely located from a first end of the fourth structure (Fig. 19), and
the second optical conductor is optically coupled to the first optical conductor in an interior space of the third structure (light guide 450 is in an interior space of trocar 485, Fig. 19) 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 (“optical ports 449 and 478 when connected, in-turn optically connect…light guides 447 and 450,” par. 152; Fig. 17); and
a third optical conductor (light guides 464) is optically coupled to the photodetector in the interior space of the third structure (light guide 464 is in an interior space of trocar 485, Fig. 19) 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 (“optical ports 449 and 478 when connected, in-turn optically connect light guides 480 and 464,” par. 152; Fig. 17).
While Bechtel doesn’t show light engine 440 in probe portion 1905b, optical port 449 in probe portion 1905a, or light guides 447 coupling the light engine to the first optical interface, these are features that would be obvious to one of ordinary skill in the art before the effective filing date of the invention. Bechtel teaches that oximetry system 1900 is similar to the operation of oximetry system 1700 and that the portions of the probe unit can include additional or alternative electrical components not shown (par. 158). Thus, one may be motivated to use aspects of the structure shown in Fig. 17, including the optical port 449 and light guides 447. Placing the light engine in probe portion 1905b would be obvious to try as Bechtel teaches different arrangements of the electronic components (Figs. 4-6, 13-24; par. 158).
Furthermore, while Bechtel teaches the probe portion 1905a is disposable, it would be obvious to one of ordinary skill in the art before the effective filing date of the invention to make the probe portion 1905a reusable and comprise coupler elements between the laparoscopic tube and the probe portion, as shown in Fig. 17. One would be motivated to do so since Bechtel also teaches that electronic components are preferably reused (“the electronics can be reused multiple times with replacement laparoscopic elements,” par. 9; “reuse of the handpiece, which houses a number of relatively costly electrical components,” par. 11). Since Bechtel suggests various alternate reusable and disposable arrangements, this should not affect the functioning of the device (“the oximeter probe may be a disposable device. Alternatively … the probe unit may be reusable and the laparoscopic element may be disposable or the laparoscopic element might be adapted to be sterilized for subsequent reuse,” par. 50).
Thus, Bechtel teaches or suggests all limitations of claim 1 except for a first opening at an end of the first portion; a second opening at a first end of the second portion, wherein the second opening is coupled to the first opening; the first optical conductor going through the first and second openings; and an interior surface of the third structure couples over and mates with an outside surface of the second structure through the third opening, forming a connection coupling, when the laparoscopic element is removably coupled to the second structure of the housing.
Poll teaches an analogous laparoscopic device (“this application relates to…laparoscopes,” par. 2) comprising a housing (Fig. 2A) comprising a first structure (handle 114) and a second structure (handle 112), wherein the housing comprising the first and second structures is reusable with a plurality of laparoscopic elements that are disposable (“handle 112, 114 may be designed to be reusable … replaceable shaft portion 110 may be disposable,” par. 48), the first structure comprises a first opening at an end of the first portion (joint 128, Fig. 3C) ; the second structure comprises a second opening at a first end of the second portion (see end of rotation collar 112 at joint 128, Fig. 3C), wherein the second opening is coupled to the first opening (“rotation between the handle's stationary portion 114 and rotation collar 112 may be provided via a rotational bearing at joint 128,” par. 86); cables going through first and second openings (Fig. 3F); and a laparoscopic element, removably couplable to the second structure of the housing (“distal-most portion of the handle may serve as a mounting base for shaft 110, and may disconnect from the remainder 112, 114 of the handle,” par. 49), comprising a third structure (trocar 102 or cannula 132), a fourth structure (shaft 110), wherein an interior surface of the third structure couples over and mates with an outside surface of the second structure through the third opening (Figs. 1G-1H; “the endoscope is being locked into the outer sheath/trocar 102,” par. 149), forming a connection coupling (pars. 157-162), when the laparoscopic element is removably coupled to the second structure of the housing (Fig. 1G).
It would be obvious to one of ordinary skill in the art before the effective filing date of the invention to modify Bechtel with the various couplings between the first, second, and third structures and form factors taught by Poll. Since Bechtel suggests various couplings but does not explicitly shows them (“The laparoscopic element can be removably connected to the probe unit by one or more connector devices. For example, the laparoscopic element can include a twist lock device … latched into place via a latch, a setscrew, a rotatable collar,” par. 51; couplers 419 and 417, par. 101), one would be motivated to look at known laparoscopic device structures, such as Poll’s. Additionally, Bechtel suggests using different form factors (“Oximeter probe 1901 can have a form factor similar to oximeter probe 101, 201, 301, or have other form factors,” par. 177). Since both devices are directed towards optical laparoscopic devices, this combination should be within the ordinary skill in the art. In combination, the first optical conductor (light guide 447) would have to go through the first and second openings to connect the light engine in the first probe portion 1905b to the optical port 449 in the second probe portion 1905a.
Regarding claim 2, Bechtel teaches wherein the third optical conductor (464) is optically coupled to the photodetector (455) through an air gap located between the third optical fiber and the photodetector (light guide 464 is indirectly coupled through optical ports 449, 478 and couplers 417, 419; see also par. 111).
Regarding claim 3, Poll teaches the second structure comprises a male portion (male conical inner surface 810) and the third structure comprises a female portion (female mating cone) of a removable coupling interface between the housing and the laparoscopic element (Fig. 8A).
Regarding claim 4, Poll teaches 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 (the opening at the base of the trocar is wider than the tip, Figs. 1A, 8A).
Regarding claim 5, Bechtel teaches the fourth opening is at a position closer to a tip of the laparoscopic element than the first end of the laparoscopic element (Fig. 19).
Regarding claim 6, Bechtel teaches the second optical conductor (light guide 450) is longer than the first optical conductor (light guide 447) and the third optical conductor (light guide 464) is longer than the first optical conductor (Fig. 17; the laparoscopic element is longer than the probe unit, pars. 131, 138; so, the light guides in the laparoscopic element must be longer in order to span the length of the laparoscopic element).
Regarding claim 12, Bechtel teaches first portion comprises a display coupled to the processor and visible from an exterior of the first portion (Fig. 1).
Regarding claim 13, Bechtel teaches the first end of the fourth structure is located in the interior space through the fourth opening of the third structure (end of laparoscopic tube 452 is within trocar 485 near its opening, Fig. 17).
Regarding claim 14, Bechtel teaches the second optical conductor (light guide 450) is at least partially located in an interior space of the fourth structure (Figs. 17, 19).
Regarding claim 15, Bechtel teaches the first and second optical conductors (light guides 447 and 450) are end-to-end coupled when the housing and laparoscopic element are removably coupled (Fig. 17; “When couplers 417 and 419 are connected, light emitted from the LEDs is transmitted into light guides 447 and thereafter is transmitted through light guide 477 to light guides 450,” par. 84).
Regarding claim 16, Bechtel teaches a printed circuit board (PCB) (659, Fig. 12), While Bechtel does not teach the PCB in the second portion with the photodetector located on a surface of the PCB, it would be obvious to one of ordinary skill in the art before the effective filing date of the invention to provide the PCB in the second portion in order to support the TIAs and photodetector in the embodiment of Fig. 19. One would be motivated to do so because Bechtel teaches a PCB supports electronic components in the probe (“probe unit has a width of from about 75 millimeters to about 95 millimeters, which will accommodate a printed circuit board of about this size,” par. 137; “The TIAS 460 are positioned between the light guides on a PCB 659,” par. 123; “other electrical elements can be mounted on the second surface of PCB 659,” par. 125)
Regarding claim 17, while Bechtel does not explicitly teach the surface of the PCB on which the photodetector is located faces towards the sensor head of the laparoscopic element, such an arrangement would be obvious to try to one of ordinary skill in the art. Since the photodetector receives signals from the sensor head, one would be motivated to place the photodetector in a direction facing the sensor head to facilitate optical coupling of the components (“first of the analog wire bundles provides power, ground, and control signal through the laparoscopic element from PCB 659 to the photodetectors,” par. 124). One may be further motivated to try this arrangement since Bechtel suggests using different arrangements (“The photodetectors and ends of the light guides can be arranged in a variety of configurations,” par. 111)
Regarding claim 18, Bechtel in view of Poll teaches the second structure comprises a first axis extending through the first opening of the first structure (handle is cylindrical, Bechtel Fig. 3, Poll Fig. 3E) and the first optical interface positioned opposite of the first opening of the first structure (Bechtel Fig. 19 shows photodetector 455 opposite the couplers 417/419), 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 (Bechtel Fig. 19 shows the trocar, laparoscopic tube 452, and separable probe portion 1905a are vertically aligned; Poll Figs. 1G-1H shows the handle, trocar, and shaft 110 are coaxial).
Regarding claim 19, Bechtel in view of Poll teaches or suggests the limitations of claim 19 (see rejection of claim 1 above). Bechtel further teaches a printed circuit board (PCB) (659) and a photodetector (455).
While Bechtel does not teach the PCB with the photodetector located on a surface of the PCB and the photodetector coupled to the processor through the PCB, it would be obvious to one of ordinary skill in the art before the effective filing date of the invention to provide a PCB in order to support the electronic components in Fig. 19. One would be motivated to do so because Bechtel teaches a PCB supports electronic components in the probe and provides electrical connections between components (“probe unit…will accommodate a printed circuit board,” par. 137; pars. 123-124; “other electrical elements can be mounted on the second surface of PCB 659,” par. 125).
Regarding claim 20, while Bechtel does not explicitly teach the surface of the PCB on which the photodetector is located faces towards the sensor head of the laparoscopic element, such an arrangement would be obvious to try to one of ordinary skill in the art. Since the photodetector receives signals from the sensor head, one would be motivated to place the photodetector in a direction facing the sensor head to facilitate optical coupling of the components (“first of the analog wire bundles provides power, ground, and control signal through the laparoscopic element from PCB 659 to the photodetectors,” par. 124). One may be further motivated to try this arrangement since Bechtel suggests using different arrangements (“The photodetectors and ends of the light guides can be arranged in a variety of configurations,” par. 111).
Regarding claim 21, while Bechtel does not explicitly teach the PCB is in the second portion, it would be obvious to one of ordinary skill in the art before the effective filing date of the invention to provide the PCB in the second portion in order to support the TIAs and photodetector in the separable probe portion 1905a in Fig. 19. One would be motivated to do so because Bechtel teaches a PCB supports electronic components in the probe (“probe unit has a width of from about 75 millimeters to about 95 millimeters, which will accommodate a printed circuit board of about this size,” par. 137; “The TIAS 460 are positioned between the light guides on a PCB 659,” par. 123; “other electrical elements can be mounted on the second surface of PCB 659,” par. 125)
Regarding claim 22, Bechtel in view of Poll teaches the second structure comprises a first axis extending through the first opening of the first structure (handle is cylindrical, Bechtel Fig. 3, Poll Fig. 3E) and the first optical interface positioned opposite of the first opening of the first structure (Bechtel Fig. 19 shows photodetector 455 opposite the couplers 417/419), 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 when the housing and laparoscopic element are removably coupled (Bechtel Fig. 19 shows the trocar, laparoscopic tube 452, and separable probe portion 1905a are vertically aligned; Poll Figs. 1G-1H shows the handle, trocar, and shaft 110 are coaxial).
Regarding claim 24, Bechtel teaches the second structure comprises a fourth optical conductor coupled from the light engine through the first and second openings to the first optical interface (two light guides 447 connecting light engines 440 to optical port 449, Fig. 17), the laparoscopic element comprises a fifth optical conductor optically coupled to the fourth optical conductor in an interior space of the third structure (two light guides 450 connecting to light guides 447, Fig. 17) when the laparoscopic element is removably coupled to the second structure of the housing and is coupled through the interior space of the fourth structure to the sensor head (Fig. 17; “When couplers 417 and 419 are connected, light emitted from the LEDs is transmitted into light guides 447 and thereafter is transmitted through light guide 477 to light guides 450,” par. 84).
Regarding claim 25, Bechtel teaches the second optical fiber (first one of light guide 450) is longer than the first optical fiber (first one of light guide 447), the third optical fiber (light guide 464) is longer than the first optical fiber (first one of light guide 447) and is longer than the fourth optical fiber (second one of light guide 447), and the fifth optical fiber (second one of light guide 450) is longer than the first optical fiber and is longer than the fourth optical fiber (Fig. 17; the laparoscopic element is longer than the probe unit, pars. 131, 138; so, the light guides in the laparoscopic element must be longer in order to span the length of the laparoscopic element).
Regarding claim 26, Bechtel teaches wherein the third optical conductor (464) is optically coupled to the photodetector (455) through an air gap (light guide 464 is indirectly coupled through optical ports 449, 478 and couplers 417, 419; see also par. 111).
Regarding claim 27, Bechtel teaches the first and second optical conductors are end-to-end coupled (Fig. 17; “When couplers 417 and 419 are connected, light emitted from the LEDs is transmitted into light guides 447 and thereafter is transmitted through light guide 477 to light guides 450,” par. 84).
Regarding claim 28, Bechtel teaches a first core of the first optical fiber has a first numerical aperture (light guides 447 necessarily have a first numerical aperture), a second core of the second optical fiber has a second numerical aperture (light guides 450 necessarily have a second numerical aperture). While Bechtel doesn’t explicitly teach the first numerical aperture is less than the second numerical aperture, it would be obvious to try to one of ordinary skill in the art before the effective filing date of the invention to use different numerical apertures, with light guide 447 having a smaller numerical aperture than light guide 450. The optical fibers necessarily have numerical apertures and perform the same purpose of propagating light from the light engine (“Light emitted from the LEDs in the light engine is transmitted into light guides 447 and thereafter is transmitted through light guide 477 to light guides 450,”153). Selecting the numerical apertures to be the same or different would be obvious to try with predictable results.
Claims 7-10 and 23 are rejected under 35 U.S.C. 103 as being unpatentable over Bechtel in view of Poll, as applied to claims 1 and 22 above, and further in view of Boutillette (US 2006/0111613).
Regarding claims 7 and 23, Bechtel suggests connector devices for coupling the various components, the connector devices including threads (“one or more connector device…a twist lock device that is adapted to twist lock the laparoscopic element to the probe unit. Alternatively … a latch, a setscrew, a rotatable collar,” par. 51). In modifying Bechtel to comprise elements of both Figs. 17 and 19 (see rejection of claim 1 above), there may be as many as four coupler elements to couple the laparoscopic tube 452 to separable probe portion 1905a (Fig. 17) and couple probe portion 1905a to probe portion 1905b (Fig. 19).
Boutillette teaches a structure (proximal connector housing 102) comprising an interior space (bore 104 and 107) and exterior threads (threaded nipple 106), a second structure (shaft adapter 108) is at least partially located in the interior space of the fifth structure (Fig. 1), a third structure (cap 116) comprises interior threads that couple to the exterior threads of the fifth structure to form a first portion of the connection coupling when the housing and laparoscopic element are removably coupled (Fig. 1).
It would be obvious to one of ordinary skill in the art before the effective filing date of the invention to modify Bechtel in view of Poll to comprise a fifth structure with threads attachable to the second and third structures, as shown by Boutillete Fig. 1. Since Bechtel as modified may comprise various connectors and couplers, one may be motivated to look at known coupler structures, such as Boutillette’s. Since Bechtel suggests screw couplings (par. 51), the results of this modification should be successful.
Regarding claims 8 and 9, Bechtel suggests connector devices for coupling the various components, the connector devices including threads, latches, and rotational couplings (“one or more connector device…a twist lock device that is adapted to twist lock the laparoscopic element to the probe unit. Alternatively … a latch, a setscrew, a rotatable collar,” par. 51).
It would be obvious to one of ordinary skill in the art before the effective filing date of the invention to comprise additional connector devices including a latched connections and rotational connections. In modifying Bechtel to comprise elements of both Figs. 17 and 19 (see rejection of claim 1 above), there may be as many as four coupler elements to couple the laparoscopic tube 452 to separable probe portion 1905a (Fig. 17) and couple probe portion 1905a to probe portion 1905b (Fig. 19). Using latched connections and rotational connections, as suggested by Bechtel, would be obvious to try (par. 51).
Regarding claim 10, Boutillete teaches the third structure comprises exterior channels, the fifth structure comprises interior channels that mate with the exterior channels to form a rotational interface between the third and fifth structures (Fig. 1).
Claims 11 is rejected under 35 U.S.C. 103 as being unpatentable over Bechtel in view of Poll, as applied to claim 1 above, and further in view of Collins (US 4,534,339).
Regarding claim 11, Bechtel suggests connector devices for coupling the various components, the connector devices including threads, latches, and rotational couplings (“one or more connector device…a twist lock device that is adapted to twist lock the laparoscopic element to the probe unit. Alternatively … a latch, a setscrew, a rotatable collar,” par. 51). Bechtel does not explicitly teach or suggest the connection coupling is a spring-loaded connection coupling. Collins teaches an analogous endoscope comprising spring loaded latches (see 10 in Figs. 1, 4, 6, 7 and 14 in Figs. 6-7) between the shaft 4 and handle 2 (see related description and claims 3, 13).
It would be obvious to one of ordinary skill in the art before the effective filing date of the invention to modify Bechtel in view of Poll to a spring-loaded connection coupling. Since Bechtel as modified may comprise various connectors and couplers, one may be motivated to look at known coupler structures, such as Collins’s. Since Collins also teaches an analogous detachable shaft and handle for an endoscope, this modification could be applied to Bechtel’s with a reasonable expectation of success.
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 1-28 are 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 method claims of the co-pending application would make the device of the instant claims and include the same structural limitations.
Claims 1, 3-4, 16, 19, and 21 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 13 and 23-25 of copending Application No. 19/012,826 (reference application). The claims have been reproduced below for comparison. Although the claims at issue are not identical, they are not patentably distinct from each other because co-pending claims 13 and 23 recite all the same limitations as instant claims 1, 16, 19, and 21. Instant claims 3 and 4 can be taught from co-pending claims 24 and 25, respectively.
Co-pending 19/012,826 claims
Instant claims
1. A device comprising: a housing comprising a first structure and a second structure, wherein the housing comprising the first and second structures is reusable with a plurality of laparoscopic elements that are disposable, the first structure comprises a first opening at an end of the first portion, a processor, a memory coupled to the processor, and a light engine coupled to the processor, 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, a first optical interface at a second end of the second portion, and a first optical conductor coupled from the light engine through the first and second openings to the first optical interface; and a laparoscopic element, removably couplable to the second structure of the housing, comprising a third structure, a fourth structure, and a second optical conductor, 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, an interior surface of the third structure couples over and mates with an outside surface of the second structure through the third opening, forming a connection coupling, when the laparoscopic element is removably coupled to the second structure of the housing, the fourth structure comprises a sensor head 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 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.
13. The device of claim1, wherein 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.
23. A device comprising: a housing comprising a first structure and a second structure, wherein the housing comprising the first and second structures is reusable with a plurality of laparoscopic elements that are disposable, the first structure comprises a first opening at an end of the first structure, a processor, a memory coupled to the processor, and a light engine coupled to the processor, the second structure, coupled to the first structure, comprises a second opening at a first end of the second structure, wherein the second opening is coupled to the first opening, a first optical interface at a second end of the second structure, and a first optical conductor coupled from the light engine through the first and second openings to the first optical interface; and a laparoscopic element, removably couplable to the second structure of the housing, comprising a third structure, a fourth structure, and a second optical conductor, 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, an interior surface of the third structure couples over and mates with an outside surface of the second structure through the third opening, forming a connection coupling, when the laparoscopic element is removably coupled to the second structure of the housing, the fourth structure comprises a sensor head located at a second end of the fourth structure that is oppositely located from a first end of the fourth structure, the second optical conductor is optically coupled to the first optical conductor 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, 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.
24. The device of claim 23 wherein 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.
25. The device of claim 23 wherein 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.
1. A device comprising: a housing comprising a first structure and a second structure, wherein the housing comprising the first and second structures is reusable with a plurality of laparoscopic elements that are disposable, the first structure comprises a first opening at an end of the first portion, a processor, a memory coupled to the processor, and a light engine coupled to the processor, 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, a first optical interface at a second end of the second portion, a first optical conductor coupled from the light engine through the first and second openings to the first optical interface, and a photodetector coupled to the first optical interface and the processor; a laparoscopic element, removably couplable to the second structure of the housing, comprising a third structure, a fourth structure, and a second optical conductor, 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, an interior surface of the third structure couples over and mates with an outside surface of the second structure through the third opening, forming a connection coupling, when the laparoscopic element is removably coupled to the second structure of the housing, the fourth structure comprises a sensor head 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 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; and a third optical conductor is optically coupled to the photodetector 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.
16. The device of claim 1 wherein the second structure comprises a printed circuit board (PCB), the photodetector is located on a surface of the PCB.
19. A device comprising: a housing comprising a first structure and a second structure, wherein the housing comprising the first and second structures is reusable with a plurality of laparoscopic elements that are disposable, the first structure comprises a first opening at an end of the first portion, a processor, a memory coupled to the processor, and a light engine coupled to the processor, 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, a first optical interface at a second end of the second portion, a first optical conductor coupled from the light engine through the first and second openings to the first optical interface, a printed circuit board (PCB); and a photodetector coupled to a surface of the PCB and coupled to the processor through the PCB; a laparoscopic element, removably couplable to the second structure of the housing, comprising a third structure, a fourth structure, and a second optical conductor, 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, an interior surface of the third structure couples over and mates with an outside surface of the second structure through the third opening, forming a connection coupling, when the laparoscopic element is removably coupled to the second structure of the housing, the fourth structure comprises a sensor head located at a second end of the fourth structure that is oppositely located from a first end of the fourth structure, and3 the second optical conductor is optically coupled to the first optical conductor 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; and a third optical conductor is optically coupled to the photodetector 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.
21. The device of claim 19 wherein the PCB is located in an interior space of the second structure.
3. The device of claim 1 wherein 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.
4. The device of claim1 wherein 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.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Although there are additional limitations that are recited in the co-pending claim(s) and not in the instant claim(s), the more specific co-pending claim(s) still anticipate the instant claim(s). Following the rationale in In re Goodman, where applicant has once been granted a patent containing a claim for the specific or narrower invention, applicant may not then obtain a second patent with a claim for the generic or broader invention without first submitting an appropriate terminal disclaimer.
Conclusion
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/ALICE LING ZOU/Examiner, Art Unit 3791 /TSE W CHEN/Supervisory Patent Examiner, Art Unit 3791