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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of U.S. Patent No. 11806010B2, referred herein as Pat. ‘010. Although the claims at issue are not identical, they are not patentably distinct from each other because:
Claims 1 and 9-10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2 of Pat. ‘010. Pat. ‘010 discloses a system for delivering a fastener, comprising: a staple delivery device including: a tubular shaft having a proximal end, a distal end and a lumen extending therethrough [claim 1 Col. 21 lines 54-57]; and a handle assembly coupled to the proximal end of the tubular shaft, the handle assembly including a housing and a handle rotatably coupled to the housing at a rotation point [claim 1 Col. 21 lines 58-61]; an insert removably insertable into the lumen of the tubular shaft from a proximal end of the housing of the handle assembly, the insert including a proximal head positioned proximal of the housing of the handle assembly, the insert including a first arm and a second arm at a distal end of the insert [claim 1 Col. 21 lines 62-65 and claim 2]; and a staple having a first trunk, a second trunk and a bridge extending therebetween, the first arm insertable into a cavity of the first trunk and the second arm insertable into a cavity of the second trunk [claim 1 Col. 21 lines 66-67, Col. 22 lines 1-3]; wherein actuation of the handle towards the housing moves the insert present within the lumen of the tubular shaft in a proximal direction relative to the tubular shaft [claim 1 Col. 22 lines 4-7].
Claims 2-8 and 11-16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 3-9 of Pat. ‘010 for reciting substantially similar limitations.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The closest art of record appears to be Blake, III et al (US Patent No. 4372316) and Green (US Patent No. 4557263).
Blake discloses a delivery device (1) having a tubular shaft with a proximal and distal ends and a lumen therethrough, a handle assembly comprising a housing (2,4) and a handle (10,12) that is rotationally coupled to the housing; an insert (56) that is removably insertable into the lumen from the proximal end of the housing; and wherein actuation of handle (10,12) towards the housing moves the insert in a proximal direction relative to the sheath (Fig. 1-11c). However, Blake is silent as to the housing having a arms at the end of the insert that are inserted into the staple, wherein the handle is rotated closer to the hosing through a second displacement range than the first range, or wherein the handle contacts a surface of the actuator within the housing. Therefore, the claims of the instant application have not been rejected using prior art because none of the references or reasonable combinations thereof could be found which disclose or suggest all of the features of the claims, and there is no reasonable motivation to modify the art of record to have these features.
Green discloses a delivery device (10) having a tubular shaft (12) with a proximal and distal ends and a lumen (16) therethrough, a handle assembly (20,22) comprising a housing (20)) and a handle (22) that is rotationally coupled to the housing; an insert (40) that is removably insertable into the lumen (16) of the housing; and wherein actuation of handle (22) towards the housing moves the insert in a proximal direction relative to the tube (12) (Fig. 1-11). While the Green reference does disclose the proximal movement of the trigger and the proximal movement of a connector based on the movement of the trigger the reference does not disclose wherein the insert is removably insertable into a lumen of the sheath from the proximal end of the housing, or wherein the handle is rotated closer to the hosing through a second displacement range than the first range.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARCELA I SHIRSAT whose telephone number is (571)270-5269. The examiner can normally be reached M-F 9:00am-5:30pm EST.
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/MARCELA I. SHIRSAT/ Primary Examiner, Art Unit 3775
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