The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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 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.
DETAILED ACTION
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 21-40 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of U.S. Patent No. 11,369,393. Although the claims at issue are not identical, they are not patentably distinct from each other because the overlapping subject matter of U.S. Patent No. 11,369,393 regarding an actuator device and systems reads on the subject matter of the instant application regarding actuator device and systems.
Claims 21-40 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 12,318,101. Although the claims at issue are not identical, they are not patentably distinct from each other because the overlapping subject matter of U.S. Patent No. 12,318,101 regarding an actuator device and systems reads on the subject matter of the instant application regarding actuator device and systems.
Information Disclosure Form
The information disclosure statement filed January 15, 2025 fails to comply with 37 CFR 1.98(a)(2), which requires a legible copy of each cited foreign patent document; each non-patent literature publication or that portion which caused it to be listed; and all other information or that portion which caused it to be listed. It has been placed in the application file, but the information referred to therein has not been considered.
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.
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 of this title, 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 21-40 are rejected under 35 U.S.C. 103 as being unpatentable over Callister et al. (U.S. Publication 2012/0253120, hereinafter “Callister”) and in further view of Suzuki (U.S. Publication 2005/0182292).
As to Claim 21, Callister discloses an actuator device in Fig. 18 comprising:
a housing (324, 354) in [0071]-[0072] having a first (354) in [0072] portion and a second (324) in [0071] portion;
a platform (366) in [0072] coupled to, and movable relative to, the housing; and
a link assembly (362) in [0071] coupled to the housing and the platform, the link assembly including
a lever “finger lever” in [0071] pivotable relative to the housing about a first pivot point; and
an arm (364) in [0071] extending from a first end to a second end, wherein the first end of the arm is pivotally connected to an end of the lever, and the second end of the arm is pivotable relative to the platform about a second pivot point;
wherein the link assembly is configured to move the platform between a first position when (362) moves closer to (364) and a second position when (362) moves away from (364) of the platform by application of force on the lever.
As to Claim 22, Callister discloses the actuator device of claim 21, wherein the second portion of the housing includes at least one retaining arm (326) in [0071] at a proximal end of the housing and at least one retaining arm at a distal end of the housing.
As to Claim 23, Callister discloses the actuator device of claim 21, wherein the lever is operable to move the platform between a first position and second position, however does not specifically disclose a spring. Suzuki is applied as additional teaching to evidence the level of ordinary skill in the art wherein an actuator device in Figs. 1-2 comprising: a housing (17, 18, 20) in [0045] having a first portion (17, 18) in [0045] engageable with a scope (324) and a second portion (20) in [0045] engageable with a handle of a retrieval device; a platform (21) in [0048] that is movable relative to the housing and engageable with a slider (16) in [0044] of the retrieval device; and a link assembly (22) in [0048] that is coupled the housing and the platform, and operable to move the platform and slider relative to the housing and handle. Furthermore Suzuki teaches that a link assembly comprises a lever (21b) in [0048] and Fig. 2 operable to move the platform between a first position and a second position; and a spring (25) in [0048] and Fig. 2 positioned to bias the platform into the first position. It would have been obvious to one of ordinary skill in the art as evidenced by the cited art to provide a spring to bias a platform in the first direction or the second direction in order to fulfill the same function with predictable results.
As to Claim 24, Callister discloses the actuator device of claim 23, wherein a first end of the spring is coupled to the housing and a second end of the spring is coupled to the second pivot point as shown in Fig. 2.
As to Claim 25, Callister discloses the actuator device of claim 21, wherein the first portion of the housing includes a retaining arm configured to be releasably coupled to a handle (363) in [0071] of a scope “instruments” and “endoscopes” in [0071].
As to Claim 26, Callister discloses the actuator device of claim 25, wherein an end of the retaining arm is configured to releasably engage with a divot or recess the slotted cutout of (324) as shown in Fig. 18 of the handle of the scope.
As to Claim 27, Callister discloses a system comprising the actuator device of claim 26 and the handle of the scope, wherein an actuator of the handle includes the divot or recess the slotted cutout of (324) as shown in Fig. 18.
As to Claim 28, Callister discloses the actuator device of claim 21, wherein the link assembly further includes a locking mechanism (371, 372) in [0073] configured to fix a position of the platform relative to the housing.
As to Claim 29, Callister discloses the actuator device of claim 21, wherein the link assembly further includes a ratcheting mechanism (371, 372) in [0073] configured to incrementally move the platform relative to the housing.
As to Claim 30, Callister discloses an actuator device comprising:
a housing (324, 354) in [0071]-[0072] having a first portion the ball attachment means of stabilizing wire (354) in [0072] and a second portion the larger diameter portion of (324) in [0071], wherein the first portion includes a cavity and a retaining arm, wherein the retaining arm extends away from the second portion, and wherein the second portion includes at least one retaining arm extending away from the first portion;
a platform (366) in [0072] coupled to “loaded into” in [0071] and “attach” in [0072], and movable relative to, the housing; and
a link assembly (362) in [0071] coupled the housing and the platform, wherein the link assembly is configured to move the platform between a first position and a second position.
As to Claim 31, Callister discloses the actuator device of claim 30, wherein the link assembly includes a lever “finger lever” in [0071] and an arm pivotally connected to an end of the lever.
As to Claim 32, Callister discloses the actuator device of claim 30, wherein the lever is operable to move the platform between a first position and second position, however does not specifically disclose a spring. Suzuki is applied as additional teaching to evidence the level of ordinary skill in the art wherein an actuator device in Figs. 1-2 comprising: a housing (17, 18, 20) in [0045] having a first portion (17, 18) in [0045] engageable with a scope (324) and a second portion (20) in [0045] engageable with a handle of a retrieval device; a platform (21) in [0048] that is movable relative to the housing and engageable with a slider (16) in [0044] of the retrieval device; and a link assembly (22) in [0048] that is coupled the housing and the platform, and operable to move the platform and slider relative to the housing and handle. Furthermore Suzuki teaches that a link assembly comprises a lever (21b) in [0048] and Fig. 2 operable to move the platform between a first position and a second position; and a spring (25) in [0048] and Fig. 2 positioned to bias the platform into the first position. It would have been obvious to one of ordinary skill in the art as evidenced by the cited art to provide a spring to bias a platform in the first direction or the second direction in order to fulfill the same function with predictable results.
As to Claim 33, Callister discloses the actuator device of claim 30, wherein the housing includes a ledge, and the platform is slidable along the ledge as shown in Fig. 18.
As to Claim 34, Callister discloses a system comprising the actuator device of claim 30 and a scope “instruments” and “endoscopes” in [0071], wherein the retaining arm of the first portion is configured to removably engage a divot the slotted cutout of (324) as shown in Fig. 18 of a handle (363) in [0071] of the scope.
As to Claim 35, Callister discloses the system of claim 34, where the at least one retaining arm of the second portion is configured to releasably couple with a retrieval device (360) in [0071].
As to Claim 36, Callister discloses an actuator device comprising:
a housing (324, 354) in [0071]-[0072] having a first portion the ball attachment means of stabilizing wire (354) in [0072] and a second portion the larger diameter portion of (324) in [0071], wherein the housing is configured to removably couple “loaded into” in [0071] and “attach” in [0072] to a retrieval device (360) in [0071]; and
a link assembly (362) in [0071] including:
a lever “finger lever” in [0071] pivotable about a first pivot point of the housing, wherein the lever includes a first end and a second end, and
an arm, wherein an end of the arm is pivotally connected to an end of the lever;
wherein the link assembly is configured to move the actuator device between a first position and a second position.
As to Claim 37, Callister discloses the actuator device of claim 36, wherein the first portion includes a retaining arm and a cavity configured to receive a portion of a handle (363) in [0071] of a scope “instruments” and “endoscopes” in [0071].
As to Claim 38, Callister discloses a system comprising the actuator device of claim 36 and the retrieval device, wherein the retrieval device includes a sheath (326) in [0071], an end effector, and wherein when the housing is coupled to the retrieval device, the end effector is proximal to a distal end of the sheath in the first position of the actuator device, and the end effector is distal to the distal end of the sheath in the second position of the actuator device.
As to Claim 39, Callister discloses the actuator device of claim 36, wherein the second portion of the housing includes at least one retaining arm (326) in [0071] at a proximal end of the housing and at least one retaining arm at a distal end of the housing
As to Claim 40, Callister discloses the actuator device of claim 36, wherein the lever is operable to move the platform between a first position and second position, however does not specifically disclose a spring. Suzuki is applied as additional teaching to evidence the level of ordinary skill in the art wherein an actuator device in Figs. 1-2 comprising: a housing (17, 18, 20) in [0045] having a first portion (17, 18) in [0045] engageable with a scope (324) and a second portion (20) in [0045] engageable with a handle of a retrieval device; a platform (21) in [0048] that is movable relative to the housing and engageable with a slider (16) in [0044] of the retrieval device; and a link assembly (22) in [0048] that is coupled the housing and the platform, and operable to move the platform and slider relative to the housing and handle. Furthermore Suzuki teaches that a link assembly comprises a lever (21b) in [0048] and Fig. 2 operable to move the platform between a first position and a second position; and a spring (25) in [0048] and Fig. 2 positioned to bias the platform into the first position. It would have been obvious to one of ordinary skill in the art as evidenced by the cited art to provide a spring to bias a platform in the first direction or the second direction in order to fulfill the same function with predictable results.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WILLIAM B CHOU whose telephone number is (571) 270-3367. The examiner can normally be reached on M-F 9 am - 6 pm.
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/WILLIAM CHOU/
Examiner, Art Unit 3795
/MICHAEL J CAREY/Supervisory Patent Examiner, Art Unit 3795
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