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 .
Information Disclosure Statement
The information disclosure statements (IDS) submitted and filed after the mailing date of the Non-Final Rejection on 10/28/2025. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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 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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 1-6 of U.S. Patent No. US 9888919 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims are directed to surgical stapler having an electric motor; a firing rod coupled to the electric motor and configured to be translated by the electric motor through a firing stoke to deploy the surgical staples from the jaws; and a microcontroller configured to: detect a first current draw from the electric motor, during the firing stroke, that exceeds a first predefined threshold value, pause movement of the firing rod in response to detection of the first current draw from the electric motor that exceeds the first predefined predetermined threshold value, and following the pause of movement of the firing rod, continue to drive the firing rod through the firing stroke.
Allowable Subject Matter
Claims 1-20 would be allowable if a proper Terminal Disclaimer is filed for U.S. Patent No. US 9888919 B2
As allowable subject matter has been indicated, applicant's reply must either comply with all formal requirements or specifically traverse each requirement not complied with. See 37 CFR 1.111(b) and MPEP § 707.07(a).
Reasons for Allowable Subject Matter
The following is an examiner’s statement of reasons for allowance: the prior art of record fails to teach or render obvious a surgical stapling device comprising all the structural and functional limitations and further comprising, amongst other limitations/features an electric motor; a firing rod coupled to the electric motor and configured to be translated by the electric motor through a firing stoke to deploy the surgical staples from the jaws; and a microcontroller configured to: detect a first current draw from the electric motor, during the firing stroke, that exceeds a first predefined threshold value, pause movement of the firing rod in response to detection of the first current draw from the electric motor that exceeds the first predefined predetermined threshold value, and following the pause of movement of the firing rod, continue to drive the firing rod through the firing stroke. Though Viola US 20120223121 A1teaches a microcontroller (28/206) in signal communication with said electric motor and said sensor [0023,0111-0125], wherein said microcontroller is configured to adjust the velocity of said firing element when said sensor detects a change in the current that is greater than a threshold amount [0023, 0049, 0071, 0107, 0111, 0120, 0129 and see claims 6-7, figs. 11-17) but does not disclose or teach - during the firing stroke, that exceeds a first predefined threshold value, pause movement of the firing rod in response to detection of the first current draw from the electric motor that exceeds the first predefined predetermined threshold value, and following the pause of movement of the firing rod, continue to drive the firing rod through the firing stroke. Having the efficiency and control of the firing stroke to pause then proceed along with controlling speed provides an effective clamping (allowing tissue to settle before further stapling) and compressive healing closure of a surgical area.
While various features of the claimed subject matter are found individually in the prior art, a skilled artisan would have to include knowledge gleaned only from the applicant's disclosure to combine or modify the teachings of the prior art to produce the claimed subject matter, and thus obviousness would not be proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). There is no teaching, suggestion, or motivation found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art to combine or modify the teachings of the prior art to produce the claimed invention, and thus obviousness would not be proper. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007).
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Response to Arguments
Applicant’s arguments, see remarks, filed 01/28/2026, with respect to the rejection(s) of claim(s) 1-20 under nonstatutory double patenting rejection of Claims 1-10 of U.S. Patent No. US 9750499 B2 & Claims 1-16 of U.S. Patent No. US 9566061 B2, and have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration the rejection(s) of claim(s) 1-20 under nonstatutory double patenting rejection Claims 1-6 of U.S. Patent No. US 9888919 B2 is maintained.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., current value result not being from force) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Since a current value does increase/exceed to reach a threshold, the electrical current increase does result from a increased force on the firing member; then examiner contends “threshold force” (US 9888919 B2) is a form of a “threshold value” (current claim). Moreover, US 9888919 B2 claims “a multi-function electric motor” and a “amplifier is coupled to the motor… configured to amplify the tactile feedback generated by the multi-function electric motor”. Since tactile feedback is forces applied via current from the motor, then the amplifier is controlling forces with the amount of current amplified to the motor up to a threshold value then pause; which is not patentably distinct. Since a motor being on then off/pause is the result of current being supplied and the force threshold on the firing member is controlled/driven by the motor; then the threshold force is a result of the current threshold value. Examiner suggest reciting/defining how the current value threshold is achieved (stop clamping/driving to allow for tissue relaxation, jam, thick tissue, controlled stop/timer and etc.) and/or if the apparatus has automated features to differentiate manual features.
Conclusion
Additional prior art considered pertinent:
US 20040045982 A1 – dispensing gun 10 with motor (84) that drives piston/rack drives (14/15) for driving/ejecting material, “current limit controls the amount of force that can be applied by the pistons” [0025]… voltage amplifier would be deactivated upon engagement with the cartridge, sensed by an increase in current draw [0028]... “motor current is correlated to a piston force” [0029]
US 20130038263 A1– “motor 28 correlating the amount of current drawn to the lifting force of the motor [0061]
US 20230051271 A1 – “motor current may serve as a substitute for firing motor force, such that firing motor current may be a trigger for alternating between the states” [0069] See form 892.
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT LONG whose telephone number is (571)270-3864. The examiner can normally be reached M-F, 9am-5pm, 8-9pm (EST).
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, SHELLEY SELF can be reached at (571) 272-4524. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ROBERT F LONG/Primary Examiner, Art Unit 3731