DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions. 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.
Priority
It should be noted that the disclosure of the prior-filed application, U.S. Application No. 12/472,657, fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for the pending claims. More specifically, this application fails to support/enable the specifically-claimed “control” having either ‘proximal and distal portions’ (for operating the device in different modes of operation) or ‘first and second portions’ (for actuating a switch and providing tactile feedback). Therefore, the claims have been given 4/26/10 as their priority date.
Specification
The disclosure is objected to because the first paragraph does not provide the most current status for a related application. That is, a parent application is referenced as a U.S. application even though it has issued as a patent. The paragraph should be amended to include the appropriate patent number.
Furthermore, 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 Objections
Claim 10 is objected to because of the following informalities: In line 3, -elongated- should be inserted before “body”. 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 1-9, 15, and 18 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 pre-AIA the applicant regards as the invention.
Claim 1 recites the limitation "the user" in line 11. There is insufficient antecedent basis for this limitation in the claim.
Claim 5 is found to be indefinite because Examiner is unsure of the scope of the limitation “the control is movable for controlling a delivery of energy”, since it appears to contradict the prior claim which states that the “control is movable for opening and closing the jaw assembly”. If both of these limitations are true, further clarity is required.
Claim 9 recites the limitation "a user" in line 3. The antecedent basis for this limitation is confusing, since it has already been recited.
Claim 15 is found to be indefinite because Examiner is unsure of the scope of the limitation “the control is movable for opening and closing the jaw assembly”, since it appears to contradict the prior claim. If the control is supposed to have multiple functions, further clarity is required.
Claim 18 recites the limitation "the cable" in line 1. There is insufficient antecedent basis for this limitation in the claim.
It should be noted that all other rejected claims are rejected for their dependence upon a rejected base claim.
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 1-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-27 of U.S. Patent No. 9,402,680. Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims anticipate the claims of the application. Accordingly, the application claims are not patentably distinct from the patent claims. Here, the more specific patent claims encompass the broader application claims. Following the rationale in In re Goodman cited in the preceding paragraph, where applicant has once been granted a patent containing a claim for the specific narrow invention, applicant may not obtain a second patent with a claim for the generic or broader invention without first submitting an appropriate terminal disclaimer.
Claims 1-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 12,201,346. Although the claims at issue are not identical, they are not patentably distinct from each other because the patented claims anticipate the claims of the application. Accordingly, the application claims are not patentably distinct from the patent claims. Here, the more specific patent claims encompass the broader application claims. Following the rationale in In re Goodman cited in the preceding paragraph, where applicant has once been granted a patent containing a claim for the specific narrow invention, applicant may not obtain a second patent with a claim for the generic or broader invention without first submitting an appropriate terminal disclaimer.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of pre-AIA 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 –
(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of application for patent in the United States.
Claims 1, 3-6, and 9 are rejected under pre-AIA 35 U.S.C. 102(b) as being anticipated by Lau, U.S. 2006/0217706 (hereinafter Lau).
Regarding claim 1, Lau discloses (note figs. 1A-C and 11A-12) a surgical instrument for harvesting a vessel, comprising: an elongated body (36) having a distal end and a proximal end; a surgical device at the distal end of the elongated body, wherein the surgical device is configured to operate on a vessel; a handle (38) at the proximal end of the elongated body; and a control (44) moveably coupled to the handle for operating the surgical device, the control configured to be actuated by one or more fingers; wherein the control has a distal portion for operating the surgical device in a first mode of operation (paragraphs 103 and 106), and a proximal portion for ‘operating the surgical device in a second mode of operation’ (i.e., ‘positioning a non-powered device’; paragraph 105), and wherein the distal portion and the proximal portion have different respective configurations (proximal and distal portions have different surface angles; i.e., ‘tactile configurations’) for informing the user of the first and second modes of operation, respectively
Regarding claim 3, Lau discloses (see above) a surgical instrument wherein the distal portion of the control has a first resistance to motion, and the proximal portion of the control has a second resistance to motion that is different from the first resistance to motion (paragraphs 105 and 106).
Regarding claim 4, Lau discloses (see above) a surgical instrument wherein the surgical device comprises a jaw assembly having a first jaw member (40) and a second jaw member (42), and the control is moveable for opening and closing the jaw assembly (note paragraph 69).
Regarding claim 5, Lau discloses (see above) a surgical instrument wherein the jaw assembly further includes an electrode (46), and the control is moveable for controlling a delivery of energy to the electrode (note paragraph 103).
Regarding claim 6, Lau discloses (see above) a surgical instrument wherein the surgical device is configured for sealing and cutting the vessel (see abstract).
Regarding claim 9, Lau discloses (see above) a surgical instrument further comprising an electrical switch (182) within the handle, wherein the control has a first portion (180; paragraph 103) located inside the handle for pressing a lever at the electrical switch, and a second portion (208; paragraph 110) for providing a tactile feedback to the user of the surgical instrument when the lever at the electrical switch has been pressed.
Claim Rejections - 35 USC § 103
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
Claims 10, 11, and 14-16 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Lau.
Regarding claim 10, Lau discloses (note figs. 1A-C and 11A-12) a surgical instrument for harvesting a vessel, comprising: an elongated body (36) having a distal end and a proximal end; a surgical device at the distal end of the body, the surgical device configured to operate on a vessel, and having an electrode (46); a handle (38) coupled to the proximal end of the elongated body; an electrical switch (182) for activating the electrode; and a control (44) moveably mounted on the handle; wherein the control comprises a first portion (180; paragraph 103) for actuating the electrical switch, and a second portion (208; paragraph 110) for providing a tactile feedback to a user of the surgical instrument when the electrical switch has been actuated. However, Lau fails to explicitly disclose a control wherein an entire lower portion (including the first and second portions) has a unity construction. At the time the invention was made, it would have been an obvious matter of design choice to a person of ordinary skill in the art to construct the control accordingly because applicant has not disclosed that this arrangement provides an advantage, is used for a particular purpose, solves a stated problem, or produces an unexpected result. One of ordinary skill in the art, furthermore, would have expected Lau’s apparatus and applicant’s invention, to perform equally well with either the arrangement taught by Lau or the claimed unitary arrangement because both arrangements would perform the same function of actuating the apparatus equally well. Therefore, it would have been prima facie obvious to modify Lau to obtain the invention as specified in claim 10 because such a modification would have been considered a mere design consideration which fails to patentably distinguish over the prior art of Lau. It should also be noted that it would have been obvious to one having ordinary skill in the art at the time the invention was made to have constructed an entire lower portion (including the first and second portions) of the control to be unitary, since it has been held that forming in one piece an article which has formerly been formed in two pieces and put together involves only routine skill in the art. Howard v. Detroit Stove Works, 150 U.S. 164 (1893).
Regarding claim 11, Lau discloses (see above) a surgical instrument wherein the first portion of the control is configured for pressing a lever at the electrical switch in response to a movement of the control (note paragraph 103).
Regarding claim 14, Lau discloses (see above) a surgical instrument wherein the distal portion of the control has a first resistance to motion, and the proximal portion of the control has a second resistance to motion that is different from the first resistance to motion (paragraphs 105 and 106).
Regarding claim 15, Lau discloses (see above) a surgical instrument wherein the surgical device further comprises a jaw assembly having a first jaw member (40) and a second jaw member (42), and the control is moveable for opening and closing the jaw assembly (note paragraph 69).
Regarding claim 16, Lau discloses (see above) a surgical instrument wherein the surgical device is configured for sealing and cutting the vessel (see abstract).
Claim 2 is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Lau in view of Schulze, U.S. 2003/0073994 (hereinafter Schulze).
Regarding claim 2, Lau discloses a surgical instrument comprising a control with an upper proximal and an upper distal portion. However, Lau fails to explicitly disclose a control wherein the proximal portion has a convex configuration and the distal portion has a longer concave configuration. Schulze teaches (note figs. 1, 6, and 8) a similar surgical instrument comprising an actuator/control (102) wherein the proximal portion has a convex configuration and the distal portion has a longer concave configuration. It is well known in the art that these control designs are widely considered to be interchangeable. Furthermore, it should be noted that applicant has not disclosed that this arrangement provides an advantage, is used for a particular purpose, solves a stated problem, or produces an unexpected result. Therefore, it would have been obvious to one having ordinary skill in the art at the time the invention was made, to have modified the apparatus of Lau to comprise a control wherein the proximal portion has a convex configuration and the distal portion has a longer concave configuration. This is because this modification would have merely comprised a simple substitution of interchangeable control designs in order to produce a similar (and therefore predictable) result (see MPEP 2143). It should also be noted that it would have been an obvious matter of design choice to make the different portions of the control whatever form or shape was desired or expedient. This is because a change in form or shape is generally recognized as being within the level of ordinary skill in the art, absent any showing of unexpected results. In re Dailey et al., 149 USPQ 47.
Claims 12 and 13 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Lau as applied to claims 10, 11, and 14-16 above, and further in view of Schulze.
Regarding claims 12 and 13, Lau discloses a surgical instrument comprising a control with an upper proximal and an upper distal portion. However, Lau fails to explicitly disclose a control wherein the proximal portion has a convex configuration and the distal portion has a longer concave configuration. Schulze teaches (note figs. 1, 6, and 8) a similar surgical instrument comprising an actuator/control (102) wherein the proximal portion has a convex configuration and the distal portion has a longer concave configuration. It is well known in the art that these control designs are widely considered to be interchangeable. Furthermore, it should be noted that applicant has not disclosed that this arrangement provides an advantage, is used for a particular purpose, solves a stated problem, or produces an unexpected result. Therefore, it would have been obvious to one having ordinary skill in the art at the time the invention was made, to have further modified the apparatus of Lau to comprise a control wherein the proximal portion has a convex configuration and the distal portion has a longer concave configuration. This is because this modification would have merely comprised a simple substitution of interchangeable control designs in order to produce a similar (and therefore predictable) result (see MPEP 2143). It should also be noted that it would have been an obvious matter of design choice to make the different portions of the control whatever form or shape was desired or expedient. This is because a change in form or shape is generally recognized as being within the level of ordinary skill in the art, absent any showing of unexpected results. In re Dailey et al., 149 USPQ 47.
Claims 7 and 8 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Lau in view of Lin, U.S. 2011/0147853 (hereinafter Lin).
Regarding claims 7 and 8, Lau discloses (see above) a surgical instrument further comprising a cable (note figs. 1B-C) coupled to (and extending into) the handle, wherein an electrical switch (182) that necessarily comprises a switch terminal is located within the handle; and wherein the surgical device comprises an electrode (46). However, Lau fails to explicitly disclose a cable having a first wire and a second wire that are electrically coupled to a fuse that connects to the electrode (via the switch terminal), the second wire being a backup wire for supplying energy to the fuse/switch terminal. Lin teaches (note paragraph 4) a relevant system comprising a first wire and a second wire that are electrically coupled to a fuse that necessarily connects to a device, the second wire being a backup (i.e., redundant) wire for supplying energy to the fuse/device. This design is utilized because it enables a system to keep operating despite the presence of a defective wire, thereby resulting in increased safety and efficiency. Therefore it would have been obvious to a person having ordinary skill in the art at the time the invention was made, to have modified the instrument of Lau to comprise a cable having a first wire and a second wire that are electrically coupled to a fuse that connects to the electrode (via the switch terminal), the second wire being a backup wire for supplying energy to the fuse/switch terminal, in order to increase safety and efficiency.
Claims 17 and 18 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Lau as applied to claims 10, 11, and 14-16 above, and further in view of Lin.
Regarding claims 17 and 18, Lau discloses (see above) a surgical instrument further comprising a cable (note figs. 1B-C) coupled to (and extending into) the handle, wherein the electrical switch necessarily comprises a switch terminal located within the handle. However, Lau fails to explicitly disclose a cable having a first wire and a second wire that are electrically coupled to a fuse that connects to the electrode (via the switch terminal), the second wire being a backup wire for supplying energy to the electrode/switch terminal. Lin teaches (note paragraph 4) a relevant system comprising a first wire and a second wire that are electrically coupled to a fuse that necessarily connects to a device, the second wire being a backup (i.e., redundant) wire for supplying energy to the fuse/device. This design is utilized because it enables a system to keep operating despite the presence of a defective wire, thereby resulting in increased safety and efficiency. Therefore it would have been obvious to a person having ordinary skill in the art at the time the invention was made, to have further modified the instrument of Lau to comprise a cable having a first wire and a second wire that are electrically coupled to a fuse that connects to the electrode (via the switch terminal), the second wire being a backup wire for supplying energy to the electrode/switch terminal, in order to increase safety and efficiency.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
U.S. 2003/0073994 (Schulze).
U.S. 6,443,944 (Doshi).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to THOMAS ANTHONY GIULIANI whose telephone number is (571)270-3202. The examiner can normally be reached Mon - Fri 9:00-5:00.
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/THOMAS A GIULIANI/Primary Examiner, Art Unit 3794
