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 .
Claim Objections
Claims 21, 36 and 40 are objected to because of the following informalities:
Claim 21, line 7: --and-- should be added after “;”.
Claim 36, line 11: --and-- should be added after “;”.
Claim 40, line 2: “to” (between “at” and “a”) should be removed.
Appropriate correction is required.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 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 –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 21, 24, 25 and 29 is/are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Bozung et al., U.S. PG-Pub 2013/0060278.
Regarding claim 21, Bozung et al. discloses a surgical instrument assembly comprising: a cutting accessory (204) having an accessory shaft (202); a nose tube (1218) defining a bore to receive the accessory shaft of the cutting accessory; a coupling assembly for rotatably coupling the cutting accessory to the nose tube, the coupling assembly comprising: a connector defining a bore therethrough, the bore configured to receive the accessory shaft of the cutting accessory; and a bearing (1222) disposed within the bore of the connector, the bearing positioned between the accessory shaft of the cutting accessory and the connector and configured to allow for rotation of the accessory shaft within the nose tube (examiner annotated Fig. 76 below and Fig. 79).
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Regarding claim 24, Bozung et al. further comprises a hand-held portion (502) configured to be manipulated by a user (Fig. 30).
Regarding claim 25, Bozung et al. further comprises a plurality of internal bearings (1222) disposed within the nose tube (1218) being configured to engage and rotatably support the accessory shaft (202) of the cutting assembly (examiner annotated Fig. 76 above).
Regarding claim 29, Bozung et al. further comprises a plurality of protrusions (1228) formed on an external surface of the nose tube (1218) (Fig. 80); and a bushing (1265) defining a central aperture extending therethrough and configured to receive the nose tube; wherein the bushing defines a plurality of internal channels (1224) extending radially from the central aperture, each of the plurality of internal channels configured to receive one of the plurality of protrusions (1228) of the nose tube; wherein the plurality of protrusions of the nose tube are keyed to the plurality of internal channels of the bushing to prevent rolling; and wherein the bushing is in a fixed position within the surgical instrument assembly (Fig. 90 and paragraph [0367]).
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, 24, 25, 27, 28 and 36-39 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 4, 5, 8 and 13-15 of U.S. Patent No. 12,239,326 in view of Bozung et al., U.S. PG-Pub 2013/0060278.
Regarding claims 21, 24, 25, 27, 28 and 36-39, claims 1, 2, 4, 5, 8 and 13-15 of U.S. Patent No. 12,239,326 recite the claimed invention except for including the cutting accessory having an accessor shaft.
Bozung et al. discloses a surgical instrument assembly including a cutting accessory (204) having an accessory shaft (202) (Fig. 79) such that the surgical instrument assembly has the component that performs a medical/surgical task on the tissue of a patient (paragraph [0136]).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the surgical instrument assembly of claims 1, 2, 4, 5, 8 and 13-15 of U.S. Patent No. 12,239,326 in view of Bozung et al. to permit having the component that performs a medical/surgical task on the tissue of a patient.
Allowable Subject Matter
Claims 22, 23, 26 and 40 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claims 30-35 are allowed.
Claims 27 and 28 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims and with the filing of a terminal disclaimer to overcome the non-statutory double patenting rejection set forth above.
Claim 36 would be allowable with the filing of a terminal disclaimer to overcome the non-statutory double patenting rejection set forth above.
Claims 37-39 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims and with the filing of a terminal disclaimer to overcome the non-statutory double patenting rejection set forth above.
The following is a statement of reasons for the indication of allowable subject matter: Regarding claims 30 and 36, the prior art of record, alone or in combination, does not disclose a surgical instrument assembly having a cutting accessory, a nose tube, an insert/interconnecting shaft, an accessory drive motor, and a coupling assembly with a connector and bearing as claimed.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Eric Gibson whose telephone number is (571)270-5274. The examiner can normally be reached Monday-Thursday ~6:00 A.M. to 4:00 P.M. (CST).
If attempts to reach the examiner by telephone are unsuccessful, please contact the examiner’s supervisor, Kevin Truong, at (571) 272-4705. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ERIC S GIBSON/ Primary Examiner, Art Unit 3775
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