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 .
This application has been examined. Claims 1-20 are pending.
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.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12239398 (refers as ‘398). Although the claims at issue are not identical, they are not patentably distinct from each other because subject matters of the invention defined in claim 1 in 19/036570 would have been obvious by the invention defined in claim 1 of (‘398). Claim 1 of (‘398) have all the limitations of claim 1 of current application. Claim 1 of current application is obvious in light of claim 1 (‘398) because claim 1’s (‘398) “wherein the surgical instrument comprises a sensor for providing sensor data, the sensor data being indicative of a distance between a tip of the surgical instrument and an anatomical structure; wherein the processor is further configured for: during use, determining the virtual bound based on the sensor data; and retract the surgical instrument in longitudinal direction towards the virtual bound when the tip of the surgical instrument arrives past the virtual bound” clause is just another way to phrase claim 1’s (current application) “wherein the processor is further configured for: accessing data defining the virtual bound, wherein the virtual bound is determined based on sensor data, wherein the sensor data is indicative of a distance between a tip of the surgical instrument and an anatomical structure; and retracting the surgical instrument when the tip of the surgical instrument arrives past the virtual bound”. The claims limitation is the same, they just phrase differently.
Claims 2-12, are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 2-12 of U.S. Patent No. 12239398 (refers as ‘398). Although the claims at issue are not identical, they are not patentably distinct from each other because subject matters of the invention defined in claims 2-12 in 19/036570 would have been obvious by the invention defined in claims 2-12 of (‘398). Claims 2-12 of (‘398) have all the limitations of claims 2-12 of current application.
Claims 13-14, are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 14-15 of U.S. Patent No. 12239398 (refers as ‘398). Although the claims at issue are not identical, they are not patentably distinct from each other because subject matters of the invention defined in claims 13-14 in 19/036570 would have been obvious by the invention defined in claims 14-15 of (‘398). Claims 14-15 of (‘398) have all the limitations of claims 13-14 of current application.
Claim 17 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 16 of U.S. Patent No. 12239398 (refers as ‘398). Although the claims at issue are not identical, they are not patentably distinct from each other because subject matters of the invention defined in claim 17 in 19/036570 would have been obvious by the invention defined in claim 16 of (‘398). Claim 16 of (‘398) have all the limitations of claim 17 of current application.
Claims 19-20, are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 17-18 of U.S. Patent No. 12239398 (refers as ‘398). Although the claims at issue are not identical, they are not patentably distinct from each other because subject matters of the invention defined in claims 19-20 in 19/036570 would have been obvious by the invention defined in claims 17-18 of (‘398). Claims 17-18 of (‘398) have all the limitations of claims 19-20 of current application.
Claims 15-16, and 18, are depended on claim 1 rejected as above.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant’s disclosure:
. Giordano et al. (11291441)
. Taylor et al. (US 2014/0052150 A1)
. Sandhu et al. (US 20120158011 A10
. Quaid et al. (8010180)
. Ortmaier et al. (US 2011/0118872 A1)
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DALENA TRAN whose telephone number is (571)272-6968. The examiner can normally be reached M-F 7AM-5PM.
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, ADAM MOTT can be reached at 571-270-5376. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/DALENA TRAN/ Primary Examiner, Art Unit 3657
Prosecution Insights