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 .
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of U.S. Patent No. 12,239,296 (hereinafter ‘296). Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-8 of ‘296 teaches all of the features of the present application with only minor differences in claim language.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of U.S. Patent No. 11,877,729 (hereinafter ‘729). Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-8 of ‘729 teaches all of the features of the present application with only minor differences in claim language.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of U.S. Patent No. 11,058,291 (hereinafter ‘291). Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-9 of ‘291 teaches all of the features of the present application with only minor differences in claim language.
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 3, 4, 12 and 14 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claims 3 and 4 recite the limitation “wherein at least a portion of the coupling element passage intersects the central aperture of the retaining member” in Lines 1-2, wherein it’s unclear how the coupling element passage intersects a central aperture of the retaining element since no portion of the coupling element passage extends to or within the central aperture, but rather the coupling element passage merely runs parallel to the central aperture. However, the examiner acknowledges that the coupling element passage is in fluid communication with the central aperture as shown in Fig. 9 of Applicant’s originally file drawings. Appropriate correction is required.
Claims 12 and 14 recite the limitation “wherein at least a portion of the coupling element passage intersects the central aperture of the tubular member” in Lines 1-2, wherein it’s unclear how the coupling element passage intersects a central aperture of the tubular member since no portion of the coupling element passage extends to or within the central aperture, but rather the coupling element passage merely runs parallel to the central aperture. However, the examiner acknowledges that the coupling element passage is in fluid communication with the central aperture as shown in Fig. 9 of Applicant’s originally file drawings. Appropriate correction is required.
Claim Rejections - 35 USC § 102
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.
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.
Claims 1, 7, 11 and 17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kasahara et al. (US Patent Application Publication No. 2003/0130654, hereinafter Kasahara).
In regard to claim 1, Kasahara discloses a laparoscope cleaning apparatus (2, Fig. 6), comprising:
a retaining member (10) adapted for having a laparoscope (4) mounted thereon;
a handle (11) attached to a proximate end portion of the retaining member (Fig. 6);
a cleaning member (26) adjacent to a distal end portion of the retaining member (Fig. 6);
movement control structure (28) having a movement control portion and a mounting portion (via portion extending within the elongate hole (27a) of the handle) coupled to the movement control portion (portion a user grasps to actuate the wiper (26)), wherein the mounting portion of the movement control structure is moveably engaged with the handle (Fig. 6, Par. 99); and
a coupling element (25) having the cleaning member attached thereto at a distal end portion thereof and having the mounting portion of the movement control structure attached thereto at a proximate end portion thereof thereby enabling movement of the mounting portion of the movement control structure relative to the handle to provide corresponding movement of the cleaning member relative to the distal end portion of the retaining member (Fig. 6, Par. 99), wherein:
the retaining member comprises a coupling element passage (23) extending along at least a portion of a length of a sidewall of the retaining member (Fig. 6);
a longitudinal axis of the coupling element passage extends approximately parallel to a longitudinal axis of a central aperture of the retaining member (Fig. 6);
at least a portion of the coupling element between said distal and proximate end portions thereof is within the coupling element passage (Fig. 6);
the retaining member comprises a slot (proximal opening of the coupling element passage) extending through an exterior wall (proximal end face of the retaining member) thereof at the proximate end portion thereof (Fig. 6);
the slot is a passage extending between the coupling element passage and an interior portion of the handle (Fig. 6, the slot connects the handle to the coupling element passage); and
a portion of the coupling element between the distal and proximate end portions thereof extends through the slot (Fig. 6).
In regard to claim 11, Kasahara discloses laparoscope cleaning apparatus (2, Fig. 6), comprising:
a tubular member (10) including a central aperture (13) adapted for having an elongated body of a laparoscope (4, Fig. 6) engaged therewith, wherein the tubular member comprises a coupling element passage (23) extending along at least a portion of a length of a sidewall of the tubular member and wherein a longitudinal axis of the coupling element passage extends approximately parallel to a longitudinal axis of the central aperture of the tubular member (Fig. 6);
a coupling element (25) having a distal end portion and a proximate end portion, wherein at least a portion of the coupling element between said distal and proximate end portions thereof is within the coupling element passage (Fig. 6);
a cleaning member (26) located adjacent to a distal end portion of the tubular member, wherein the cleaning member is attached the distal end portion of the coupling element (Fig. 6, Par. 99);
a handle (11) attached to a proximate end portion of the tubular member (Fig. 6); and
a movement control structure (28) having a movement control portion and a mounting portion (via portion extending within the elongate hole (27a) of the handle) coupled to the movement control portion (portion a user grasps to actuate the wiper (26)), wherein the mounting portion of the movement control structure is moveably engaged with the handle to enable movement of the movement control structure relative to the handle (Fig. 6, Par. 85), wherein the mounting portion of the movement control structure is attached to the proximate end portion of the coupling element whereby movement of the movement control portion of the movement control structure causes an associated movement of the mounting portion of the movement control structure (Fig. 6), wherein the movement of the mounting portion of the movement control structure causes an associated movement of the cleaning member relative to the distal end portion of the tubular member (Fig. 6, Par. 85), wherein the coupling element extends contiguously from the cleaning member to the mounting portion of the movement control structure (Fig. 6), wherein:
the tubular member comprises a slot (proximal opening of the coupling element passage) extending through an exterior wall (proximal end face of the retaining member) thereof at the proximate end portion thereof (Fig. 6);
the slot is a passage extending between the coupling element passage and an interior portion of the handle (Fig. 6, the slot connects the handle to the coupling element passage); and
a portion of the coupling element between the distal and proximate end portions thereof extends through the slot (Fig. 6).
In regard to claims 7 and 17, Kasahara teaches wherein the proximate end portion of the coupling element is fixedly attached to the mounting portion of the movement control structure (Fig. 6).
Claims 1-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Akui et al. (US Patent Application Publication No. 2006/0199998, hereinafter Akui).
In regard to claim 1, Akui discloses a laparoscope cleaning apparatus (4, Fig. 1), comprising:
a retaining member (4A) adapted for having a laparoscope (2) mounted thereon (Fig. 1);
a handle (4B) attached to a proximate end portion of the retaining member (Fig. 1);
a cleaning member (9) adjacent to a distal end portion of the retaining member (Fig. 1);
movement control structure (12,13) having a movement control portion (13) and a mounting portion (12) coupled to the movement control portion (Fig. 5), wherein the mounting portion of the movement control structure is moveably engaged with the handle (via rotating knob (13), Fig. 5); and
a coupling element (10) having the cleaning member attached thereto at a distal end portion thereof and having the mounting portion of the movement control structure attached thereto at a proximate end portion thereof thereby enabling movement of the mounting portion of the movement control structure relative to the handle to provide corresponding movement of the cleaning member relative to the distal end portion of the retaining member (Fig. 5, via axial and rotational movement of the wiper shaft (10) and wiper (9)), wherein:
the retaining member comprises a coupling element passage 4b) extending along at least a portion of a length of a sidewall of the retaining member (Fig. 5);
a longitudinal axis of the coupling element passage extends approximately parallel to a longitudinal axis of a central aperture of the retaining member (Fig. 5);
at least a portion of the coupling element between said distal and proximate end portions thereof is within the coupling element passage (Fig. 5);
the retaining member comprises a slot (see annotated Fig. 5 below) extending through an exterior wall thereof at the proximate end portion thereof (see annotated Fig. 5 below);
the slot is a passage extending between the coupling element passage and an interior portion of the handle (see annotated Fig. 5 below); and
a portion of the coupling element between the distal and proximate end portions thereof extends through the slot (see annotated Fig. 5 below).
In regard to claim 11, Akui discloses laparoscope cleaning apparatus (2, Fig. 1), comprising:
a tubular member (4A) including a central aperture (central lumen of the tubular member) adapted for having an elongated body of a laparoscope (4, Fig. 6) engaged therewith (Fig. 1), wherein the tubular member comprises a coupling element passage (4b) extending along at least a portion of a length of a sidewall of the tubular member and wherein a longitudinal axis of the coupling element passage extends approximately parallel to a longitudinal axis of the central aperture of the tubular member (Fig. 5);
a coupling element (10) having a distal end portion and a proximate end portion, wherein at least a portion of the coupling element between said distal and proximate end portions thereof is within the coupling element passage (Fig. 5);
a cleaning member (9) located adjacent to a distal end portion of the tubular member, wherein the cleaning member is attached the distal end portion of the coupling element (Fig. 5);
a handle (4B) attached to a proximate end portion of the tubular member (Fig. 5); and
a movement control structure (12,13) having a movement control portion and a mounting portion (12) coupled to the movement control portion (13), wherein the mounting portion of the movement control structure is moveably engaged with the handle to enable movement of the movement control structure relative to the handle (Fig. 5), wherein the mounting portion of the movement control structure is attached to the proximate end portion of the coupling element whereby movement of the movement control portion of the movement control structure causes an associated movement of the mounting portion of the movement control structure (Fig. 5), wherein the movement of the mounting portion of the movement control structure causes an associated movement of the cleaning member relative to the distal end portion of the tubular member (Fig. 5), wherein the coupling element extends contiguously from the cleaning member to the mounting portion of the movement control structure (Fig. 5), wherein:
the tubular member comprises a slot (see annotated Fig. 5 below) extending through an exterior wall thereof at the proximate end portion thereof (see annotated Fig. 5 below);
the slot is a passage extending between the coupling element passage and an interior portion of the handle (see annotated Fig. 5 below); and
a portion of the coupling element between the distal and proximate end portions thereof extends through the slot (see annotated Fig. 5 below).
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In regard to claims 2 and 13, Akui teaches wherein a longitudinal axis of the mounting portion of the movement control structure is an axis of rotation for said rotation of the mounting portion of the movement control structure and an axis of axial translation for said axial translation of the mounting portion of the movement control structure (Fig. 5, via axial and rotational movement of wiper tube (10) with respect to the longitudinal axis).
In regard to claims 5 and 15, Akui teaches wherein the mounting portion of the movement control structure being moveably engaged with the handle to enable movement of the mounting portion of the movement control structure relative to the handle includes the mounting portion of the movement control structure being rotationally and axially moveable relative to the handle (Fig. 5, via axial and rotational movement of wiper tube (10) with respect to portions of the handle.
In regard to claims 6 and 16, Akui teaches wherein a longitudinal axis of the mounting portion of the movement control structure is an axis of rotation about which the mounting portion of the movement control structure is rotationally and axially moveable (Fig. 5, via axial and rotational movement of wiper tube (10) with respect to the longitudinal axis).
In regard to claims 7 and 17, Akui teaches wherein the proximate end portion of the coupling element is fixedly attached to the mounting portion of the movement control structure (Fig. 5).
In regard to claims 8 and 18, Akui teaches wherein a longitudinal axis of the mounting portion of the movement control structure is an axis of rotation for said rotation of the mounting portion of the movement control structure and an axis of axial translation for said axial translation of the mounting portion of the movement control structure (Fig. 5, via axial and rotational movement of wiper tube (10) with respect to the longitudinal axis).
In regard to claims 9 and 19, Akui teaches wherein the mounting portion of the movement control structure being moveably engaged with the handle to enable movement of the mounting portion of the movement control structure relative to the handle includes the mounting portion of the movement control structure being rotationally and axially moveable relative to the handle (Fig. 5, via axial and rotational movement of wiper tube (10) with respect to portions of the handle).
In regard to claims 10 and 20, Akui teaches wherein a longitudinal axis of the mounting portion of the movement control structure is an axis of rotation about which the mounting portion of the movement control structure is rotationally and axially moveable (Fig. 5, via axial and rotational movement of wiper tube (10) with respect to the longitudinal axis).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RYAN N HENDERSON whose telephone number is (571)270-1430. The examiner can normally be reached Monday-Friday 6am-5pm (PST).
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, Anhtuan Nguyen can be reached at 571-272-4963. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RYAN N HENDERSON/ Primary Examiner, Art Unit 3795 June 11, 2026
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