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 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 17 and 19 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 17 and 19 recite the limitation " at least one of the housing portions”. There is insufficient antecedent basis for this limitation in the claim. The claim is unclear because upper and lower chambers are claimed and a handle portion is claimed. The “at least one of the housing portions” could be these elements individually or in combination or some other previously unclaimed element. The Examiner assumes that some part of the skirt region is required to have the internal gripping members. 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 16 is rejected under 35 U.S.C. 102a2 as being anticipated by Benn et al. (US 2018/0014717).
Regarding Claim 16, Benn discloses:
A housing attachment for a biopsy port of an endoscope, the housing attachment comprising:
an upper chamber (see Figs. 3-5 showing the upper portion of 104 near numeral 126 in Fig. 4) configured to accept and engage a biopsy cap (see Fig. 5 showing a cap inserted into the upper chamber);
a lower chamber (see Fig. 3-5 showing the lower portion of 104 near 124) adjacent the upper chamber configured to receive the biopsy port (see Fig. 3 showing 26 engaging with the lower portion of 104); and
a skirt region (106) extending from the lower chamber in a direction away from the upper chamber (see Fig. 3) and configured to extend circumferentially around a portion of a handle of the endoscope (see Fig. 6, for example, showing 106 extending around a portion of a scope handle), the skirt region having a skirt shape set to follow the contour of the portion of the handle of the endoscope (this can be seen in Figs. 6-8), wherein the skirt region is configured to maintain the skirt shape when the skirt region is not attached to the endoscope (see Paragraph 0038 discussing how 106 may be made from a rigid plastic).
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Benn et al. (US 2018/0014717) in view of Byers et al. (US 8,343,041).
Benn discloses the invention substantially as claimed as stated above, but does not explicitly disclose wherein the skirt region of at least one of the housing portions comprises internal gripping members along an inner surface of the skirt region configured to frictionally fit with the portion of the endoscope. Byers teaches internal gripping members on a skirt like region for attaching to an endoscope (see Figs. 9 and 13 and Col 9 Lines 20-27 and Col 10 Lines 5-13). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify Benn to include Byers’ gripping members. Such a modification provides a means to improve the attachment of the skirt to the device.
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over Benn et al. (US 2018/0014717) in view of Rucker et al. (US 2006/0195117).
Benn discloses the invention substantially as claimed as stated above, but does not explicitly disclose a grip region about an external surface of the body at the upper chamber of at least one of the housing portions, the grip region comprising external gripping members configured for a user to grasp. Rucker teaches a grip region (122) with grooves as known in the art for improving grip. Grooves, ridges, bumps, and numerous other examples of surface features designed to improve grip are considered obvious. Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify Benn’s device to include Rucker’s grip region. Such a modification incorporates well-known features for improving grip to improve a user’s ability to grip and hold Benn’s upper chamber.
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 1-20 of U.S. Patent No. 12,245,746. Although the claims at issue are not identical, they are not patentably distinct from each other because the patent anticipates the claims of the application. Claim 1 of Patent ‘746 includes all the features of this application’s claim 1 with the additional feature “wherein mating surfaces of the first and second housing portions are configured to interlock.” Dependent claims 2-10 are substantially similar or identical in both.
Claim 11 of Patent ‘746 is similar to claim 11 of this application with the difference being that the patent refers to mating surfaces configured to interlock instead of locking members. While there is a slight difference in scope, the Examiner does not consider the difference so great that there is a patentable distinction. Dependent claims 12-15 are substantially similar in both documents.
Claim 16, much like claim 11, is similar in both documents. The patent claims that the skirt region is contoured where this application claims that it circumferentially around a portion of a handle of an endoscope. Because most endoscopes have cylindrical shapes, a skirt going circumferentially around a portion of such a handle is considered to be contoured in a circumferential manner. Dependent claims 17-20 are substantially similar in both documents.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TIMOTHY JAY NEAL whose telephone number is (313)446-4878. The examiner can normally be reached Mon-Fri 7:30-5:30.
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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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/TIMOTHY J NEAL/ Primary Examiner, Art Unit 3795
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