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
Claim 21 is objected to because of the following informalities: the claim appears to contain an extraneous word “is” in line 21 and should be amended to read as “port [[is]] in fluid communication with the distal end” to read better. Appropriate correction is required.
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 21-25, 28-30, 32-33, 36, and 39 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 15-19 and 21-23 of U.S. Patent No. 12,226,116. Although the claims at issue are not identical, they are not patentably distinct from each other because the current claims are broader than and thus are “anticipated by” the claims of the ‘116 patent as set forth below with respect to the column/line numbers of the issued patent.
Regarding current claim 21, ‘116 patent claim 1 recites: An ultrasonic sleeve assembly for use with a surgical handpiece comprising a transducer disposed in a housing, the ultrasonic sleeve assembly comprising: a cutting tip (C16L9) comprising: a shaft comprising a distal end and a proximal end (C16L11-12), wherein the proximal end comprises a coupling feature configured to removeably couple the shaft to the handpiece (C16L12-14); a cutting feature coupled to the distal end of the shaft (C16L18); an aspiration lumen defined by the shaft (C16L19), the aspiration lumen configured to extend along a longitudinal axis of the shaft (C16L19-21), the aspiration lumen in fluid communication with the handpiece (C16L21-22); and an aperture in fluid communication with the aspiration lumen (C16L29-30), located between the proximal end and the distal end of the shaft (C16L23-30), the aperture having a proximal end and a distal end; and an irrigation sleeve configured to surround a portion of the shaft when the irrigation sleeve and the cutting tip are coupled to the handpiece (C16L41-42, L9), the irrigation sleeve having a proximal end and a distal end (C16L43), wherein the irrigation sleeve defines a lumen (C16L43-44), the proximal end of the irrigation sleeve having a coupling mechanism configured to removeably couple the irrigation sleeve to the handpiece (C16L44-47), wherein the irrigation sleeve further defines an irrigation channel comprising a distal end and a proximal end (C16L48-49), the proximal end of the irrigation channel being configured to receive irrigation fluid from an irrigation source (C16L50-52), and the irrigation sleeve further including an irrigation port is in fluid communication with the distal end of the irrigation channel (C16L53-54), the irrigation port configured to dispense irrigation fluid toward the shaft (C16L54-56), wherein the irrigation sleeve and the cutting tip are configured such that when the irrigation sleeve and cutting tip are coupled to the handpiece (C16L9,41): the distal end of the irrigation sleeve is positioned proximal to the distal end of the shaft (C16L57-58); the irrigation port is positioned proximal relative to the aperture along the longitudinal axis (C16L59-60); and the distal end of the irrigation sleeve is distal to the distal end of the aperture such that the irrigation sleeve encompasses an entirety of the aperture (C16L61-63).
Further, there is correspondence between dependent claims 22-25, 28-30, 32-33, 36, and 39 of the current application with claims of the ‘116 patent as set forth in the table below:
Current claim #
22
23
24
25
28
29
30
32
33
36
39
'116 claim #
16
17
18
19
22
22
22
21
23
16
16
Allowable Subject Matter
Claims 26-27, 31, 34-35, 37-38, 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 21-25, 28-30, 32-33, 36, and 39 would be allowable when the nonstatutory double patenting rejection set forth above is overcome.
The following is a statement of reasons for the indication of allowable subject matter: with respect to claim 21 and the prior art, claim 21 would be allowed for similar reasons as set forth in parent application 17/278682 with respect to original claim 18 (issued as claim 15). Specifically, the closest prior art of record includes US 2006/0004396 to Easley et al. and US 5,163,433 to Kagawa et al. (both references cited in an IDS dated 04/22/2025). However, none of the prior art of record, alone or in combination, teaches or suggests an ultrasonic sleeve assembly as claimed in claim 21, including wherein the irrigation port is adjacent to the distal end of the irrigation sleeve, the distal end of the irrigation sleeve is positioned proximal to a distal end of the shaft, the irrigation portion is positioned proximal to the aperture, and the distal end of the irrigation sleeve is distal to the distal end of the aperture such that the irrigation sleeve encompasses an entirety of the aperture. It is further noted that the same exact claim language was deemed allowable by the EPO on 07/06/26.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHAUN L DAVID whose telephone number is (571)270-5263. The examiner can normally be reached M-F 10AM-6:30PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Darwin Erezo can be reached at 571-272-4695. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SHAUN L DAVID/Primary Examiner, Art Unit 3771
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