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 § 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.
Claims 1-2, 4-7, 11-15, and 19-20 are rejected under 35 U.S.C. 102a1/a2 as being anticipated by Rucker et al. (US 2006/0195117).
Regarding Claim 1, Rucker discloses:
A biopsy cap housing defining an upper chamber and a lower chamber, the biopsy cap housing comprising:
a first center-split half (806, see Fig. 8) comprising: a first portion defining a first half of the upper chamber (see portion above protrusion 138, Fig. 5); a second portion defining a first half of the lower chamber (see portion below protrusion 138, Fig. 5); and a first pivot member integrally formed with the first portion of the first center-split half (see Figs. 5, 6, and 8 showing pivot member near 124); and
a second center-split half (808, see Fig. 8) comprising: a first portion defining a second half of the upper chamber (see portion above protrusion 138, Fig. 5); a second portion defining a second half of the lower chamber (see portion below protrusion 138, Fig. 5); and a second pivot member integrally formed with the first portion of the second center-split half (see Figs. 5, 6, and 8 showing pivot member near 124);
wherein: mating surfaces of the first and second center-split halves are configured to interlock to define the upper and lower chambers (see Fig. 8 showing the unlocked state); and the upper chamber is configured to receive a biopsy cap (see Fig. 5, for example showing the upper chamber receiving a biopsy cap).
Regarding Claim 2, Rucker further discloses wherein: a first slit extends through a sidewall of the first and second portions of the first center-split half and is in substantial alignment with the first pivot member; and a second slit extends through a sidewall of the first and second portions of the second center-split half and is in substantial alignment with the second pivot member (see Fig. 8, for example, showing the slit running through the pivot members).
Regarding Claim 4, Rucker further discloses wherein the first and second pivot members include a thickness greater than a wall thickness of the first and second center-split halves to provide a strengthened or otherwise fortified section of the biopsy cap housing (see Fig. 5, for example, showing the thicker wall portion near 124).
Regarding Claim 5, Rucker discloses:
A biopsy cap housing defining an upper chamber and a lower chamber, the biopsy cap housing comprising:
a first center-split half (806, see Fig. 8) comprising: a first portion defining a first half of the upper chamber (see portion above protrusion 138, Fig. 5); a second portion defining a first half of the lower chamber (see portion below protrusion 138, Fig. 5); and a first pivot member integrally formed with the first portion of the first center-split half (see Figs. 5, 6, and 8 showing pivot member near 124); and
a second center-split half (808, see Fig. 8) comprising: a first portion defining a second half of the upper chamber (see portion above protrusion 138, Fig. 5); a second portion defining a second half of the lower chamber (see portion below protrusion 138, Fig. 5); and a second pivot member integrally formed with the first portion of the second center-split half (see Figs. 5, 6, and 8 showing pivot member near 124);
wherein: the upper chamber is configured to receive a biopsy cap (see Fig. 5, for example showing the upper chamber receiving a biopsy cap); and the lower chamber is configured to reversibly engage a biopsy port of an endoscope (see Fig. 5, for example showing the lower chamber receiving the endoscope port).
Regarding Claim 6, Rucker further discloses wherein the first portion of the first center-split half and the first portion of the second center-split half are movable toward each other with the second portion of the first center-split half and the second portion of the second center-split half moving away from each other to disengage the biopsy cap housing from the biopsy port of an endoscope (see Fig. 5-8 where pinching the top portion will move the bottom portion away so that the biopsy cap can be removed).
Regarding Claim 7, Rucker further discloses wherein: a first slit extends through a sidewall of the first center-split half and is in substantial alignment with the first pivot member; and a second slit extends through a sidewall of the second center-split half and is in substantial alignment with the second pivot member (see Fig. 8, for example, showing the slit running through the pivot members).
Regarding Claim 11, Rucker further discloses wherein the first and second pivot members include a thickness greater than a wall thickness of the first and second center-split halves (see Fig. 5, for example, showing the thicker wall portion near 124).
Regarding Claim 12, Rucker further discloses wherein the first and second pivot members include an increased thickness to provide a strengthened or otherwise fortified section of the biopsy cap housing (see Fig. 5, for example, showing the thicker wall portion near 124).
Regarding Claim 13, Rucker discloses:
A biopsy cap housing defining an upper chamber and a lower chamber, the biopsy cap housing comprising:
a first housing portion (806, see Fig. 8) comprising:
a first portion partially defining the upper chamber (see portion above protrusion 138, Fig. 5); second portion partially defining the lower chamber (see portion below protrusion 138, Fig. 5); and a first pivot member integrally formed with the first portion of the first housing portion (see Figs. 5, 6, and 8 showing pivot member near 124); and
a second housing portion (808, see Fig. 8) comprising: a first portion partially defining the upper chamber (see portion above protrusion 138, Fig. 5); a second portion partially defining the lower chamber (see portion below protrusion 138, Fig. 5); and a second pivot member integrally formed with the first portion of the second housing portion (see Figs. 5, 6, and 8 showing pivot member near 124);
wherein: the upper chamber is configured to receive a biopsy cap (see Fig. 5, for example showing the upper chamber receiving a biopsy cap); the lower chamber is configured to reversibly engage a biopsy port of an endoscope (see Fig. 5, for example showing the lower chamber receiving the endoscope port).
Regarding Claim 14, Rucker further discloses wherein the first portion of the first housing portion and the first portion of the second housing portion are movable toward each other with the second portion of the first housing portion and the second portion of the second housing portion moving away from each other to disengage the biopsy cap housing from the biopsy port of an endoscope (see Fig. 5-8 where pinching the top portion will move the bottom portion away so that the biopsy cap can be removed).
Regarding Claim 15, Rucker further discloses wherein: a first slit extends through a sidewall of the first housing portion in substantial alignment with the first pivot member; and a second slit extends through a sidewall of the second housing portion in substantial alignment with the second pivot member (see Fig. 8, for example, showing the slit running through the pivot members).
Regarding Claim 19, Rucker further discloses wherein the first and second pivot members include a thickness greater than a wall thickness of the first and second center-split halves (see Fig. 5, for example, showing the thicker wall portion near 124).
Regarding Claim 20, Rucker further discloses wherein the pivot members include an increased thickness to provide a strengthened or otherwise fortified section of the biopsy cap housing (see Fig. 5, for example, showing the thicker wall portion near 124).
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 1-5 of U.S. Patent No. 12,256,897. Although the claims at issue are not identical, they are not patentably distinct from each other because the patent claims the biopsy cap housing with the first and second halves in much the same manner as this application. The differences are enough that a statutory rejection would not be appropriate, but the patent anticipates the subject matter of the present application.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 and 16-17 of U.S. Patent No. 11,690,499. Although the claims at issue are not identical, they are not patentably distinct from each other because the patent claims the biopsy cap housing with the first and second halves in much the same manner as this application. The differences are enough that a statutory rejection would not be appropriate, but the patent anticipates the subject matter of the present application.
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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/TIMOTHY J NEAL/ Primary Examiner, Art Unit 3795
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