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 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 3-6, and 10-16 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.
Claim 3 recites the limitation "the longitudinal axis of the link" in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim 5 recites the limitation "the longitudinal axis of the link" in line 2. There is insufficient antecedent basis for this limitation in the claim.
In claim 5, line 4, “its longitudinal axis” is ambiguous as it is unclear to what element “its” refers.
In claim 10, line 2, the phrase “includes various combinations of gears” is ambiguous as it is not clear how many gears and in what particular combination is being claimed. It is not clear what applicant is attempting to claim. The term “various” is not sufficiently clear to define the metes and bounds of the claim.
Claim 11 is ambiguous at line 6, as it appears that “output gear” is missing an article.
Claim 11 is ambiguous at lines 5-9 as it is not clear to which gears “a gear” and “the gear” refer. Claim 11 recites a first gear, a second gear, and multiple instances of “a gear”. The multiple recitations of “a gear” is confusing and fails to clearly define the elements of the claimed device.
Claim 13 recites the limitation "the orientation of the motor" and “the orientation of the output shaft” in lines 1-3. There is insufficient antecedent basis for these limitations in the claim.
Claim 14 recites the limitation "the orientation of the motor" and “the orientation of the output shaft” in lines 1-2. There is insufficient antecedent basis for these limitations in the claim.
Claim 15, line 3 is ambiguous as it appears that words are missing. The phrase “the longitudinal axis of the link and the output shaft of the motor intersect at a point beyond the distal end of the output shaft” is unclear at it appears that “longitudinal axis of” should be inserted before “output shaft”.
Claim 15 is missing a period (.) at the end.
Claim 16 recites the limitation "the longitudinal axis of the output shaft" and “the longitudinal axis of the link” in lines 2-4. There is insufficient antecedent basis for these limitations in the claim.
In claim 16, line 3, “its longitudinal axis” is ambiguous as it is not clear to what element “its” refers.
Claims 4, 6, and 12 depend from a rejected claim and are likewise rejected.
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 1-17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of U.S. Patent No. 12,262,898. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-15 of the reference patent “anticipate” application claims 1-17. It is apparent that the application claims differ from the reference patent claims in that the patent claims are more specific. Here, reference patent claim 1 requires an oscillating drive mechanism comprising a motor having a rotor and an output shaft, a crank assembly hub, a link secured to the crank assembly hub, a longitudinal axis of the link positioned at an acute angle relative to a longitudinal axis of an output shaft, a pivot shaft positioned at the intersection of the longitudinal axis of the output shaft of the motor and the longitudinal axis of the link, a shuttle including an arcuate rack gear, and a gear meshed with the arcuate rack gear, while application claim 1 only requires an oscillating drive mechanism comprising a motor having a rotor and a shaft, a crank assembly hub, a link secured to the crank assembly hub, a shuttle including an arcuate rack gear, and a gear meshed with the arcuate rack gear. Any remaining differences are only differences in verbiage without any difference in meaning. Application claim 1 is not patentably distinct from reference patent claim 1 because the more specific reference patent claim anticipates the broader application claim. Following the rationale in In re Goodman cited in the preceding paragraph, where applicant has once been granted a patent containing a claim for the specific or narrower invention, applicant may not then obtain a second patent with a claim for the generic or broader invention without first submitting an appropriate terminal disclaimer.
The application claims and reference patent claims match up as follows:
Application Claims
Reference Claims (US Patent No. 12,262,898)
1
1
2
2
3
3
4
4
5
5
6
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7
8
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15
1
16
1
17
7
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Edwards et al. (US Patent No. 11,147,579) disclose a reciprocating device.
Bono et al. (US Patent Publ. No. 2020/0170660) and Bono et al. (US Patent Publ. No. 2019/0117249) disclose rotary oscillating devices.
Bono et al. (US Patent Publ. No. 2018/0140307) disclose a rotary oscillating surgical tool.
Chu (US Patent No. 9,826,989), Crawford et al. (US Patent Publ. No. 2014/0275955), Bono et al. (US Patent Publ. No. 2013/0304069), and Yedlicka et al. (US Patent Publ. No. 2007/0282344) disclose surgical devices.
DeFalco et al. (US Patent No. 9,539,043), Sokol et al. (US Patent No. 8,943,634), and Zhuan (US Patent No. 6,721,986) disclose rotary devices.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Linda J. Hodge whose telephone number is (571)272-0571. The examiner can normally be reached Monday-Friday 8:00-5:00.
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/LINDA J. HODGE/Examiner, Art Unit 3731