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 .
Response to Amendment
The amendment filed 05/19/2025 has been entered. Claims 2-3 and 5-21 are pending in the application.
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 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 2-3 and 5-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-23 of U.S. Patent No. - US 12274439 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because they are substantially co-extensive in scope, at least in regard to the novel subject matter, and differ merely in equivalent terminology used as to function. Both claim a surgical instrument module for powering a plurality of discrete surgical end effectors having a – motor having a rotatable shaft, a drive shaft, a gear system coupled to the motor shaft and drive shaft and “a high-torque output configured to be operably coupled to a driven member of a first type of surgical end effector, the high-torque output being operably coupled to the motor; and a high-speed output configured to drive an operation of a second type of surgical end effector, the high-speed output being non-rotatably coupled to a distal end portion of the drive shaft such that the high-speed output rotates with the drive shaft” (current claims 2 and 17 & patented claims 1 and 15)… the gear system comprises a sun gear coupled to the motor shaft, and wherein the gear system further comprises two planetary gear systems, and wherein at least one of the two planetary gear systems is coupled to the drive shaft (current claims 3 and 18 & patented claims 1 and 15); the high-speed output is concentrically disposed within the high-torque output (current claim 4 & patented claims 2 and 22), an elongate ring gear in meshing engagement with each of the first and second planetary gear assemblies, wherein each of the first and second planetary gear assemblies is disposed within the elongate ring gear, wherein the elongate ring gear is rotationally fixed relative to the motor (current claims 11-13 & 19-21 patented claims 9-11) and a biasing member captured between the high-speed output and an inner surface of the high-torque output, wherein the biasing member is configured to distally-bias the high-speed output. (current claim 10 & patented claim 8). Generally, all of the dependent claims of the patent set forth the equivalent subject matter of the dependent claims of the current application. Therefore, it would have been obvious to one skilled in the art to substitute the terminology recited in the current claims with the equivalent components of the patented claims, since to do so provides nothing new or unexpected.
Allowable Subject Matter
Claims 2-3 and 5-21 are objected to as being allowable if a Terminal Disclaimer is filed for U.S. Patent No. - US 12274439 B2
As allowable subject matter has been indicated, applicant's reply must either comply with all formal requirements or specifically traverse each requirement not complied with. See 37 CFR 1.111(b) and MPEP § 707.07(a).
Reasons for Allowable Subject Matter
The following is an examiner’s statement of reasons for allowance: the prior art of record fails to teach or render obvious a surgical instrument module for powering a plurality of discrete surgical end effectors comprising all the structural and functional limitations and further comprising, amongst other limitations/features, a motor having a rotatable shaft, a drive shaft, a gear system coupled to the motor shaft and drive shaft, a high-torque output configured to be operably coupled to a driven member of a first type of surgical end effector, the high-torque output being operably coupled to the motor; and a high-speed output configured to drive an operation of a second type of surgical end effector, the high-speed output being non-rotatably coupled to a distal end portion of the drive shaft such that the high-speed output rotates with the drive shaft and “the high-speed output is concentrically disposed within the high-torque output” and/or “a third planetary gear assembly operably coupled to the second planetary gear assembly such that the third planetary gear assembly rotates in response to the rotation of the second planetary gear assembly; and a fourth planetary gear assembly operably coupled to the third planetary gear assembly such that the fourth planetary gear assembly rotates in response to the rotation of the third planetary gear assembly, wherein the high-torque output is non-rotatably coupled to the fourth planetary gear assembly such that the high-torque output rotates with the fourth planetary gear assembly” Though prior art such as Nett (US 5149230 A) A1 and Eshleman et al. (US 20130140050 A1) teaches a planetary gear assembly with first and second planetary gear systems for driving an output shaft at different torques/speeds for different tools they do not have the high-speed output is concentrically disposed within the high-torque output, it would not be obvious to modify the gear assemblies to include the high-speed output is concentrically disposed within the high-torque output and/or a third planetary gear assembly operably coupled to the second planetary gear assembly such that the third planetary gear assembly rotates in response to the rotation of the second planetary gear assembly; and a fourth planetary gear assembly operably coupled to the third planetary gear assembly such that the fourth planetary gear assembly rotates in response to the rotation of the third planetary gear assembly, wherein the high-torque output is non-rotatably coupled to the fourth planetary gear assembly such that the high-torque output rotates with the fourth planetary gear assembly and one of ordinary skill would recognize that an additional planetary gear systems configured to drive only a high-torque output or a high-speed output would involve modify the both the gear systems and the output members. Having the efficiency and power of the added planetary gear system to drive only a high-torque output or a high-speed output with the high-speed output is concentrically disposed within the high-torque output provides an effective clamping and fastening fasteners for different types of effectors to treat a surgical area with ease of attaching the different types of effectors with the required output drive with a compact output arrangement.
While various features of the claimed subject matter are found individually in the prior art, a skilled artisan would have to include knowledge gleaned only from the applicant's disclosure to combine or modify the teachings of the prior art to produce the claimed subject matter, and thus obviousness would not be proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). There is no teaching, suggestion, or motivation found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art to combine or modify the teachings of the prior art to produce the claimed invention, and thus obviousness would not be proper. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007).
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Response to Arguments
Applicant’s arguments, see remarks, filed 05/19/2025, with respect to the rejection(s) of claim(s) 2-3 and 5-21 under the prior art of record have been fully considered and are persuasive. Therefore, the prior art rejection has been withdrawn. However, the double patenting rejection of U.S. Patent No. - US 12274439 B2 remains since the Terminal Disclaimer is not found in the amendment as discussed in the remarks.
Conclusion
Additional prior art considered pertinent: US 20120234305 A1 - gear assembly 23 (gears 29/27 on shaft 28, figs. 4-5) having a high-speed output (29/22 - speed reduction ratio on the order of 3:2) coaxially with high-torque (27/26 - 5:1) output ([0055-0057], figs. 1-9) and see form 892.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT LONG whose telephone number is (571)270-3864. The examiner can normally be reached M-F, 9am-5pm, 8-9pm (EST).
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, SHELLEY SELF can be reached at (571) 272-4524. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ROBERT F LONG/Primary Examiner, Art Unit 3731
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