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 Preliminary Amendment
The preliminary amendment filed 05/19/2025 has been entered. Claims 2-21 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 2-21 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.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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(s) 2 and 5 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nett (US 5149230 A).
Regarding claim 2, Nett discloses a surgical instrument (10, fig. 1), for powering a plurality of discrete surgical end effectors (chucks 22 and 23 ), the surgical instrument module comprising: a motor (74) having a rotatable motor shaft (shaft with gear 73, fig. 7) defining a longitudinal axis; a drive shaft (30); a gear system (37/73) coupled to the motor shaft and to the drive shaft (motor shaft/30, fig. 7) to transfer rotational energy from the motor shaft to the drive shaft ([0038-0040], figs. 1-5 and 17-21);
a high-torque output (gear 35) configured to be operably coupled to a driven member (gear 26/chuck shaft 24) of a first type of surgical end effector (chuck 22/phillips driver 15), the high-torque output (gear 35) being operably coupled to the motor (74 via drive shaft 30/gear 37); and
a high-speed output (gear 36/27) configured to drive an operation (27) of a second type of surgical end effector (chuck 23/drill bit 14), the high-speed output (36) being non-rotatably coupled to a distal end portion of the drive shaft (on distal end of 30) such that the high-speed output rotates with the drive shaft (col. 4, line 22 – col. 9, line 45, figs. 1-9).
Regarding claim 5, Nett discloses the high-speed and high-torque outputs are configured to rotate concurrently in response to an activation of the motor (both 35/36 are connected with drive shaft 30 and one is inside housing guard 90 while other is being used, col. 4, line 22 – col. 9, line 45, figs. 1-9).
Claim(s) 2, 4, 8-11, and 17 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Eshleman et al. (US 20130140050 A1).
Regarding claim 2, Eshleman et al. discloses a surgical instrument (drill 10/10”), for powering a plurality of discrete surgical end effectors (reaming tool 214 or screwdriver, fig. 23), the surgical instrument module comprising: a motor (26) having a rotatable motor shaft (shaft shown fig. 17 with power train 49 and/or drive shaft 91 fig. 19) defining a longitudinal axis; a drive shaft (11/74); a gear system (power train assembly 49 and/or self-locking planetary gear set 90, fig. 19) coupled to the motor shaft and to the drive shaft to transfer rotational energy from the motor shaft to the drive shaft ([0038-0040], figs. 1-5 and 17-21);
a high-torque output (fig. 23B- dog clutch 238 engaged with 214) configured to be operably coupled to a driven member of a first type of surgical end effector (reaming tool 214 fig. 23B), the high-torque output being operably coupled to the motor [0116-0120], figs. 21-23); and
a high-speed output (screwdriver engaged with shaft 11, fig. 23A) configured to drive an operation of a second type of surgical end effector (screwdriver, fig. 23A), the high-speed output being non-rotatably coupled to a distal end portion of the drive shaft (dog clutch 238 is not engaged, fig. 23A) such that the high-speed output rotates with the drive shaft ([0116-0120], figs. 21-23).
Regarding claim 17, Eshleman et al. discloses a surgical instrument (drill 10/10”), the surgical instrument comprising: an instrument module (74, fig. 17) configured for removable receipt in the surgical instrument (reaming tool 214 or screwdriver, fig. 23), the instrument module including: an outer shell (23/14 - housing shells 46, 47 and housing shells 41, 42); a motor (26) having a rotatable motor shaft (shaft shown fig. 17 with power train 49 and/or drive shaft 91 fig. 19) defining a longitudinal axis; a drive shaft (11/74);
a battery (23) received in the outer shell and configured to power the motor; a printed circuit board (45) received in the outer shell ([0037-0038], figs. 2-4 and 14) and in communication with the battery (23) and the motor [0037-0038, 0044, 0053-0061];
a gear system (power train assembly 49 and/or self-locking planetary gear set 90, fig. 19) coupled to the motor shaft and to the drive shaft to transfer rotational energy from the motor shaft to the drive shaft ([0038-0040], figs. 1-5 and 17-21);
a high-torque output operably coupled to the motor (fig. 23B- dog clutch 238 engaged with 214); and a high-speed output non-rotatably coupled to a distal end portion of the drive shaft such that the high-speed output rotates with the drive shaft (dog clutch 238 is not engaged rotates screwdriver, fig. 23A [0116-0120], figs. 21-23).
Regarding claim 4, Eshleman et al. discloses the high-speed output (screwdriver engaged with 11) is concentrically disposed within the high-torque output (fig. 23B- dog clutch 238 engaged with 214, [0116-0120], fig. 23).
Regarding claims 8-10, Eshleman et al. discloses a the high-torque output (11/74 and/or 214) defines a cavity therein, and the high-speed output (screwdriver inside 11/74 and/or 214) is received in the cavity wherein the high-speed output (screwdriver inside 11/74 and/or 214) is configured to move longitudinally relative to and along the drive shaft with a biasing member (234) disposed between the high-speed output (screwdriver inside 11/74 and/or 214) and an inner surface (flange portion of 214) of the high-torque output (214), wherein the biasing member is configured to distally-bias the high-speed output ([0120], figs. 22-23).
Regarding claims 11, Eshleman et al. discloses an elongate ring gear (93) in meshing engagement with the gear system ([0107-0110], figs. 19-23).
Claim Rejections - 35 USC § 102/103
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 2-3 and 7 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Elger (US 20150122063 A1) or, in the alternative, under 35 U.S.C. 103 as obvious over Elger (US 20150122063 A1) in view of Yang (US 4976173 A) and further in view of Nett (US 5149230 A).
Regarding claim 2, Elger discloses a surgical instrument module (drill 10) for powering a plurality of discrete surgical end effectors (tool chuck or bit retainer will hold different tool/effectors), the surgical instrument module comprising: a motor (14) having a rotatable motor shaft (22) defining a longitudinal axis; a drive shaft (22 and/or 78); a gear system (transmission 18-three gear stages 42, 46, 50) coupled to the motor shaft and to the drive shaft to transfer rotational energy from the motor shaft to the drive shaft [0016-0030];
a high-torque output (shift mechanism 166/actuator knob 186 at second position) configured to be operably coupled to a driven member of a first type of surgical end effector (158 coupling stage 50- 106 at high torque/low speed, fig. 8), the high-torque output being operably coupled to the motor (stage 50 coupled to motor shaft 22 via end cap 62, 158 coupling 106 with 22 with motor at high torque/low speed, fig. 8 [0025-0026]); and
a high-speed output (shift mechanism 166/actuator knob 186 at first position) configured to drive an operation of a second type of surgical end effector (tool chuck or bit retainer capable of holding a second different tool/effector type), the high-speed output being non-rotatably coupled to a distal end portion of the drive shaft (158 coupling 102 with 22, fig. 5) such that the high-speed output rotates with the drive shaft (rotates with 78, [0027], figs. 1-8).
In the alternative, if it can be argued that Elger fails to disclose having a plurality of discrete surgical end effectors with a first and second type of surgical end effector-
Yang teaches a similar electric tool (figs. 1-2) having a plurality of discrete surgical end effectors (212/213) with a first and second type of surgical end effector (collet 212 for screw driver and drill chuck 213 and shows different effector tool bits that attach, (col. 3, line 18- col. 4, line 20, figs. 1-2).
Nett discloses teaches a surgical instrument (10, fig. 1), having a plurality of discrete surgical end effectors (chucks 22 and 23) with a first and second type of surgical end effector (chuck 22/phillips driver 15 and chuck 23/drill bit 14, col. 4, line 22 – col. 9, line 45, figs. 1-9).
Given the teachings of Elger to have a tool chuck or bit retainer will hold different tool/effectors with different modes of operation for the bit retainer, it 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 to modify the tool chuck or bit retainer with having a plurality of discrete surgical end effectors with a first and second type of surgical end effector to have precise adjustment of speed/torque for the require job (drilling or fastening screws), more precise action on a workpiece (avoid overshoot/damage to the workpiece) and/or for attaching different tool purposes as taught by Yang and Nett.
Regarding claim 3, Elger discloses 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 (“any number of additional gear stages, including conventional gear stages, planetary gear stages” [0018], figs. 1-4).
Regarding claims 7, Elger discloses a distal end portion of the drive shaft (22) is disposed within and rotatable relative to the high-torque output and the high-torque output (106) defines a cavity therein, and the high-speed output is received in the cavity [0021, 0027].
Claim(s) 3, 12-13, and 18-21 is/are rejected under 35 U.S.C. 103 as obvious over Eshleman et al. (US 20130140050 A1) in view of Miller (US 20060096767 A1) and further in view of Hanspers et al. (US 20100032179 A1).
Regarding claims 3, 12-13, and 18-21, Eshleman et al. teaches having a gear system comprises a sun gear (92) coupled to the motor shaft (91), and wherein the gear system further comprises a first planetary gear assembly (94) coupled to the drive shaft (91), an elongate ring gear (93) in meshing engagement with the first planetary gear assembly, wherein the elongate ring gear is rotationally fixed relative to the outer shell ([0107-0110], fig. 19).
Eshleman et al. fails to disclose a second planetary gear assemblies and the 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.
Miller teaches a rotary tool (10 [0024]) having a gearbox (38) with sun gear 86 having first and second planetary gear assemblies (88 and 94 with planet carriers 91 and 97, [0027-0028] and also teaches having planet gear assemblies 39 with at least two – [0025]) and a elongate ring gear (38/92, fig. 6) 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 ([0025-0033, 0049], figs. 1-6).
Hanspers et al. a rotary tool (10) having motor section (13 [0012-0013], figs. 1-2) with first and second planetary gear assemblies (any of gearing unit 16a-c) and an elongate ring gear (24/25) in meshing engagement with each of the first and second planetary gear assemblies (planetary gearing 28 and a second planetary gearing 29), wherein each of the first and second planetary gear assemblies is disposed within the elongate ring gear ([0014], fig. 4).
Given the teachings of Eshleman et al. to have gear system comprises a sun gear and planetary gear assembly, it 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 to modify gear system with adding a second planetary gear assembly and a 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 to have precise adjustment of speed/torque for the require job (drilling or fastening screws), more precise action on a workpiece (avoid overshoot/damage to the workpiece) and/or for attaching different tool purposes with required torque/speed as taught by Miller and Hanspers et al.
Claim(s) 6 is/are rejected under 35 U.S.C. 103 as obvious over Nett (US 5149230 A) in view of Miller (US 20060096767 A1) and further in view of Hanspers et al. (US 20100032179 A1).
Regarding claim 6, Nett discloses the high-torque output (gear 35) includes a pinion gear (35 is pinion gear) and the high-speed output (gear 36/27) includes a chuck (23), col. 4, line 22 – col. 9, line 45, figs. 1-9). Nett also teaches the device (10) is used as socket wrench (col. 1, lines 53-67).
Nett fails to explicitly disclose the high-speed output includes a socket.
Hanspers et al. teaches having a gearing unit 16a-c with a socket to attach to nut socket [0012-0014].
Miller also teaches having a chuck (28) with a socket (31) to receive a fastener tool [0033].
Given the teachings of Nett to have two chuck effectors, a high-speed output and high-torque output respectively for having different tools attached, it 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 to modify the high-speed output to include a socket to have the desired tool attached for the require job (drilling or fastening screws) and/or for easier attaching different tool purposes with required torque/speed as taught by Miller and Hanspers et al.
Allowable Subject Matter
Claims 14-16 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 and if a proper and if a Terminal Disclaimer is filed for US 11014224 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 “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, it would not be obvious to modify the gear assemblies to include 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 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.
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.”
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.
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).
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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