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 .
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, 5, and 7 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,295,605. Although the claims at issue are not identical, they are not patentably distinct from each other because the patent the claims of the application recite limitations which are broader and therefore anticipated by the claims of the patent. Joh (US 12,295,605) discloses a surgical instrument comprising (col 38 line 48): an end tool having at least one jaw and formed to be rotatable in at least two directions (col 38 lines 48-49); a manipulation part configured to control rotation of the end tool in the at least two directions (col 38 lines 50-51); a power transmission part comprising at least one jaw wire connected to the manipulation part, such that the manipulation part and the end tool are connected to each other (col 38 lines 52-54); and a connection part having one end portion coupled to the end tool and another end portion coupled to the manipulation part, such that the manipulation part and the end tool are connected to each other (col 38 lines 55-59), wherein the manipulation part comprises a locking device configured to lock or unlock at least one of a pitch motion or a yaw motion of the end tool (col 38 lines 63-67), and the locking device comprises a locking body part fixedly coupled to the connection part or the manipulation part, and a locking part formed to be coupled to the locking body part (col 39 lines 2-4).
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “manipulation part” and “power transmission part” in claim 1.
The specification of the present invention discloses that the structure configured to perform the manipulation function is a handle member (FIG 3, [0067]) and the structure configured to perform the power transmission function is wires/cables ([0084]), and equivalent structures thereof.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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 (i.e., changing from AIA to pre-AIA ) 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.
Claim(s) 1-6 and 9-14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Lee et al. (US 2022/0039817).
Regarding claim 1, Lee et al. discloses a surgical instrument (1 or 2, FIG 18 and 19 show the full instrument) comprising: an end tool (10, [0392-0396]) having at least one jaw ([0398]) and formed to be rotatable in at least two directions (Pitch and yaw direction, [0399]); a manipulation part (30, FIG 9A-9B) configured to control rotation of the end tool in the at least two directions ([0399-0409]); a power transmission part comprising at least one jaw wire (41 and 42, FIGs 9A-9B) connected to the manipulation part, such that the manipulation part and the end tool are connected to each other ([0398-0402]); and a connection part (20, [0391-0392, 0453]) having one end portion coupled to the end tool (Distal end) and another end portion coupled to the manipulation part (proximal end, FIG 18), such that the manipulation part and the end tool are connected to each other (Via mechanical connection through the shaft 20), wherein the manipulation part comprises a locking device (700, FIGs 18-28, [0482]. [0463-0471] disclose instrument 2 comprises substantially the same elements as disclosed for instrument 1, which the exception of the locking devices 700 and 800 which are described in further detail with respect to the differing embodiment) configured to lock or unlock at least one of a pitch motion or a yaw motion of the end tool ([0482-0485]), and the locking device comprises a locking body part (710) fixedly coupled to the connection part or the manipulation part ([0485]; 710 is coupled to 31 of the manipulation part), and a locking part (750 and 783, which are mechanically connected in the assembled device and function together to form a “part”) formed to be coupled to the locking body part (In a locked state, [0494]).
Regarding claim 2, Lee et al. discloses the locking body part (710) comprises a first coupling part having protrusions (Each of 717, FIG 24) and recesses (radial space between protrusions 717) formed thereon, and the locking part comprises a second coupling part (750) formed in a shape corresponding to the shape of the first coupling part (750 are seated within the recesses of 710, FIG 24, [0490 and 0494]).
Regarding claim 3, Lee et al. discloses the second coupling part is engaged with the first coupling part such that the locking body part and the locking part are in a locked state ([0494]).
Regarding claim 4, Lee et al. discloses the first coupling part is formed in a gear shape on an outer circumferential surface of the locking body part (The shape of 710 having a circular body with a plurality of projections 717 is interpreted as a “gear shape”).
Regarding claim 5, Lee et al. discloses the locking device further comprises a locking control part (770) configured to control whether the locking body part and the locking part are coupled or spaced apart from each other [0338-0345] disclose the function of the pushing plate in relation to the previous embodiment, wherein 670 is understood to operate similarly to 770. [0488-0492] disclose the function in the present embodiment but not is as great of detail).
Regarding claim 6, Lee et al. discloses the locking control part (770) is configured to perform a linear reciprocating motion with respect to the locking body part (The pushing plate 770/771 translates linearly, [0488-0493]), and the locking control part presses the locking part while moving in one direction, such that the locking part rotates in a direction of being away from the locking body part (In the ‘unlocking direction’ as described in [0493 and 0522-0523]).
Regarding claim 9, Lee et al. discloses the locking device further comprises an elastic member (773) applying a force to the locking part ([0488-0489], indirectly through 770) and the elastic member applies a predetermined elastic force to the locking part so that the locking part rotates in a direction of being close to the locking body part ([0488-0490 wherein the position of 770 controls spacing between the locking part 750 and the locking body part 710).
Regarding claim 10, Lee et al. discloses the locking part is arranged as a pair of locking parts (750 and 783 form a pair of parts), the pair of locking parts being arranged on opposite sides of the locking body part (FIG 24 shows 750 positioned on an opposite side of 710 relative to 783), and the elastic member (773) applies the predetermined elastic force so that the pair of locking parts rotate in a direction of being close to each other (773 pushes 771, [0488], which pushes 750 in a direction towards 783, [0490-0494]).
Regarding claim 11, Lee et al. discloses the locking body part (710) is fixedly coupled to the connection part ([0496] discloses 710 is connected to bent part 35, which is fixed to connection part 20, FIG 18) and is rotatable together with the connection part (710 and 20 can be rotated together).
Regarding claim 12, Lee et al. discloses in case that the locking part is coupled to the locking body part (i.e. in the locked state, [0494], rotation of the locking body part is restricted and thereby rotation of the connection part is restricted, such that the pitch motion of the end tool is locked ([0494] discloses “a pitch motion that is a relative movement of the bent part 35 and the pitch manipulation part 31, is prevented”).
Regarding claim 13, Lee et al. discloses the manipulation part (30) comprises a pitch frame (31) connected to the connection part (20, FIG 18) and a yaw frame (35) formed to be rotatable with respect to the pitch frame ([0491]), and the locking body part (710) is fixedly coupled to the pitch frame and is rotatable together with the pitch frame ([0485]).
Regarding claim 14, Lee et al. discloses in case that the locking part is coupled to the locking body part (position in the locking direction), rotation of the locking body part is restricted and thereby rotation of the pitch frame is restricted, such that the yaw motion of the end tool is locked ([0490, 0494]).
Allowable Subject Matter
Claims 7 and 8 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.
The following is a statement of reasons for the indication of allowable subject matter: The prior art of record fails to teach or render obvious “in one direction that the locking control part moves, a width of the locking control part increases along the one direction” in combination with the remaining limitations of the claim.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BROOKE N LABRANCHE whose telephone number is (571)272-9775. The examiner can normally be reached M-F 8-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Elizabeth Houston can be reached at 5712727134. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BROOKE LABRANCHE/Primary Examiner, Art Unit 3771
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