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 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.
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.
Claim(s) 1, 10, 13, 14, and 16 is/are rejected under 35 U.S.C. 102a1 as being anticipated by Schoolman (US 4,483,562).
Regarding claims 1 and 16, Schoolman discloses a closure assembly for a surgical device comprising a latch unit (at least 74,76,86) including a hook latch (76) having a home position (e.g., when button 84 is not being depressed; figs. 1,2), a forward bias constraint (unnumbered tab extending from 74 to which spring 86 is attached), a rearward bias constraint (unnumbered tab extending from inner wall of handle 7 to which 86 is attached; see examiner-annotated reproduction of a portion of fig. 2 below) and a bias member (86) extending between and contacting the forward bias constraint and the rearward bias constraint so that the bias member has a pre-load (as understood in view of col. 5, ll. 8-20, which discloses that spring 86 continually exerts a force on 74 in a direction outwardly of slot 78 which acts to keep the tab 76 in forceful contact with the finger serration first surfaces 82). The closure assembly further comprises a movement unit including a bar (69) that is movable relative to the latch unit (via depression of trigger 59) in a prescribed motion into contact with the latch unit to create a locked state of the closure assembly (e.g., trigger can be depressed from position in fig. 2, such that the bar, specifically a more distal tooth of the bar, moves into contact with the latch unit to create a locked state, i.e., trigger cannot open on its own from this new depressed configuration). Further regarding claim 16, the forward and rearward bias constraints are located opposite each other (i.e., at opposite ends of the spring).
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Regarding claim 13, the latch unit includes a selection plate (e.g., 59) that is movably connected to a latch plate (74). The term “plate” is not considered particularly limiting, and any relatively flat element, or element having a relatively constant thickness, can be considered a “plate”.
Regarding claim 14, the selection plate (59) moves the latch unit between a lockable state (when 76 rests between adjacent ridges 80 against surface 82) and an unlockable state (when 76 rests against the free tip of a ridge 80 such that it is not locked between adjacent teeth).
Regarding claims 1 and 10, an alternative interpretation of the prior art of Schoolman is being applied. Schoolman discloses a latch unit including a hook latch (69) having a home position (e.g., when trigger 59 has been fully compressed, noting that the home position can be considered a start position of the hook latch according to the specification of the instant application, and the trigger can start in the fully compressed configuration when it is desired to start a surgical procedure with the jaws 12/14 closed), a forward bias constraint (59) and a rearward bias constraint (front wall of handle 7; see fig. 2), and a bias member (65) operably coupled to the forward and rearward bias constraints so that the bias member has a pre-load when the hook latch is in the home (noting that the bias member 65 is meant to bias trigger 59 away from handle and thus has a preload when trigger is depressed), and a movement unit (84,74,76,86) including a bar (74,76) movable relative to the latch unit so that the bar is movable in a prescribed motion (from position when button 84 is depressed to position caused by release of button) into contact with the latch unit (into 59) to create a locked state. The bias member (65) is a compression spring (86) that is contact with both the forward and backward bias constraints to retain the preload of the compression spring (see fig. 2).
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 (1-4, 16, 17, 19), (10,18), 11, 12, 13, 14, 15, and 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims (1), (6), 16, 17, 9, 10, 11, and 8, respectively of U.S. Patent No. 10,849,641. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims (1-4, 16, 17, 19), (10,18), 11, 12, 13, 14, 15, and 20 are merely broader than the claims 1, 6, 16, 17, 9, 10, 11 and 8 of ‘641, respectively, and are therefore “anticipated” by claims 1, 6, 16, 17, 9, 10, 11 and 8 of ‘641. Regarding the limitations found in the listed claims of ‘641 which are not found in the listed instant claims, once an applicant has received a patent for a species or a more specific embodiment, he or she is not entitled to a patent for the generic or broader invention without filing a terminal disclaimer In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993). Regarding instant claim 16, since claim 1 of ‘641 claims the two bias constraints as a “forward” bias constraint and a “rearward” bias constraint, and further claims that the bias member extends between and contacting the forward and rearward bias constraints, it is understood that the forward and rearward bias constraints are located opposite each other, at least with respect to the bias member.
Claims (1,2,16,17,19), (3,4), (10,18), 11, 12, 13, 14, 15, and 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims (1), (2), (8), 9, 10, 11, 12, 13, and 14, respectively of U.S. Patent No. 11,896,254. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims listed above are merely broader than the claims of ‘254 listed above, respectively, and are therefore “anticipated” by claims 1-2 and 8-14 of ‘254. Regarding the limitations found in the listed claims of ‘254 which are not found in the listed instant claims, once an applicant has received a patent for a species or a more specific embodiment, he or she is not entitled to a patent for the generic or broader invention without filing a terminal disclaimer In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993). Regarding instant claim 16, since claim 1 of ‘254 claims the two bias constraints as a “forward” bias constraint and a “rearward” bias constraint, and further claims that the bias member extends between and contacting the forward and rearward bias constraints, it is understood that the forward and rearward bias constraints are located opposite each other, at least with respect to the bias member.
Claims (1,16,19) are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 2, respectively of U.S. Patent No. 12,285,183. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims listed above are merely broader than claim 2 of ‘183 and are therefore “anticipated” by claim 2 of ‘183. Claim 2 of ‘183 uses the term “projection” instead of “bar”. However, since the term “bar” is not further defined in instant claims 1, 16, and 19, and a “bar” is merely an elongated projection, instant claims 1, 16, and 19 are not considered patentably distinct from claim 2 of ‘183. Regarding the limitations found in the claim 2 of ‘183 which are not found in the listed instant claims, once an applicant has received a patent for a species or a more specific embodiment, he or she is not entitled to a patent for the generic or broader invention without filing a terminal disclaimer In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993). Regarding instant claim 16, since claim 2 of ‘183 claims the two bias constraints as a “forward” bias constraint and a “rearward” bias constraint, and further claims that the bias member is constrained between the forward and rearward bias constraints, it is understood that the forward and rearward bias constraints are located opposite each other, at least with respect to the bias member.
Allowable Subject Matter
Claims 5-9 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. The closest prior art of Schoolman fails to disclose or fairly suggest the additional structure of claims 5-9. The limitation requiring that the bias member has a pre-load when the hook latch is in the home position is understood to require that the bias member has a load greater than 0 Newtons when the hook latch is in the home position.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KATHLEEN SONNETT HOLWERDA whose telephone number is (571)272-5576. The examiner can normally be reached M-F, 8-5, with alternate Fridays off.
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KSH 6/23/2026
/KATHLEEN S HOLWERDA/Primary Examiner, Art Unit 3771
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