DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the AIA first to file provisions. 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.
Application Status
This office action is in response to the claims filed 4/28/2025.
Claims 1-20 are currently pending and being examined.
Information Disclosure Statement
The 2 IDS documents filed on 8/19/2025 has been considered. See the attached PTO 1449 forms.
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 6-7 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 pre-AIA the applicant regards as the invention.
Regarding claims 6 and 7:
Claims 6 recites “the first cable” which lacks sufficient antecedent basis because only “a cable” was previously introduced in the claims. Claim 7 also references the first cable. Examiner recommends amending claim 6 to include an initial limitation of “wherein the cable is a first cable” to avoid this issue.
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 obviousness-type 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); and 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 a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Claims 1-5 and 8-10 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-6 and 8-9, respectively, of U.S. Patent No. 11,504,123.
Claims 11-14 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 16 (or 20) and 17-19 , respectively, of U.S. Patent No. 11,864,763.
Claims 15-20 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 11 (or 1), 12-13, 15, 19, and 17, respectively, of U.S. Patent No. 12,303,128.
Although the conflicting claims above are not identical, they are not patentably distinct from each other because while the instant claims use some variations in language, the breadth of the patent claims anticipate the instant claims. For example, patent claim 1, in relevant part, requires “An adapter assembly for selectively interconnecting an end effector to a handle assembly supporting a motor, the motor configured to impart drive force from the handle assembly to the end effector to operate the end effector, the adapter assembly comprising: an adapter housing configured to couple to the handle assembly” whereas application claim 1 only requires “An adapter assembly for a surgical instrument, the adapter assembly comprising: an adapter housing;… an outer tube [] configured to support an end effector”. Application claim 1 is not patentably distinct from patent claim 1 because the more specific 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. Similar analysis follows for application claims 2-5 and 8-20.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DARIUSH SEIF whose telephone number is (408)918-7542. The examiner can normally be reached Monday-Friday 9:30 AM-6:00 PM PST.
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/DARIUSH SEIF/Primary Examiner, Art Unit 3731