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 .
Priority
Acknowledgement is made of applicant’s claim for foreign priority under 35 U.S.C. 119. Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
Receipt is acknowledged of Information Disclosure Statement(s) (IDS), filed 16 May 2025, which have been placed of record in the file. An initialed, signed, and dated copy of each PTO-1449 or PTO-SB-08 form is attached to the Office action.
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 1-19 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1, line 2 recites the limitation “a first jaw capable of accommodating a cartridge”, while lines 12-14 recite the limitation “the staple drive assembly is connected to a reciprocating assembly of the cartridge”. The recitation of line 2 does not require a cartridge as a claimed element, while the recitation of lines 12-14 implies that the cartridge is a claimed element of the device. Accordingly, it is not clear whether a “cartridge” is an element of the device. Further, it is not clear whether “a reciprocating assembly” of the cartridge is an element of the device.
Claim 1 recites the limitation "the staple pulley" in lines 10, 11, and 13. There is insufficient antecedent basis for this limitation in the claim. It is not clear whether “the staple pulley” is the same or one of the “one or more staple pulleys” as set forth in line 8.
Claims 3-13 also recite the limitation “the staple pulley” and lack sufficient antecedent basis in the claim for the same reason as claim 1.
Claims 14-19 depend from claim 1 and are likewise rejected.
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.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 17 of U.S. Patent No. 12,329,380. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 17 of the reference patent “anticipates” application claim 1. It is apparent that the application claim differs from the reference patent claim in that the patent claim is more specific. Here, patent claim 17 requires a surgical instrument comprising (A) an end tool, (B) a first jaw, (C) a second jaw, (D) a first jaw pulley, (E) a second jaw pulley, (F) a staple drive assembly, (G) a staple pulley, (H) a cartridge, (I) a reciprocating assembly, and (J) an operation member, while application claim 1 only requires (A), (B), (C), (D), (E), (F), (G), and (I). Any remaining differences are only differences in verbiage without any difference in meaning. Application claim 1 is not patentably distinct from reference patent claim 17 because the more specific reference 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.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 16 of U.S. Patent No. 12,089,847. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 16 of the reference patent “anticipates” application claim 1. It is apparent that the application claim differs from the reference patent claim in that the patent claim is more specific. Here, patent claim 16 requires a surgical instrument comprising (A) an end tool, (B) a first jaw, (C) a second jaw, (D) a first jaw pulley, (E) a second jaw pulley, (F) a staple drive assembly, (G) a first staple pulley and a second staple pulley, (H) a cartridge, (I) a reciprocating assembly, (J) an operation member, (K) a first staple wire, and (L) a second staple wire, while application claim 1 only requires (A), (B), (C), (D), (E), (F), (G), (I), and (K). Any remaining differences are only differences in verbiage without any difference in meaning. Application claim 1 is not patentably distinct from reference patent claim 16 because the more specific reference 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.
Claims 1-7, and 10-16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 21-27, 28-29, and 32-36 of copending Application No. 18/579,795 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claim 21 of the reference application “anticipates” application claim 1. It is apparent that the application claim differs from the reference application claim in that the reference application claim is more specific. Here, reference application claim 21 requires (A) an end tool, (B) a first jaw, (C) a second jaw, (D) a first jaw pulley, (E) a second jaw pulley, (F) a staple drive assembly, (G) a first staple pulley and a second staple pulley, (H) a first staple wire, and (I) a second staple wire, while application claim 1 only requires (A), (B), (C), (D), (E), (F), (G), and (H). Any remaining differences are only differences in verbiage without any difference in meaning. Application claim 1 is not patentably distinct from reference application claim 21 because the more specific reference 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.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
The application claims and reference application claims match up as follows:
Application Claims
Reference Application Claims (US Patent Appl. No. 18/579,795)
1
21
2
22
3
23
4
24
5
25
6
26
7
27
10
28
11
29
12
32
13
33
14
34
15
35
16
36
Allowable Subject Matter
Claims 8-9 and 17-19 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of the reasons for the indication of allowable subject matter.
With respect to claim 8, the prior art fails to teach or disclose the apparatus of claim 2, wherein a region of the guide part adjacent to the first jaw pulley, the staple pulley, and the second jaw pulley is formed such that a cross section thereof is curved with a predetermined curvature.
Claim 9 depends from claim 8 and would likewise be allowable.
With respect to claim 17, the prior art fails to disclose or teach the apparatus of claim 1, further comprising: a pair of end tool first jaw pitch main pulleys formed on one side of the first jaw pulley, and formed to be rotatable around a second shaft forming a predetermined angle with the first shaft; and a pair of end tool second jaw pitch main pulleys formed on one side of the second jaw pulley, and formed to be rotatable around a shaft that is substantially the same as or parallel to the second shaft.
Claims 18-19 depend from claim 17, and would likewise be allowable.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Burbank et al. (US Patent Publ. No. 2017/0265954) disclose a surgical instrument including jaw pulleys and staple pulleys.
Whitman et al. (US Patent Publ. No. 2012/0181322) disclose a surgical instrument including an oscillating actuator.
Mastri et al. (US Patent No. 5,762,256) disclose a surgical stapler comprising a handle assembly including a ratchet drive (fig. 10).
Nishizawa et al. (US Patent No. 2004/0199147) disclose a cable driven manipulator.
Knodel (US Patent Publ. No. 2016/0166249) disclose a surgical stapler comprising a ratchet driven sled (fig. 8A).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Linda J. Hodge whose telephone number is (571)272-0571. The examiner can normally be reached Monday-Friday 8:00-5:00.
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/LINDA J. HODGE/Examiner, Art Unit 3731