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 .
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.
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.
(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.
Claims 1-2, 4-6, 9-16 and 18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Bisch et al (US 5,997,528).
Regarding independent claim 1, Bisch discloses a modular surgical system (Fig. 1: 1), comprising:
a cart (21) including a plurality of shelves (see shelves in Fig. 1);
a backplane (back portion of system 1; see Fig. 1 and 2);
a display (5) operably positionable on the cart (Fig. 1; Col. 13, Line 40-41), wherein the display comprises an electrical connector configured to electrically couple to the backplane based on the display being operably positioned on the cart (Col. 16, Lines 8-40 discuss the connection between the display 5 and the backplane of the system; See Fig. 1, 2, and 19);
a generator module (7; Col. 7, Line 3-6 refer to the module 7 controlling microsurgical instruments, interpreted as a generator module as power provided to instruments) operably positionable on the cart (see Fig. 1), wherein the generator module comprises:
an electrical connector (127) configured to electrically couple to the backplane (121; Col. 8, Line 19-22 refer to the connectors 127 as providing power and data communication) based on the generator module (Fig. 5) being operably positioned on the cart (Fig. 1); and
a plurality of energy ports (Fig. 1, 2, 12 display energy ports on modules 13 for connecting to the surgical instrument), wherein the generator module is configured to provide electrosurgical energy to a surgical instrument via the plurality of energy ports (Col. 8, Line 60 – Col. 9, Line 17; Col. 10, Lines 16-30); and
a master module (3) operably positionable on the cart (see Fig. 1), wherein the master module comprises an electrical connector (233) configured to electrically couple to the backplane based on the master module (Fig. 2 displays 233 connected to backplane of 3) being operably positioned on the cart (Fig. 1), and wherein the master module is configured to control the display and the generator module via the backplane (Fig. 1-2; Col. 7, Line 20-25, 45-57; Col. 14, Line 60-Col. 15 Line 15 describe the master module 3 controlling the display 5 and the generator module 7).
Regarding claim 2, Bisch further discloses wherein the master module is configured to display data associated with the generator module on the display (Col. 14, Line 60-Col. 15 Line 15).
Regarding claim 4, Bisch further discloses wherein the generator module (7) is configured to receive power signals via the backplane (Col. 8, Line 19-22).
Regarding claim 5, Bisch further discloses wherein the generator module is configured to receive data signals via the backplane (Col. 8, Line 19-22).
Regarding claim 6, Bisch further discloses a surgical module (13) operably positionable on the cart (Fig. 1), wherein the surgical module comprises an electrical connector (171) configured to electrically couple to the backplane based on the surgical module being operably positioned on the cart (Fig. 1, 5, 6; Col. 8, Lines 19-22; Col 9, Lines 9-11 discuss connector 127 of the backplane providing power/data communication to the electrical connect 171 of the surgical module 13), and wherein the master module is configured to control the surgical module via the backplane (see col. 13, lines 44-63).
Regarding claim 9, Bisch further discloses wherein the cart comprises wheels (see caster wheels 35, Fig. 1).
Regarding claims 10-16 and 18, Bisch discloses the limitations of these claims under the same citations and rationale provided in the rejections of claims 1-2, 4-6 and 9 above, the frame of claim 10 comprising the housings of each of the corresponding elements identified in the previous rejections above.
Claim Rejections - 35 USC § 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 3 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Bisch in view of Ellman et al (US 7,094,231).
Regarding dependent claims 3 and 17, Bisch further discloses wherein the plurality of energy ports comprises: a bipolar port, wherein the generator module is configured to provide bipolar energy through the bipolar port (Col. 17, Line 11-18 describe the energy port of one of module 13 providing bipolar energy to one of instrument 19); and an ultrasonic port, wherein the generator module is configured to provide ultrasonic energy through the ultrasonic port (Col. 17, Line 11-18 describe the energy port of one of module 13 providing ultrasonic energy to one of instrument 19). However, Bisch does not explicitly disclose wherein the plurality of energy ports comprises: a monopolar port, wherein the generator module is configured to provide monopolar energy through the monopolar port.
Ellman discloses an electrosurgical system (Fig. 1) comprising a generator module (12/14) comprising a plurality of energy ports (50, 52). The energy ports include a bipolar port (50) as well as a monopolar port (52) for providing monopolar energy (Col. 4, Line 16-21). Therefore, it would have been obvious to one or ordinary skill in the art before the effective filing date to have modified the plurality of energy ports of Bisch to incorporate wherein the plurality of energy ports comprises: a bipolar port, wherein the generator module is configured to provide bipolar energy through the bipolar port of Ellman. This configuration provides the benefit of independent control of different modes of operation based on the desired surgical effect (Col. 3, Lines 16-19), thereby increasing the versatility of the system.
Claims 7-8 and 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over Bisch in view of El-Galley et al (US 2011/0125149).
Regarding claims 7 and 8, Bisch discloses the limitations of claim 6, however fails to disclose wherein the surgical module comprises a smoke evacuator, or a insufflator.
El-Galley discloses a modular surgical cart (Fig. 18-19) comprising a surgical modules 920-20’’), a generator module (12), and a master module (19), wherein the surgical modules comprise a smoke evacuator, or an insufflator (400; [0164]-[0165]). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date to have modified the cart of Bisch to incorporate the surgical modules of a smoke evacuator and an insufflator in light of El-Galley. This configuration provides the benefit of integrating multiple essential surgical devices into the central control device, thereby improving the ease of use and increased functionality of the device (see El-Galley [0164]-[0165]).
Regarding claims 19 and 20, Bisch in view of El-Galley teaches the limitations of these claims under the same citations and rationale as that relied upon in the rejection of claims 7 and 8 above.
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 1-8 and 10-20 are rejected on the grounds of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 12,318,152. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of U.S. Patent No. 12,318,152 anticipate the claims of the application. Accordingly, the application claims are not patentably distinct from the patent claims. Here, the more specific patent claims encompass the broader application claims. 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 narrow invention, applicant may not obtain a second patent with a claim for the generic or broader invention without first submitting an appropriate terminal disclaimer.
Claim 9 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 12,318,152 in view of Bisch et al (US 5,997,528). Claims 1-19 of U.S. Patent No. 12,318,152 anticipate the limtations of claim 1, however claims 1-19 of U.S. Patent No. 12,318,152 fail to further define wherein the cart comprises wheels. Bisch teaches a surgical cart, wherein the cart comprises wheels (see caster wheels 35, Fig. 1), therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified claims 1-19 of U.S. Patent No. 12,318,152 to further define that the cart comprises wheels in light of Bisch, the motivation being to provide the additional advantage of making it easier to move the surgical cart around the surgical operation room.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SEAN W COLLINS whose telephone number is (408)918-7607. The examiner can normally be reached M-F 9:00 AM-5:00 PM ET.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joanne Rodden can be reached on 303-297-4276. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/SEAN W COLLINS/Primary Examiner, Art Unit 3794
Prosecution Insights