DETAILED ACTION
In the preliminary amendment filed 9/29/25, Applicant has cancelled claims 1-20 and added new claims 21-28. Currently, claims 21-28 are pending.
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 .
Specification
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided.
The abstract of the disclosure is objected to because it includes legal phraseology (i.e. “comprising” in line 4). A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
Drawings
The drawings are objected to as follows:
Color photographs and color drawings are not accepted in utility applications unless a petition filed under 37 CFR 1.84(a)(2) is granted. Any such petition must be accompanied by the appropriate fee set forth in 37 CFR 1.17(h), one set of color drawings or color photographs, as appropriate, if submitted via the USPTO patent electronic filing system or three sets of color drawings or color photographs, as appropriate, if not submitted via the via USPTO patent electronic filing system, and, unless already present, an amendment to include the following language as the first paragraph of the brief description of the drawings section of the specification: The patent or application file contains at least one drawing executed in color. Copies of this patent or patent application publication with color drawing(s) will be provided by the Office upon request and payment of the necessary fee. Color photographs will be accepted if the conditions for accepting color drawings and black and white photographs have been satisfied. See 37 CFR 1.84(b)(2).
The drawings are objected to because they include photographs of the claimed invention which are capable of illustration by other medium such as ink drawings. Under 37 CFR 1.84(B)(1), “Photographs, including photocopies of photographs, are not ordinarily permitted in utility and design patent applications. The Office will accept photographs in utility and design patent applications, however, if photographs are the only practicable medium for illustrating the claimed invention. For example, photographs or photomicrographs of: electrophoresis gels, blots (e.g., immunological, western, Southern, and northern), autoradiographs, cell cultures (stained and unstained), histological tissue cross sections (stained and unstained), animals, plants, in vivo imaging, thin layer chromatography plates, crystalline structures, and, in a design patent application, ornamental effects, are acceptable. If the subject matter of the application admits of illustration by a drawing, the examiner may require a drawing in place of the photograph. The photographs must be of sufficient quality so that all details in the photographs are reproducible in the printed patent”. In the present case, there is no evidence to show that photographs are the only practicable medium for illustrating the claimed invention, and, therefore, the drawings have been objected to and require revision and/or replacement.
The drawings are objected to as failing to comply with 37 CFR 1.84(p) because they include written descriptions of the figures when only reference characters, sheet numbers and/or view numbers are permitted (see i.e. fig 5B). Appropriate revision is required.
The drawings are objected to under 37 CFR 1.84(j). The scale to which a drawing is made must be large enough to show the mechanism without crowding when the drawing is reduced in size to two-thirds in reproduction. It is difficult to view the details of figure 4 due to the small size of the font used for numerical values on the left side and bottom of the figure. Therefore, it is advised that the scale or font size be increased for improved clarity. No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Objections
Claims 23 and 27 are objected to because of the following informalities: in claim 23 line 3: “and handle” should be “and a handle”; in claim 27 line 1: “surgical apparatus” should be “A surgical apparatus”. Appropriate correction is required.
Double Patenting
NON-STATUTORY 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 §§ 706.02(l)(1) - 706.02(l)(3) 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 21-28 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4-5, 10-11, 20, 25 and 26 of U.S. Patent No. 12350003 (hereinafter “the ‘003 patent”).
Although the claims at issue are not identical, they are not patentably distinct from each other because the application claims are a broader recitation of the invention than that of the patented application. Specifically, claim 21 of the present application and claim 1 of the ‘003 patent differ in that the patented claims include more elements than the claims in the present application and, therefore, are more narrow and specific. Thus, claim 1 of the ‘003 Patent is in effect a “species” of the broader, “generic” invention recited in claim 21 of the present application. It has been held that a generic invention is anticipated by the species. See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Thus, claim 21 of the present application is anticipated by claim 1 of the ‘003 patent and, therefore, is not patentably distinct from claim 1 of the ‘003 patent.
All of the limitations of claim 22 can be found in claim 4 of the ‘003 Patent; All of the limitations of claim 23 can be found in claim 5 of the ‘003 Patent; All of the limitations of claim 24 can be found in claim 10 of the ‘003 Patent; All of the limitations of claim 25 can be found in claim 11 of the ‘003 Patent; All of the limitations of claim 26 can be found in claim 20 of the ‘003 Patent; All of the limitations of claim 27 can be found in claim 25 of the ‘003 Patent; All of the limitations of claim 28 can be found in claim 26 of the ‘003 Patent.
Allowable Subject Matter
Claims 21-28 are free of art but are still subject to the objections and rejections provided above.
The following is a statement of reasons for the indication of allowable subject matter: The subject matter of independent claims 21, 26, 27 and 28 could either not be found or was not suggested in the prior art of record.
With respect to claim 21, the subject matter not found was a surgical drape comprising a thin-walled flexible tube having proximal and distal tube ends wherein the distal tube end includes a distal aperture that is smaller than a proximal opening at the proximal tube end and larger than a width of an extension of a surgical device, the distal aperture being sized to allow insertion therethrough of the extension without requiring contact therebetween, and to prevent passage therethrough of a non-extended portion of the surgical device without stretching, and wherein the distal aperture is radially offset from the central axis of the thin-walled flexible tube, in combination with the other elements in the claims.
The closest prior art that is herein made of record is Capote, JR (US 2002/0151848), which teaches a surgical drape as claimed and, specifically, teaches in the embodiment shown in figs 1, 2A-B and 3, that the tip 42 at end 40 is perforated around a circumference of the second end to remove the tip by tearing to allow an instrument to extend outside the cover 20 at end 40 (para [0038]). Thus, the distal aperture on the device of Capote is larger than a width of the instrument and sized to allow insertion therethrough of the instrument. Capote also discloses, however, that a removable strip of adhesive tape 46 is affixed to the second end 40 to “secure or seal the second end 40 after an instrument is positioned within the second opening” (para [0038]). Thus, the distal aperture is not sized to prevent passage therethrough of the non-extended portion of the surgical device without stretching because without tape 46, the second end 40 would not be secured to the instrument and, thus, would not be capable of preventing further passage of the instrument through the aperture at end 40. Therefore, for at least these reasons, the subject matter of independent claim 21 could either not be found or was not suggested in the prior art of record.
Claims 22-25 depend directly or indirectly from claim 21 and thus contain the same allowable limitations.
Independent claims 26 and 27 include all the limitations of the drape of claim 21 and, thus, contain the same allowable limitations.
Independent claim 28 includes all the limitations of the apparatus of claim 27 and, thus, contains the same allowable limitations.
As allowable subject matter has been indicated, applicant's reply must either comply with all formal requirements or specifically traverse each requirement not complied with. See 37 CFR 1.111(b) and MPEP § 707.07(a).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CAITLIN CARREIRO whose telephone number is (571)270-7234. The examiner can normally be reached M-F 7:30am-4pm.
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, Rachael Bredefeld can be reached at 571-270-5237. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CAITLIN A CARREIRO/Primary Examiner, Art Unit 3786