DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
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 and 8 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 9113853. Although the claims at issue are not identical, they are not patentably distinct from each other because the difference between the application claims and the patent claims lies in the fact that the patent claims include more elements and are thus much specific. Thus the invention of the patent claims are in effect a “species” of the “generic” invention of the application claims. It has been held that the generic invention is “anticipated” by the “species”. See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Since the application claims are anticipated by the patent claims, they are not patentably distinct from the patent claims.
Claim Rejections - 35 USC § 103
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1-14 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Watanabe (U.S. Patent No. 4747394) in view of Furnish (U.S. Patent No. 5788630).
Watanabe discloses a tissue retractor, comprising: first and second elongated racks (10, 12) positioned in parallel to each other and dimensioned to translate linearly in opposite directions (Figure 1), each rack having a toothed side (Figure 1); a driver body (18) including a rack housing having a pair of parallel channels respectively (this can be construed from Figure 1 and Column 2, lines 17-20) configured to receive and maintain the first and second racks in parallel to each other; a gear system (22) engaged with the toothed sides of the first and second racks; a first arm (14) extending perpendicularly from the first rack; a first retractor blade (24) extending downwardly from the first arm; a second arm (16) extending perpendicularly from the second rack; a second retractor blade (26) extending downwardly from the second arm, wherein translation of the first and second racks in opposite directions causes the first and second arms to move away from each other which in turn causes the first and second retractor blades to move apart to retract the tissue of a patient to create a working channel (Figure 1). Watanabe fails to disclose that the retractor blades are generally curved. It would have been an obvious matter of design choice to one skilled in the art to construct the retractor blades of Watanabe with a generally curved shaped, since applicant has not disclosed that such solve any stated problem or is anything more than one of numerous shapes or configurations a person ordinary skill in the art would find obvious for the purpose of providing a retractor blade. In re Dailey and Eilers, 149 USPQ 47 (1966).
Watanabe further fails to disclose a pawl switchable between a locked position for prohibiting translation of the first rack and an unlocked position. Furnish teaches a retractor with a pawl (80) that selectively engages the track so the blades can move freely along the rack or be held at a desired separation distance (abstract). It would have been obvious to one skilled in the art to construct the device of Watanabe with a pawl in view of Furnish to transition the arms from a locked position to a position where the arms can travel freely.
Regarding claim 2, Furnish further teaches that the pawl includes a wedge (82) configured to engage the teeth of the first rack to prevent translation of the first rack when the pawl is in a locked position.
Regarding claim 5, Watanabe discloses that the first and second racks are generally rectangular elongated members (Figure 1).
Claim 8 mirrors the limitations of claim 1 and further including the limitation that the first and second retractor blades are the only blades. Watanabe in view of Furnish discloses the limitations of claim 8 as seen above and further disclseos that the two retractor blades are the only blades (Figure 1).
Regarding claim 9, furnish further teaches the pawl includes a wedge (82) configured to engage the teeth of the first rack to prevent translation of the first rack when the pawl is in a locked position.
Regarding claim 12, the first and second racks are generally rectangular elongated members (Figure 1).
Regarding claims 3, 4, 6, 7 and 10, 11, 13, 14. Watanabe can be considered to have an articulating arm attachment on the driver body (18). Articulating arm attachment bears no inherent structure, thus it the upper edge of the driver body is the articulating arm attachment since it could be clamped by a clamp of an articulating arm.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREW YANG whose telephone number is (571)272-3472. The examiner can normally be reached 9:00 - 9:00 M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Kevin Truong can be reached at 571-272-4705. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANDREW YANG/Primary Examiner, Art Unit 3775
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