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 .
Information Disclosure Statement
Receipt is acknowledged of Information Disclosure Statements (IDS), filed 08 October 2025 and 04 February 2026, 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.
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required:
The specification lacks antecedent basis for the claim terminology “the distance from the lower surface of the staple pusher to an inner surface of the recess is less than 60% of a distance between the upper and lower surfaces of the staple pusher” of claims 4, 10, and 19. It is recommended that Applicant amend paragraph [0060] of the specification in the same manner as in parent application 18/406,333 (i.e., amend the last sentence of [0060] to read “Thus, the distance from the lower surface of the staple pusher to an inner surface of the recess is less than 60% of a distance between the upper and lower surfaces of the staple pusher. In one embodiment, thus, this ratio is about 0.53 to 1, i.e., the distance from the lower surface of the staple pusher to an inner surface of the recess is about 53% of a distance between the upper and lower surfaces of the staple pusher.”).
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 6-8 and 11 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 6 recites the limitation "the staple pushers" in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim 6 recites the limitation "the elongate shaft" in line 3. There is insufficient antecedent basis for this limitation in the claim.
Claim 7 recites the limitation "the drive member" in lines 2 and 3. There is insufficient antecedent basis for this limitation in the claim.
Claim 8 depends from claim 6 and is likewise rejected.
Claim 11 is ambiguous as it is unclear whether the phrase “the recess forms a pocket in the staple pusher body” refers to the same pocket as the phrase “the recess forms a pocket in the staple pusher” in claim 9, on which claim 11 depends.
Claim 11 is ambiguous as the phrase “the backspan of the staple being configured to reside entirely within the pocket and below the upper surface of the staple pusher” is redundant. Claim 9, on which claim 11 depends, recites “the backspan of the staple is configured to reside entirely within the pocket and below the upper surface of the staple pusher” It is not clear what applicant is attempting to claim.
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, 6, 8-14, and 18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 5, 7, 1, 13, 2, 4, 6, and 14 of U.S. Patent No. 12,349,905. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 5, 7, 1, 13, 2, 4, 6, and 14 of the patent “anticipate” application claims 1, 6, 8-14, and 18. It is apparent that the application claims differ from the patent claims in that the patent claims are more specific.
Here, patent claim 5 require elements A (end effector comprising first and second jaws), B (a staple cartridge), C (staple pusher having upper and lower surfaces and a recess forming a pocket, the pocket comprising first and second curved outer surfaces longitudinally spaced and a substantially planar surface extending entirely between the curved outer surfaces), D (a staple wherein the backspan of the staple is configured to reside entirely within the pocket and below the upper surface of the staple pusher), E (an elongate shaft), and F (a drive member), while application claim 1 requires only elements A, B, C (staple pusher having upper and lower surfaces and a recess forming a pocket, the pocket comprising first and second curved outer surfaces longitudinally spaced and a substantially planar surface extending between the curved outer surfaces), D, and E. Any remaining differences are only differences in verbiage without any difference in meaning. Application claim 1 is not patentably distinct from patent claim 5 because the more specific patent claim anticipates the broader application claim.
Here, patent claim 1 require elements A (end effector comprising first and second jaws), B (a staple cartridge), C (staple pusher having upper and lower surfaces and a recess forming a pocket, the pocket comprising first and second curved outer surfaces longitudinally spaced and a substantially planar surface extending entirely between the curved outer surfaces), and D (a staple wherein the backspan of the staple is configured to reside entirely within the pocket and below the upper surface of the staple pusher), while application claim 9 requires only elements B, C (staple pusher having upper and lower surfaces and a recess forming a pocket, the pocket comprising first and second curved outer surfaces longitudinally spaced and a substantially planar surface extending between the curved outer surfaces), and D. Any remaining differences are only differences in verbiage without any difference in meaning. Application claim 9 is not patentably distinct from patent claim 1 because the more specific patent claim anticipates the broader application claim.
Here, patent claim 6 require elements A (end effector comprising first and second jaws), B (a staple cartridge), C (staple pusher having upper and lower surfaces and a recess forming a pocket, the pocket comprising first and second curved outer surfaces longitudinally spaced and a substantially planar surface extending entirely between the curved outer surfaces), D (a staple wherein the backspan of the staple is configured to reside entirely within the pocket and below the upper surface of the staple pusher), E (an elongate shaft), F (a drive member), G (an actuation mechanism), and H (an actuator operatively connected to the actuation mechanism, wherein the actuator includes a control device of a robotic surgical system), while application claim 14 requires only elements A, B, C (staple pusher having upper and lower surfaces and a recess forming a pocket, the pocket comprising first and second curved outer surfaces longitudinally spaced and a substantially planar surface extending between the curved outer surfaces), D, F, G, and H. Any remaining differences are only differences in verbiage without any difference in meaning. Application claim 14 is not patentably distinct from patent claim 6 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.
The application claims and patent claims match up as follows:
Application Claims
Patent Claims
(US Patent No. 12,349,905)
1
5
6
5
8
7
9
1
10
13
11
1
12
2
13
4
14
6
18
14
Claims 15-17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 6 of U.S. Patent No. 12,349,905 in view of Shelton (US Patent Publ. No. 2011/0290851), cited by applicant.
With respect to claim 15, claim 6 of U.S. Patent No. 12,349,905 requires a control device of a robotic surgical system, but fails to require a robotic arm assembly.
Shelton discloses a robotic arm assembly coupled to an actuation mechanism (figs. 97, 99).
It 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 to modify the device of claim 6 of U.S. Patent No. 12,349,905 to include a robotic arm assembly as taught by Shelton, to freely manipulate the end effector during surgery.
With respect to claim 16, claim 6 of U.S. Patent No. 12,349,905 requires a control device of a robotic surgical system, but fails to require a processor.
Shelton discloses a processor configured to transfer motion of the control device to motion of the robotic arm assembly (fig. 96, [0302], [0304], [0305]).
It 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 to modify the device of claim 6 of U.S. Patent No. 12,349,905 to include a processor configured to transfer motion of the control device to motion of the robotic arm assembly as taught by Shelton, to freely manipulate the end effector during surgery.
With respect to claim 17, claim 6 of U.S. Patent No. 12,349,905 requires a shaft and an actuation mechanism, but fails to require a housing on the proximal end of the shaft, wherein the actuation mechanism comprises a motor disposed within the housing and coupled to the robotic arm assembly.
Shelton discloses a housing on the proximal end of the shaft (fig. 97), wherein the actuation mechanism comprises a motor (figs. 97, 98, [0304]).
It 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 to modify the device of claim 6 of U.S. Patent No. 12,349,905 to include a housing on the proximal end of the shaft, wherein the actuation mechanism comprises a motor disposed within the housing and coupled to the robotic arm assembly as taught by Shelton, to protect and operate the end effector during surgery.
Allowable Subject Matter
Claims 2-4, and 19-20 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claim 7 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 an examiner’s statement of reasons for the indication of allowable subject matter:
With respect to claim 2, the prior art fails to disclose or teach the apparatus of claim 1, wherein a transition between each of the first and second legs and the backspan of the staple has a bend radius of 0.015 inches to 0.030 inches.
With respect to claim 3, the prior art fails to disclose or teach the apparatus of claim 1, wherein the first and second curved outer surfaces reside substantially in the recess and below the upper surface of the staple pusher.
With respect to claim 4, the prior art fails to disclose or teach the apparatus of claim 1, wherein the distance from the lower surface of the staple pusher to an inner surface of the recess is less than 60% of a distance between the upper and lower surfaces of the staple pusher.
With respect to claim 5, the prior art fails to disclose or teach the apparatus of claim 1, wherein the staple pusher comprises a support element extending above the recess, wherein the support element comprises a wall at least partially surrounding the recess.
Claim 7 depends from claim 5, and would likewise be allowable.
With respect to claim 19, the prior art fails to disclose or teach the apparatus of claim 14, wherein the distance from the lower surface of the staple pusher to an inner surface of the recess is less than 60% of a distance between the upper and lower surfaces of the staple pusher.
With respect to claim 20, the prior art fails to disclose or teach the apparatus of claim 14, wherein the staple pusher comprises a support element extending above the recess, wherein the support element comprises a wall at least partially surrounding the recess.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Blewett (US Patent No. 5,738,474), cited by applicant, disclose a staple pusher including an upper surface, a lower surface, and a recess, and the upper surface that has curved and planar portions.
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Shelley Self can be reached at (571) 272-4524. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LINDA J. HODGE/Examiner, Art Unit 3731