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 .
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 1-3, 13, 15, 16, & 18-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 6, & 13 of U.S. Patent No. 11,076,862. Although the claims at issue are not identical, they are not patentably distinct from each other because:
Claims
Claims
Claims
19/244,199
1, 13, 15, 16, 18-20
2
3
11,076,862
1
6
13
Claims 2 & 19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 17, 19, & 20 of U.S. Patent No. 12,357,318. Although the claims at issue are not identical, they are not patentably distinct from each other because:
Claims
19/244,199
2, 19
12,357,318
1, 17, 19, 20
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.
Claim 14 is 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 14 recites ‘the engaging surface extends along the longitudinal direction and along the radial direction’ – it is unclear if this was meant to say of the capsule, since the ‘longitudinal direction’ and ‘radial direction’ are both positively introduced in the lines above it, or if it is intended to be a newly defined longitudinal/radial direction associated with the sheath since the engaging surface is part of the sheath element. For the purpose of examination, examiner will read the directions to be associated with the capsule until further clarification is made.
Claim Rejections - 35 USC § 102
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 (i.e., changing from AIA to pre-AIA ) 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.
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.
Claims 1, 9-11, 14, 15, 18, & 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tsuchiya et al. (WO 2018/235402 – English translation relied on in US Pub. No. 2020/0100791 A1).
Regarding claim 1, Tsuchiya et al. disclose a medical instrument, comprising: an arm 114A,B (Figs. 1, 2, 9-12); a capsule 18 (Figs. 1, 2, 9-12) configured to hold the arm 114A,B, the capsule 18 including an engaged surface 44 (best seen in Fig. 11); and a sheath 82 (Figs. 1, 2, 9-12) configured to engage with the capsule 18, the sheath 82 including an engaging surface 90 (Figs. 8 & 11), wherein the engaged surface 44 is configured to receive a rotation force from the engaging surface 90 toward a circumferential direction of the capsule 18 (when members 92A-C are spring engaged with the first surface 44 of capsule 18, the two elements rotate with each other).
Regarding claim 9, Tsuchiya et al. further disclose wherein: the sheath 82 has a first concave structure and a first convex structure (see annotated Fig. 11 below), the capsule 18 has a second concave structure and a second convex structure (see annotated Fig. 11 below), the first concave structure and the second convex structure are configured to be engaged with each other, and the second concave structure and the first convex structure are configured to be engaged with each other (as shown engaged in Fig. 10).
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Regarding claim 10, Tsuchiya et al. further disclose wherein: the first concave structure and the first convex structure are provided at a distal end side of the sheath 82 and distally extend in a longitudinal direction (see annotated Fig. 11 above), and the second concave structure and the second convex structure are provided at a proximal end side of the capsule 18 and proximally extend in a longitudinal direction (see annotated Fig. 11 above).
Regarding claim 11, Tsuchiya et al. further disclose wherein: the engaged surface is provided at an inner circumferential surface of the capsule 18 (Fig. 11), and the engaging surface is provided at an outer circumferential surface of the sheath 82 (Fig. 11).
Regarding claim 14, Tsuchiya et al. further disclose wherein the engaged surface 44 extends along a longitudinal direction of the capsule 18 and along a radial direction of the capsule 18 (groove 44 has a height which is considered to extend in a longitudinal direction of the capsule, and the groove 44 also is circumferential so it is considered to extend along a radial direction), and the engaging surface 90 extends along the longitudinal direction and along the radial direction (see engagement with capsule 18 in Fig. 9). (See 35 USC 112 section above regarding the interpretation of this claim)
Regarding claim 15, Tsuchiya et al. further disclose wherein the engaging surface 90 is configured to transmit a rotational force around a longitudinal axis to the engaged surface of the capsule 18 (when members 92A-C are spring engaged with the first surface 44 of capsule 18, the two elements rotate with each other).
Regarding claim 18, Tsuchiya et al. disclose a medical instrument, comprising: an arm 114A,B (Figs. 1, 2, 9-12); and a capsule 18 (Figs. 1, 2, 9-12) configured to accommodate the arm 114A,B; the capsule 18 including an engaged surface 44 (best seen in Fig. 11), the engaged surface 44 being configured to engage with an engaging surface (NOTE: the engaging surface is not positively recited as part of the claimed invention); and wherein the engaged surface 44 is configured to receive a rotation force from the engaging surface toward a circumferential direction of the capsule 18 (when members 92A-C are spring engaged with the first surface 44 of capsule 18, the two elements rotate with each other).
Regarding claim 20, Tsuchiya et al. further disclose wherein: a part of the arm 114A,B protrudes from the capsule 18, the arm 114A,B and the capsule 18 are configured to be rotatable together about a longitudinal axis of the capsule 18 (as shown in Fig. 11, the arm and capsule are configured to operate as a single unit). With respect to the limitation ‘and the arm is configured to be rotatable relative to an operation wire about the longitudinal axis, and the operation wire is configured to operate the arm’, the ‘operation wire’ is not positively recited as part of the claimed invention. Therefore, a different operation wire could be used with the arm of Tsuchiya et al. that is attached to the arm in such a way that the arm is configured to be rotatable relative to the operation wire. Until the operation wire is positively recited, this will be the interpretation in view of the prior art.
Claims 1, 2, 18, & 19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Zhu (US Pat. No. 9,510,836 B2).
Regarding claim 1, Zhu discloses a medical instrument (Figs. 6, 6A, & 9), comprising: an arm 112 (Figs. 6, 6A, & 9); a capsule 12 (Figs. 6, 6A, & 9) configured to hold the arm 112, the capsule 12 including an engaged surface 117 (Figs. 6, 6A, & 9); and a sheath 312 (Figs. 6, 6A, & 9) configured to engage with the capsule 12, the sheath 312 including an engaging surface 313 (column 6, lines 25-40 - ‘connecting part of connecting rod 313 is disengaged from holes or grooves correspondingly under a certain pull force, so that the connecting head 312 is disengaged from the tightening tube 12’), wherein the engaged surface 117 is configured to receive a rotation force from the engaging surface 313 toward a circumferential direction of the capsule 12 (when engaged, the engaging hook surface of 313 has a circumferentially facing portion that engages with the hole edge, which is also circumferentially facing, that is configured to deliver a rotational force via engagement with the hole; engagement of 313 with 12 is described in column 6, lines 25-40).
Regarding claim 2, Zhu further discloses wherein, in a state in which the sheath 312 is engaged with the capsule 12, the engaged surface faces the engaging surface in the circumferential direction (when engaged, the engaging hook surface of 313 has a circumferentially facing portion that engages with the hole edge, which is also circumferentially facing; engagement of 313 with 12 is described in column 6, lines 25-40).
Regarding claim 18, Zhu discloses a medical instrument, comprising: an arm 112 (Figs. 6, 6A, & 9); and a capsule 12 (Figs. 6, 6A, & 9) configured to accommodate the arm 112; the capsule 12 including an engaged surface 117 (Figs. 6, 6A, & 9), the engaged surface being configured to engage with an engaging surface; and wherein the engaged surface is configured to receive a rotation force from the engaging surface toward a circumferential direction of the capsule 12 (when engaged, the engaging hook surface of 313 has a circumferentially facing portion that engages with the hole edge, which is also circumferentially facing, that is configured to deliver a rotational force via engagement with the hole; engagement of 313 with 12 is described in column 6, lines 25-40).
Regarding claim 19, Zhu further discloses wherein, in a state in which the engaged surface is engaged with the engaging surface, the engaged surface faces a engaging surface in the circumferential direction (when engaged, the engaging hook surface of 313 has a circumferentially facing portion that engages with the hole edge, which is also circumferentially facing; engagement of 313 with 12 is described in column 6, lines 25-40).
Claim Rejections - 35 USC § 103
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 (i.e., changing from AIA to pre-AIA ) 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.
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.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Tsuchiya et al. (WO 2018/235402 – English translation relied on in US Pub. No. 2020/0100791 A1).
Regarding claim 12, Tsuchiya et al. fail to further disclose wherein: the engaged surface is provided at an outer circumferential surface of the capsule, and the engaging surface is provided at an inner circumferential surface of the sheath. Tsuchiya et al. (as discussed in the rejection of claim 11 above) discloses the opposite locations of the engaged/engaging surfaces, however, the parts cooperate with each other in an identical manner/function. It would have been obvious to one having ordinary skill in the art at the time the invention was made to reverse the engaged surface and the engaging surface to be on opposing surfaces of the capsule and sheath, for the purpose of providing the same connection just in a orientation, since it has been held that a mere reversal of the essential working parts of a device involves only routine skill in the art. In re Einstein, 8 USPQ 167.
Allowable Subject Matter
Claims 4-8 & 17 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.
The following is a statement of reasons for the indication of allowable subject matter: the prior art fails to further disclose, teach, or suggest wherein: the capsule includes an inner-groove recessed from an inner surface of the capsule, and each of the plurality of protrusions are disposed in the inner-groove [claim 4]; wherein the plurality of protrusions are dispersed on an inner surface of the capsule [claim 5]; wherein the plurality of protrusions are dispersed on an outer surface of the capsule [claim 6]; wherein: the sheath includes a bushing and a protrusion protruding in a radial direction of the capsule from the bushing, and the protrusion is configured to engage with the capsule [claim 7]; wherein: the capsule includes an inner-groove recessed from an inner surface of the capsule, and the protrusion is configured to engage with the inner-groove to prevent the sheath from removing from the capsule [claim 8]; and wherein the engaging surface is configured to be movable in a radial direction of the capsule [claim 17].
EXAMINER NOTE: Claims 3, 13, & 16 have no prior art rejection but have been rejected under Double Patenting, once the Double Patenting rejection has been overcome, these claims would be allowable over the prior art.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ASHLEY LAUREN FISHBACK whose telephone number is (571)270-7899. The examiner can normally be reached M-F 7:30a-3:30p.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Darwin Erezo can be reached at (571) 272-4695. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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ASHLEY LAUREN FISHBACK
Primary Examiner
Art Unit 3771
/ASHLEY L FISHBACK/Primary Examiner, Art Unit 3771 September 1, 2026
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