DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . This action is responsive to the set of claims received on 09 July 2025. Claims 1-20 are currently pending.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged.
Drawings
The drawings received on 09 July 2025 are accepted by the examiner.
Claim Objections
Claim 1 is objected to because of the following informalities:
In line 11, it appears that the comma before the semicolon should be removed.
In line 12, it appears that the phrase “a lower segment connected the inner ring” should read “a lower segment connected to the inner ring.”
In line 21, it appears that the phrase “and is disposed between” should read “and disposed between.”
Claim 12 is objected to because of the following informality:
In line 25, it appears that the phrase “and is disposed between” should read “and disposed between.”
Claim 14 is objected to because of the following informality:
In lines 1-2, it appears that the phrase “a proximal portion arranged and a distal portion” should read “a proximal portion and a distal portion.”
Claim 16 is objected to because of the following informality:
In lines 1-2, it appears that the phrase “wherein the retainer is being arranged to be” should read “wherein the retainer is arranged to be.”
Appropriate correction is required.
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,369,898 (see Claim Mapping Table below). 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.
Claims 1-20 disclose the following:
Claim Mapping Table
Current Application – 19/264,693
U.S. Patent No. 12,369,898
Claim 1: a circumferential retractor system comprising: a circumferential retractor comprising: an outer ring having an outer diameter and arranged to be placed outside of a body cavity ;an inner ring having an outer diameter and arranged to be placed inside of the body cavity; and a sheath comprising: an upper segment connected to the outer ring, the upper segment having a cylindrical shape with a proximal end having an inner diameter matching the outer diameter of the outer ring and a distal end having an inner diameter matching the outer diameter of the outer ring; and a lower segment connected to the inner ring, the lower segment having a frustoconical shape with a proximal end having an inner diameter matching the outer diameter of the outer ring and a distal end having an inner diameter smaller than the outer diameter of the inner ring and smaller than the outer diameter of the outer ring, the sheath delimiting an access channel extending from the outer ring to the inner ring and the upper and lower segments being formed as a monolithic structure; and a monolithic hourglass shaped retainer, the retainer being positioned outside of the access channel, arranged to surround and be in contact with a distal portion of the lower segment of the sheath, and disposed between the upper segment and the inner ring, the sheath being arranged to enlarge a central opening of the retainer.
Claim 1: a circumferential retractor system comprising: a circumferential retractor comprising: an outer ring having an outer diameter and arranged to be placed outside of a body cavity; an inner ring having an outer diameter and arranged to be placed inside of the body cavity; and a sheath comprising: an upper segment connected to the outer ring, the upper segment having a cylindrical shape with a proximal end having an inner diameter matching the outer diameter of the outer ring and a distal end having an inner diameter matching the outer diameter of the outer ring, the outer ring being inseparable from the upper segment; and a lower segment connected to the inner ring, the lower segment having a frustoconical shape with a proximal end having an inner diameter matching the outer diameter of the outer ring and a distal end having an inner diameter smaller than the outer diameter of the inner ring and smaller than the outer diameter of the outer ring, the sheath delimiting an access channel extending from the outer ring to the inner ring and the upper and lower segments being formed as a monolithic structure and having differing lengths; and a monolithic hourglass shaped retainer, the retainer being positioned outside of the access channel, arranged to surround and be in contact with a distal portion of the lower segment of the sheath, and disposed between the upper segment and the inner ring, the sheath being arranged to enlarge a central opening of the retainer and straighten a middle portion of the hourglass shape of the retainer.
Claim 2: the system of claim 1, wherein the retainer is arranged to surround the lower segment of the sheath, and wherein an outer surface of the lower segment of the sheath is disposed between an inner surface of the lower segment and an inner surface of the retainer.
Claim 2: the system of claim 1 wherein the retainer is arranged to surround only the lower segment of the sheath, and wherein an outer surface of the lower segment of the sheath is disposed between an inner surface of the lower segment and an inner surface of the retainer.
Claim 3: the system of claim 2, wherein a length of the upper segment is adjustable and the lower segment connected to the inner ring is inseparable from the inner ring.
Claim 3: the system of claim 2 wherein the proximal end of the upper segment of the sheath is arranged to be placed outside the body cavity and the distal end of the upper segment of the sheath is arranged to be placed inside the body cavity and a length of the upper segment is adjustable, a length of the lower segment is not adjustable, and the lower segment connected to the inner ring is not separable from the inner ring.
Claim 4: the system of claim 3, wherein the retainer has a length less than an overall length of the sheath, is compressible, and has a non-adjustable length, and the lower segment of the sheath conforming to the hourglass shape of the retainer and being arranged to be placed between the retainer and inserted instruments.
Claim 4: the system of claim 3 wherein the retainer has a length less than an overall length of the sheath, is compressible, and has a non-adjustable length, the retainer being arranged to be placed between the sheath and tissue, and the lower segment of the sheath conforming to the hourglass shape of the retainer and being arranged to be placed between the retainer and inserted instruments.
Claim 5: the system of claim 3, wherein the retainer is more flexible than the outer ring and the inner ring and is less flexible than the sheath, the retainer having an upper inner diameter and a middle inner diameter, the upper inner diameter of the retainer being smaller than an inner diameter of the outer ring; and the middle inner diameter of the retainer being smaller than the upper inner diameter of the retainer and being smaller than an inner diameter of the inner ring.
Claim 5: the system of claim 4 wherein the retainer is more flexible than the outer ring and the inner ring and is less flexible than the sheath, the retainer having an upper inner diameter and a middle inner diameter, the upper inner diameter of the retainer being smaller than an inner diameter of the outer ring; and the middle inner diameter of the retainer being smaller than the upper inner diameter of the retainer and being smaller than an inner diameter of the inner ring.
Claim 6: the system of claim 5, wherein the retainer is temporarily deformable, the retainer being deformable from the hourglass shape and biased to return to the hourglass shape.
Claim 6: the system of claim 5 wherein the retainer is temporarily deformable by a user, the retainer being deformable from the hourglass shape and biased to return to the hourglass shape.
Claim 7: the system of claim 5, wherein the outer ring comprises a flexible ring having a lumen and a curved rod disposed within the lumen of the flexible ring, the curved rod being more rigid than the flexible ring and wherein the outer ring is rotatable about itself.
Claim 7: the system of claim 6 wherein the outer ring comprises a flexible ring having a lumen and a curved rod disposed within the lumen of the flexible ring, the curved rod being more rigid than the flexible ring and wherein the outer ring is rotatable about itself.
Claim 8: the system of claim 7, wherein a length of the upper segment is less than half an overall length of the sheath and a length of the lower segment is greater than half the overall length of the sheath; wherein the lower segment has an upper inner diameter proximal to the upper segment and a lower inner diameter proximal to the inner ring, the lower inner diameter of the lower segment being smaller than the upper inner diameter of the lower segment; and wherein the outer diameter of the outer ring is greater than the outer diameter of the inner ring.
Claim 8: the system of claim 7 wherein a length of the lower segment is longer than a length of the upper segment, the length of the upper segment being less than half an overall length of the sheath and the length of the lower segment being greater than half the overall length of the sheath; wherein the lower segment has an upper inner diameter proximal to the upper segment and a lower inner diameter proximal to the inner ring, the lower inner diameter of the lower segment being smaller than the upper inner diameter of the lower segment; and wherein the outer diameter of the outer ring is greater than the outer diameter of the inner ring.
Claim 9: the system of claim 8, wherein the retainer has a distal section having a distal lip at a distal end of the retainer, and a proximal section having a proximal lip at a proximal end of the retainer.
Claim 9: the system of claim 8 wherein the retainer has a distal section having a distal lip at a distal end of the retainer to facilitate securement of the distal section to the inside of the body cavity, and a proximal section having a proximal lip at a proximal end of the retainer to facilitate securement of the proximal section to the outside of the body cavity.
Claim 10: the system of claim 9, wherein the distal section of the retainer has an outer diameter greater than the outer diameter of the inner ring; and wherein the proximal section of the retainer has an inner diameter greater than the outer diameter of the inner ring.
Claim 10: the system of claim 9 wherein the distal section of the retainer has an outer diameter greater than the outer diameter of the inner ring; wherein the proximal section of the retainer has an inner diameter greater than the outer diameter of the inner ring; and wherein an inner diameter of the retainer between the proximal section and the distal section of the retainer is smaller than the inner diameter of the inner ring.
Claim 11: the system of claim 10 further comprising a sealing cap arranged to removably connect to the outer ring and portions of the upper segment of the sheath, the sealing cap sealing the access channel and a connection between the sealing cap, the outer ring, and a portion of the upper segment.
Claim 11: the system of claim 10 further comprising a sealing cap arranged to connect to the outer ring and portions of the upper segment of the sheath, the sealing cap sealing the access channel and a connection between the sealing cap, the outer ring, and a portion of the upper segment.
Claim 12: a circumferential retractor system comprising: a circumferential retractor comprising: an outer ring having an outer diameter and arranged to be placed outside of a body cavity; an inner ring having an outer diameter and arranged to be placed inside of the body cavity; and a sheath comprising: an upper segment connected to the outer ring, the upper segment having a cylindrical shape with a proximal end having an outer diameter equal or greater than an inner diameter of the outer ring but less than or equal to the outer diameter of the outer ring and a distal end having an outer diameter equal to the outer diameter of the proximal end of the upper segment; and a lower segment connected to and unable to separate from the inner ring, the lower segment having a frustoconical shape with a proximal end having an outer diameter equal to the outer diameter of the proximal end of the upper segment and a distal end having an inner diameter equal to or smaller than the outer diameter of the inner ring and smaller than the outer diameter of the outer ring, the sheath having a lumen extending from the upper segment through the lower segment and delimiting an access channel extending through the lumen from the outer ring to the inner ring, and the upper and lower segments being formed as a monolithic structure and having differing lengths from each other; and a monolithic hourglass shaped retainer, the retainer being positioned outside of the access channel and the lumen of the sheath, arranged to surround and be in contact with the lower segment of the sheath, and disposed between the upper segment and the inner ring; and wherein an outer surface of the lower segment of the sheath is disposed between an inner surface of the lower segment and an inner surface of the retainer, the inner ring being arranged to be inserted through a central opening of the retainer and positioned near a distal end of the retainer.
Claim 12: a circumferential retractor system comprising: a circumferential retractor comprising: an outer ring having an outer diameter and arranged to be placed outside of a body cavity; an inner ring having an outer diameter and arranged to be placed inside of the body cavity; and a sheath comprising: an upper segment connected to the outer ring, the upper segment having a cylindrical shape with a proximal end having an outer diameter equal or greater than an inner diameter of the outer ring but less than or equal to the outer diameter of the outer ring and a distal end having an outer diameter equal to the outer diameter of the proximal end of the upper segment, the outer ring being unable to separate from the upper segment; and a lower segment connected to and unable to separate from the inner ring, the lower segment having a frustoconical shape with a proximal end having an outer diameter equal to the outer diameter of the proximal end of the upper segment and a distal end having an inner diameter equal to or smaller than the outer diameter of the inner ring and smaller than the outer diameter of the outer ring, the sheath having a lumen extending from the upper segment through the lower segment and delimiting an access channel extending through the lumen from the outer ring to the inner ring, and the upper and lower segments being formed as a monolithic structure and having differing lengths from each other; and a monolithic hourglass shaped retainer, the retainer being positioned outside of the access channel and the lumen of the sheath, arranged to surround and be in contact with the lower segment of the sheath, and disposed between the upper segment and the inner ring; and wherein an outer surface of the lower segment of the sheath is disposed between an inner surface of the lower segment and an inner surface of the retainer, the inner ring being arranged to be inserted through a central opening of the retainer and positioned near a distal end of the retainer and the sheath being arranged to enlarge the central opening of the retainer.
Claim 13: the system of claim 12, wherein the retainer has a non-adjustable length greater than a length of the upper segment and less than an overall length of the sheath; and wherein the retainer is deformable into a shape different from its hourglass shape, and biased to return to its hourglass shape.
Claim 13: the system of claim 12 wherein the retainer has a non-adjustable length greater than a length of the upper segment and less than an overall length of the sheath; and wherein the retainer is deformable by a user into a shape different from its hourglass shape, biased to return to its hourglass shape, and arranged to be placed between the sheath and tissue.
Claim 14: the system of claim 13, wherein the upper segment of the sheath has a proximal portion and a distal portion; and wherein the inner ring is a distalmost portion of the circumferential retractor.
Claim 14: the system of claim 13 wherein the upper segment of the sheath has a proximal portion arranged to be placed outside a body wall and a distal portion arranged to be placed inside the body wall; and wherein the inner ring is deformable, the outer ring is not deformable and the inner ring is a distalmost portion of the circumferential retractor.
Claim 15: the system of claim 14 further comprising a sealing cap arranged to connect to the outer ring and proximal portions of the upper segment of the sheath, a tether attached to the inner ring, the tether having a length greater than an overall length of the sheath and arranged to move the inner ring away from a distal end of the retainer towards the central opening of the retainer as the tether is moved proximally.
Claim 15: the system of claim 14 further comprising a sealing cap arranged to connect to the outer ring and proximal portions of the upper segment of the sheath, a tether attached to the inner ring, and a tether tag attached to the tether, the tether having a length greater than an overall length of the sheath and arranged to move the inner ring away from a distal end of the retainer towards the central opening of the retainer as the tether is moved proximally.
Claim 16: the system of claim 15 further comprising a containment bag and wherein the retainer is arranged to be positioned on the containment bag, and the lower segment of the circumferential retractor is arranged to be positioned on the retainer.
Claim 16: the system of claim 15 further comprising a containment bag having a distal portion arranged to be inserted through the body wall and positioned within the body cavity, the retainer being arranged to be inserted through the body wall and positioned on top of the containment bag, and the lower segment of the circumferential retractor arranged to be inserted through the body wall and positioned on top of the retainer.
Claim 17: the system of claim 15 further comprising a second circumferential retractor and wherein the retainer is arranged to be positioned on the second circumferential retractor, and the lower segment of the circumferential retractor is arranged to be positioned on the retainer.
Claim 20: the system of claim 15 further comprising a second circumferential retractor having a distal portion arranged to be inserted through the body wall and positioned within the body cavity, the retainer being arranged to be inserted through the body wall and positioned on top of the second circumferential retractor, and the lower segment of the circumferential retractor arranged to be inserted through the body wall and positioned on top of the retainer.
Claim 18: the system of claim 16, wherein the retainer is more rigid than the upper segment and the lower segment of the sheath, the upper segment of the sheath has an adjustable length, the retainer has a fixed length, and the sheath is arranged to secure the retainer between the lower segment of the sheath and the inner ring.
Claim 17: the system of claim 16 wherein the retainer is more rigid than the upper segment and the lower segment of the sheath, the upper segment of the sheath having an adjustable length, the retainer having a fixed length, and the lower segment having a fixed and non-adjustable length, the sheath being arranged to secure the retainer between the lower segment of the sheath and the inner ring.
Claim 19: the system of claim 18, wherein the outer ring comprises a flexible ring having a lumen and a curved rod disposed within the lumen of the flexible ring, and wherein the outer ring is rotatable about itself.
Claim 18: the system of claim 17 wherein the outer ring comprises a flexible ring having a lumen and a curved rod disposed within the lumen of the flexible ring, the curved rod being more rigid than the flexible ring and the inner ring and wherein the outer ring is rotatable about itself.
Claim 20: the system of claim 18, wherein the retainer has a distal section having a distal lip at the distal end of the retainer to facilitate securement of the distal section of the retainer to the inner ring.
Claim 19: the system of claim 17 wherein the retainer has a distal section having a distal lip at the distal end of the retainer to facilitate securement of the distal section of the retainer to the inside of the body cavity and the inner ring; and the retainer has a proximal section having a proximal lip at a proximal end of the retainer to facilitate securement of the proximal section to the outside of the body cavity.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LARRY E WAGGLE, JR whose telephone number is (571)270-7110. The examiner can normally be reached TEAP: Monday - Friday (7:45am - 3:45pm).
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/LARRY E WAGGLE, JR/Primary Examiner, Art Unit 3775
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