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 21 July 2025, 03 October 2025, 04 February 2026, 12 February 2026, and 15 May 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.
Response to Amendment
Receipt is acknowledged of an amendment, filed 02 June 2026, which has been placed of record and entered in the file.
Status of the claims:
Claims 1-13 and 21-25 are pending.
No claims are amended.
Claims 21-25 are new.
Claims 14-20 are canceled.
Specification and Drawings:
Amendments to the specification and drawings have not been submitted in the amendment filed 02 June 2026.
Election/Restrictions
Applicant’s election without traverse of Group II, claims 8-13, in the reply filed on 02 June 2026 is acknowledged.
New claims 21-25 are deemed to be readable on nonelected Group III.
Claims 1-7 and 21-25 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 02 June 2026.
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 11 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 11 is ambiguous as the phrase “identify the switch” is unclear when taken in combination with claim 8, on which claim 11 depends. Claim 8 recites that the controller is configured to “identify the staple cartridge”, while claim 11 recites that the controller is configured to “identify the switch”. It is not clear what applicant is attempting to claim. It appears that claim 11 should be amended to recite “identify the staple cartridge”.
Clarification and/or 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 8-13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 4 and 15 of U.S. Patent No. 12,251,107 in view of Ingmanson et al. (US Patent Publ. No. 2014/0110455).
With respect to claim 8, claims 4 and 15 of U.S. Patent No. 12,251,107 require a staple cartridge, a drive member configured to translate distally, a switch on the staple cartridge, the switch is disposed in a slot and the switch is movable in a lateral direction in the slot, the switch providing a detectable resistance, and the switch is operatively coupled to a controller. Claims 4 and 15 do not require a staple cartridge housing and a first longitudinal slot for receiving the drive member.
Ingmanson et al. disclose in a similar type of system that it is old and well known to provide a staple cartridge with a housing and a longitudinal slot to receive a drive member.
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 provide the device of claims 4 and 15 of U.S. Patent No. 12,251,107 with a cartridge housing and a longitudinal slot to receive a drive member, in order to encase the cartridge elements and to provide a path for the drive member. In this instance, a skilled artisan would have recognized that the provision of a housing and a longitudinal slot from the Ingmanson et al. reference to the device of claims 4 and 15 of U.S. Patent No. 12,251,107 involves no more than the predictable use of prior art elements according to their established functions, and that one of ordinary skill in the art could have provided the known element and the results of the substitution would have been predictable.
With respect to claim 9, the system of claims 4 and 5 of U.S. Patent No. 12,251,107, as modified by Ingmanson et al. above, includes a housing (provided by Ingmanson et al.) comprising a proximal end portion and a distal end portion.
With respect to claim 10, the system of claims 4 and 5 of U.S. Patent No. 12,251,107, as modified by Ingmanson et al. above, includes the direction of the second slot is substantially perpendicular (switch is moved laterally) to the longitudinal axis of the housing (provided by Ingmanson et al.).
With respect to claim 11, the device of claims 4 and 5 of U.S. Patent No. 12,251,107 requires the switch comprises a proximal contact portion for engagement with the drive member at an axial position (switch is located on the tail portion of the cartridge, drive member translates to an axial position).
With respect to claim 12, the system of claims 4 and 5 of U.S. Patent No. 12,251,107, as modified by Ingmanson et al. above, includes the first and second rows of staple cavities in the housing (provided by Ingmanson et al.).
With respect to claim 13, the system of claims 4 and 5 of U.S. Patent No. 12,251,107, as modified by Ingmanson et al. above, includes the switch is disposed proximal of the first and second rows of staple cavities (switch is located on the tail portion of the cartridge).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Chen et al. (US Patent Publ. No. 2013/0327808) disclose a transversely movable block for preventing misfiring.
Zemlok et al. (US Patent Publ. No. 2012/0228358) disclose a controller to identify a staple cartridge.
Shelton et al. (US Patent Publ. No. 2008/0029577) disclose a limit switch to detect an end of stroke.
Collins et al. (US Patent Publ. No. 2015/0316431) disclose an electronic chip to identify a staple cartridge.
Harris et al. (2018/0168637) disclose different sled bosses to identify a staple cartridge.
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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/LINDA J. HODGE/Primary Examiner, Art Unit 3731
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