CTNF 19/270,708 CTNF 84713 DETAILED ACTION Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia 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 08-33 AIA 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 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/process/file/efs/guidance/eTD-info-I.jsp. 08-34 AIA Claim s 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim s 1-20 of U.S. Patent No. - US 12383260 B2 . Although the claims at issue are not identical, they are not patentably distinct from each other because they are substantially co-extensive in scope, at least in regard to the novel subject matter, and differ merely in equivalent terminology used as to function. Both claim a surgical tool having an elongate shaft/rod with a wrist at end having an effector having at the end of a jaw/anvil a dissector tip comprising a tip beam with a proximal portion and a distal portion, with the proximal portion fixedly secured to the anvil assembly, and with the distal portion being deformable relative to the longitudinal axis to define at least two angled configurations of the dissector tip for use during a surgical procedure. Generally, all of the dependent claims of the patent set forth the equivalent subject matter of the dependent claims of the current application. Therefore, it would have been obvious to one skilled in the art to substitute the terminology recited in the current claims with the equivalent components of the patented claims, since to do so provides nothing new or unexpected . See claim matching below- 19270708 (claims) US 12383260 B2 (claims) 1,3-6, 11, and 16-17 1 and 3-6 9, 17 3 1-7,8-10,12-15,&18-20 1 and 5-6 Claim Rejections - 35 USC § 102 07-06 AIA 15-10-15 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 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. 07-07-aia AIA 07-07 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 – 07-08-aia AIA (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. 07-12-aia AIA (a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention. 07-15-aia AIA Claim(s) 15-17 and 19-20 is/are rejected under 35 U.S.C. 102 (a)(1) as being anticipated by KNODEL et al. (WO 2013151888 A1) . Regarding claim 15, KNODEL et al. discloses a tool assembly (4) for a surgical stapler (1), the tool assembly comprising: a cartridge assembly (14); an anvil assembly (12) comprising a base portion (78, figs. 11-12) and an anvil portion (12), the base portion coupled to the cartridge assembly such that the tool assembly is moveable from an open position to a clamped position (figs. 1-4, 14-15, 21-22, and 30-32), and the anvil portion secured to the base portion and including a plurality of staple deforming pockets [0042]; and a dissector tip (200) having a tapered distal surface (blunt, figs. 30-33) and comprising a tip beam (202) with a deformable distal beam portion that is manually bendable to define at least one angled configuration relative to a longitudinal axis (fig. 32) extending through the tool assembly (“flexible tip 200 initially may be straight, angled or form any other suitable shape” [0051-0053, 0065, 0075-], claims 1-6, 9-11, and 9-18, figs. 30-32). Regarding claims 16, KNODEL et al. discloses the dissector tip further comprises a tip beam cover (204) at least partially surrounding the tip beam ([0052[, fig. 32), wherein the tip beam cover defines a vertical thickness that decreases toward a distal direction with respect to the longitudinal axis (figs. 30-33), wherein the tip beam cover further defines a lateral width that decreases toward the distal direction, wherein the tip beam cover envelops the tip beam and defines an atraumatic configuration with rounded edge surfaces and a distally-tapering width ([0051-0053, 0065, 0075-], claims 1-6, 9-11, and 9-18, figs. 30-32). Regarding claims 17 and 19, KNODEL et al. discloses the distal beam portion includes a material (bendable core 202) with a retaining property such that, after bending the distal beam portion to a desired configuration, the material retains the distal beam portion in the desired configuration, wherein the tip beam comprises a metallic material, and wherein the tip beam cover comprises a biocompatible material with at least one of a polymeric material, metal, ceramic, or an elastomeric material [0052]. Regarding claims 20, KNODEL et al. discloses the at least one angled configuration comprises a first configuration with the dissector tip aligned with the longitudinal axis, and a second configuration with the dissector tip defining an acute angle with the longitudinal axis. (“ flexible tip 200 initially may be straight , angled or form any other suitable shape” [0051-0053, 0065, 0075-], claims 1-6, 9-11, and 9-18, figs. 30-32) . Claim Rejections - 35 USC § 103 07-20-aia AIA 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. 07-23-aia AIA The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows: 1. Determining the scope and contents of the prior art. 2. Ascertaining the differences between the prior art and the claims at issue. 3. Resolving the level of ordinary skill in the pertinent art. 4. Considering objective evidence present in the application indicating obviousness or nonobviousness. Claim(s) 1-20 is/are rejected under 35 U.S.C. 103 as obvious over KNODEL et al. (WO 2013151888 A1) in view of Harris et al. (US 20190000481 A1) and further in view of Worrell et al. (US 20140214025 A1). Regarding claims 1, 6-7, 10, 12-13, 18, and 20, KNODEL et al. discloses a tool assembly (4) for a surgical stapler (1), the tool assembly comprising: a cartridge assembly (14); an anvil assembly (12) comprising a base portion (78, figs. 11-12) and an anvil portion (12), the base portion coupled to the cartridge assembly such that the tool assembly is moveable from an open position to a clamped position (figs. 1-4, 14-15, 21-22, and 30-32), and the anvil portion secured to the base portion and including a plurality of staple deforming pockets [0042]; and a dissector tip (200) having a tapered distal surface (blunt, figs. 30-33) and comprising a tip beam (202) with a proximal portion and a distal portion with the proximal portion fixedly secured to the cartridge assembly (via molding or “mechanically attached”, directly attached to anvil [0052] with a deformable distal beam portion that is manually bendable to define at least one angled configuration relative to a longitudinal axis (fig. 32) extending through the tool assembly, wherein the deformable distal beam portion is manually bendable to define the first configuration and the second configuration, the at least one angled configuration comprises a first configuration with the dissector tip aligned with the longitudinal axis, and a second configuration with the dissector tip defining an acute angle with the longitudinal axis (“ flexible tip 200 initially may be straight , angled or form any other suitable shape” [0051-0053, 0065, 0075-], claims 1-6, 9-11, and 9-18, figs. 30-32). KNODEL et al. fails to explicitly disclose the tip proximal portion fixedly secured to the anvil assembly, the distal portion being deformable to a longitudinal axis of the tool assembly to define at least two angled configurations of the dissector tip for use during a surgical procedure wherein the at least two angled configurations comprise a first configuration with the dissector tip substantially aligned with the longitudinal axis, and a second configuration with the dissector tip defining an acute angle with the longitudinal axis. Harris et al. teaches an anvil assembly (318) with a dissector tip (319/519/3219 and/or 70314, figs. 108-111) having a proximal portion fixedly secured to the anvil assembly or cartridge assembly and with the distal portion being deformable to a longitudinal axis of the tool assembly to define at least two angled configurations (non-deflected position to a deflected position and other positions “ad hoc customization of the bend angle” figs. 11-17, 26E-29 and 59-66) of the dissector tip for use during a surgical procedure and teaches having protrusion (3231) to pivot tip (3219) into bent positions ([2010, 0270] and also teaches having a tapered distal surface (3519, figs. 28-29) and having a malleable/bendable tips wherein the at least two angled configurations comprises a first configuration with the dissector tip substantially aligned with the longitudinal axis, and a second configuration with the dissector tip defining an acute angle (figs. 11-17, 26E-29 and 59-66 show acute angles) with the longitudinal axis (30312/30422, 30522 [0367-0381, 0458-0460, 0499], claims 1 and 13, figs. 59-66). Harris et al. states: “ allows for ad hoc customization of the bend angle [0373] ... malleable member (30422) is configured to increase the rigidity of placement tip (30414) and allow an operator to customize the shape of placement tip (30414) by producing different angles of placement tip (30414). For example, FIG. 63A may refer to a pre-customized standard angle alpha (α31), while FIG. 63B may refer to a post-customized angle beta (β31) [0375]… allow an operator to customize the shape of the placement tip by producing different placement tip angles ” ([0499] and claim 13). Worrell et al. an effector (40/140, figs. 1-7) having a dissector tip (208, 210) with a proximal portion (206) fixedly secured to an anvil assembly (144) and with the distal portion being deformable to a longitudinal axis of the tool assembly to define at least two angled configurations of the dissector tip for use during a surgical procedure wherein the at least two angled configurations comprises a first configuration with the dissector tip substantially aligned with the longitudinal axis, and a second configuration with the dissector tip defining an acute angle (figs. 7A-C show acute angles) with the longitudinal axis (living hinge sections (212, 214), allow for different angled positions [0063-0066], figs. 7A-C). Given the teachings of Kondo et al. to have a dissector tip with a tapered distal surface and a deformable distal beam portion that is manually bendable to define at least one angled configuration relative to a longitudinal axis and having the tip straight or angled as desired, 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 dissector proximal portion fixedly secured to the anvil assembly, distal portion being deformable to a longitudinal axis of the tool assembly to define at least two angled configurations of the dissector tip for use during a surgical procedure wherein the at least two angled configurations comprises a first configuration with the dissector tip substantially aligned with the longitudinal axis, and a second configuration with the dissector tip defining an acute angle with the longitudinal axis to have the tip proximal portion fixedly secured to the anvil assembly or cartridge assembly for grasping tissue as needed (from top/anvil or bottom/cartridge as needed/desired) indexed a selected number of degrees to have precise adjustment of the tip end for more precise adjustment of the tool/effector for different position needs and more precise action on a surgical area and/or for tissue adjustment purposes as taught by Harris et al. and Worrell et al and since has been held adjustability, where needed, is not a patentable advance, and if an art-recognized need for adjustment the prior art would have been obvious. In re Stevens, 212 F.2d 197, 101 USPQ 284 (CCPA 1954). Regarding claims 2-5, 11, and 16, KNODEL et al. discloses the dissector tip further comprises a tip beam cover (204) at least partially surrounding the tip beam ([0052[, fig. 32), wherein the tip beam cover defines a vertical thickness that decreases toward a distal direction with respect to the longitudinal axis (figs. 30-33), wherein the tip beam cover further defines a lateral width that decreases toward the distal direction, wherein the tip beam cover envelops the tip beam and defines an atraumatic configuration with rounded edge surfaces and a distally-tapering width. Regarding claims 8-9, 14, 17, and 19, KNODEL et al. discloses the distal beam portion includes a material (bendable core 202) with a retaining property such that, after bending the distal beam portion to a desired configuration, the material retains the distal beam portion in the desired configuration, wherein the tip beam comprises a metallic material, and wherein the tip beam cover comprises a biocompatible material with at least one of a polymeric material, metal, ceramic, or an elastomeric material [0052]. Harris et al. also teaches having a distal beam portion includes a material with a retaining property such that, after bending the distal beam portion to a desired configuration ([0367-0381, 0458-0460, 0499], claims 1 and 13, figs. 59-66), the material retains the distal beam portion in the desired configuration wherein the tip beam comprises a metallic material, and wherein the tip beam cover comprises a biocompatible material with at least one of a polymeric material, metal, ceramic, or an elastomeric material [0380]. Conclusion Additional prior art considered pertinent: see form 892. Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT LONG whose telephone number is (571)270-3864. The examiner can normally be reached M-F, 9am-5pm, 8-9pm (EST). Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. 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. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /ROBERT F LONG/Primary Examiner, Art Unit 3731 Application/Control Number: 19/270,708 Page 2 Art Unit: 3731 Application/Control Number: 19/270,708 Page 3 Art Unit: 3731 Application/Control Number: 19/270,708 Page 4 Art Unit: 3731 Application/Control Number: 19/270,708 Page 5 Art Unit: 3731 Application/Control Number: 19/270,708 Page 6 Art Unit: 3731 Application/Control Number: 19/270,708 Page 7 Art Unit: 3731 Application/Control Number: 19/270,708 Page 8 Art Unit: 3731 Application/Control Number: 19/270,708 Page 9 Art Unit: 3731 Application/Control Number: 19/270,708 Page 10 Art Unit: 3731 Application/Control Number: 19/270,708 Page 11 Art Unit: 3731 Application/Control Number: 19/270,708 Page 12 Art Unit: 3731 Application/Control Number: 19/270,708 Page 13 Art Unit: 3731 Application/Control Number: 19/270,708 Page 14 Art Unit: 3731 Application/Control Number: 19/270,708 Page 15 Art Unit: 3731
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