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
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claim 10 is rejected under 35 U.S.C. 101 as claiming the same invention as that of claim 10 of prior U.S. Patent No. 11,331,099. This is a statutory double patenting rejection.
Claim 10 of 19/273,876
Claim 10 of US 11,331,099
10. A power pack removably loadable into a compartment of a housing of a surgical instrument, the power pack comprising a motor, a motor shaft, a drive mechanism operably connected to the motor shaft, including an engagement member linearly movable, the power pack further having a replaceable battery pack removably connectable to a contact within the power pack for powering the motor, the engagement member configured to removably engage an axially movable member in the housing of the surgical instrument, wherein actuation of the motor causes linear movement of the engagement member to effect movement of the axially movable member in an axial direction.
10. A power pack removably loadable into a compartment of a housing of a surgical instrument, the power pack comprising: a motor, a motor shaft, and a drive mechanism operably connected to the motor shaft, including an engagement member linearly movable, the power pack further having a replaceable battery pack removably connectable to a contact within the power pack for powering the motor, the engagement member configured to removably engage an axially movable member in the housing of the surgical instrument, wherein actuation of the motor causes linear movement of the engagement member to effect movement of the axially movable member in an axial direction.
Claim 11 is rejected under 35 U.S.C. 101 as claiming the same invention as that of claim 11 of prior U.S. Patent No. 11,331,099. This is a statutory double patenting rejection.
Claim 11 of 19/273,876
Claim 11 of US 11,331,099
11. The power pack of claim 10, further comprising a second engagement member configured to engage a second axially movable member in the housing of the surgical instrument and a second motor for moving the second engagement member axially.
11. The power pack of claim 10, further comprising a second engagement member configured to engage a second axially movable member in the housing of the surgical instrument and a second motor for moving the second engagement member axially.
Claim 12 is rejected under 35 U.S.C. 101 as claiming the same invention as that of claim 12 of prior U.S. Patent No. 11,331,099. This is a statutory double patenting rejection.
Claim 12 of 19/273,876
Claim 12 of US 11,331,099
12. The power pack of claim 10, wherein the battery pack is slidable into a cavity in the power pack.
12. The power pack of claim 10, wherein the battery pack is slidable into a cavity in the power pack.
Claim 13 is rejected under 35 U.S.C. 101 as claiming the same invention as that of claim 13 of prior U.S. Patent No. 11,331,099. This is a statutory double patenting rejection.
Claim 13 of 19/273,876
Claim 13 of US 11,331,099
13. The method of claim 10, wherein the battery pack is replaceable while the power pack is in the compartment of the surgical instrument.
13. The power pack of claim 10, wherein the battery pack is replaceable while the power pack is in the compartment of the surgical instrument.
Claim 14 is rejected under 35 U.S.C. 101 as claiming the same invention as that of claim 14 of prior U.S. Patent No. 11,723,659. This is a statutory double patenting rejection.
Claim 14 of 19/273,876
Claim 14 of US 11,723,659
14. A surgical fastener applier comprising:
a housing containing a compartment therein;
an elongated member extending distally from the housing;
a first jaw and a second jaw adjacent a distal portion of the elongated member, at least the first jaw movable with respect to the second jaw to clamp tissue between the first and second jaws;
a fastener firing mechanism positioned within the housing, the firing
mechanism movable between a first position and a second position, wherein in the second position, the firing mechanism effects firing of fasteners into the tissue clamped between the first and second jaws; and
a power pack removably loadable into the compartment, the power pack having a first motor and a first engagement member removably engageable with the
firing mechanism within the housing when the power pack is loaded into the compartment, the first engagement member movable axially in response to rotation of a first screw operatively connected to the first motor, and at least one bearing to limit one or both of radial movement and axial movement of the first screw,
wherein linear movement of the first engagement member effects movement of the firing mechanism from the first position to the second position.
14. A surgical fastener applier comprising:
a housing containing a compartment therein;
an elongated member extending distally from the housing;
a first jaw and a second jaw adjacent a distal portion of the elongated member, at least the first jaw movable with respect to the second jaw to clamp tissue between the first and second jaws;
a fastener firing mechanism positioned within the housing, the fastener firing mechanism movable between a first position and a second position, wherein in the second position, the firing mechanism effects firing of fasteners into the tissue clamped between the first and second jaws; and
a power pack removably loadable into the compartment, the power pack having a first motor and a first engagement member removably engageable with the fastener firing
mechanism within the housing when the power pack is loaded into the compartment, the first engagement member movable axially in response to rotation of a first screw operatively connected to the first motor, and at least one bearing on opposing sides of the first screw to limit one or both of radial movement and axial movement of the first screw,
wherein linear movement of the first engagement member effects movement of the firing mechanism from the first position to the second position.
Claim 15 is rejected under 35 U.S.C. 101 as claiming the same invention as that of claim 15 of prior U.S. Patent No. 11,723,659. This is a statutory double patenting rejection.
Claim 15 of 19/273,876
Claim 15 of US 11,723,659
15. The surgical fastener applier of claim 14, wherein the power pack includes a second motor and a second engagement member removably engageable with an articulation mechanism within the housing when the power pack is loaded into the compartment, the second engagement member movable axially in response to rotation of a second screw operatively connected to the second motor, and at least one bearing to limit one or both of radial movement and axial movement of the second screw, wherein linear movement of the second engagement member effects movement of the articulation mechanism to effect articulation of the first and second jaws.
15. The surgical fastener applier of claim 14, wherein the power pack includes a second motor and a second engagement member removably engageable with an articulation mechanism within the housing when the power pack is loaded into the compartment, the second engagement member movable axially in response to rotation of a second screw operatively connected to the second motor, and at least one bearing on opposing sides of the second screw to limit one or both of radial movement and axial movement of the second screw, wherein linear movement of the second engagement member effects movement of the articulation mechanism to effect articulation of the first and second jaws.
Claim 16 is rejected under 35 U.S.C. 101 as claiming the same invention as that of claim 16 of prior U.S. Patent No. 11,723,659. This is a statutory double patenting rejection.
Claim 16 of 19/273,876
Claim 16 of US 11,723,659
16. The surgical fastener applier of claim 14, wherein the first engagement member has a pair of bearings movable within a track as the first engagement member moves axially.
16. The surgical fastener applier of claim 14, wherein the first engagement member has a pair of bearings movable within a track as the first engagement member moves axially.
Claim 17 is rejected under 35 U.S.C. 101 as claiming the same invention as that of claim 17 of prior U.S. Patent No. 11,723,659. This is a statutory double patenting rejection.
Claim 17 of 19/273,876
Claim 17 of US 11,723,659
17. The surgical fastener applier of claim 15, wherein the first and second engagement members are axially aligned.
17. The surgical fastener applier of claim 15, wherein the first and second engagement members are axially aligned and the second motor and second screw are in axial alignment.
Claim 19 is rejected under 35 U.S.C. 101 as claiming the same invention as that of claim 17 of prior U.S. Patent No. 11,723,659. This is a statutory double patenting rejection.
Claim 19 of 19/273,876
Claim 17 of US 11,723,659
19. The surgical fastener applier of claim 15, wherein the second motor and second screw are in axial alignment.
17. The surgical fastener applier of claim 15, wherein the first and second engagement members are axially aligned and the second motor and second screw are in axial alignment.
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 4-6 and 11-20 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.
Regarding claim 4, “the battery pack” lacks antecedent basis.
Regarding claim 5, “the battery pack” lacks antecedent basis.
Regarding claim 6, “the battery pack” lacks antecedent basis.
Regarding claim 11, “the battery pack” lacks antecedent basis.
Regarding claim 12, “the battery pack” lacks antecedent basis.
Regarding claim 13, “the method” and “the battery pack” lack antecedent basis.
Regarding claim 14, “the firing mechanism” lacks antecedent basis.
Regarding claims 15-20, claims 15-20 are rejected because they depend from rejected claim 14.
Claim Rejections - 35 USC § 102
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.
(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.
Claims 1-9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Contini et al (US 2016/0310134), hereinafter Contini.
Regarding claim 1, Contini discloses a surgical fastener applier (Fig. 1) comprising:
A housing (Fig. 1, item 10) containing a compartment therein;
An elongated member (Fig. 1, item 200) extending distally from the housing;
A first jaw (Fig. 53, item 408) and a second jaw (Fig. 53, item 406) adjacent a distal portion of the elongated member, at least the first jaw movable with respect to the second jaw to clamp tissue between the first and second jaws (Para. 0312);
A fastener firing mechanism (Fig. 26, item 248) positioned within the housing, the firing mechanism movable between a first position and a second position, wherein in the second position, the firing mechanism effects firing of fasteners into the tissue clamped between the first and second jaws (Para. 0336);
A power pack (Fig. 5, item 101) removably loadable into the compartment (Para. 0336-0339), the power pack having a motor (Fig. 12, item 152, 154, 156) and an engagement member (Fig. 16, items 152a, 154a, 156a) removably engageable with the firing mechanism when the power pack is loaded into the compartment (Para. 0336), to effect movement of the firing mechanism from the first position to the second position (Para. 0339).
An interchangeable battery (Fig. 12, item 144) removably connectable with the power pack for powering the motor (Para. 0336-0339).
Regarding claim 2, Contini discloses the surgical fastener applier further comprising a cover (Fig. 5, item 10a) on the housing openable to access the compartment within the housing, wherein the cover includes a first seal to seal about the cover in a closed position of the cover to protect the power pack positioned within the housing (Para. 0280).
Regarding claim 3, Contini discloses the surgical fastener applier further comprising a second seal to block passage of body fluids from the elongated member into the compartment (Para. 0298).
Regarding claim 4, Contini discloses the surgical fastener applier wherein the battery pack is slidable into a cavity in the power pack (Para. 0296).
Regarding claim 5, Contini discloses the surgical fastener applier wherein the battery pack is mountable to an outer surface of the power pack (Fig. 5 and 6, battery pack 101 is mountable to outer surface 10 of power pack via insertion into cavity 10c).
Regarding claim 6, Contini discloses the surgical fastener applier wherein the battery pack has an engagement tab (Fig. 13, item 144) for gripping by a user to facilitate removal from the power pack (Para. 0306).
Regarding claim 7, Contini discloses the surgical fastener applier wherein the power pack includes a second engagement member (Fig. 16, items 152a, 154a, 156a), the second engagement member removably engageable with an articulating mechanism (Fig. 26, item 258) in the housing of the surgical fastener applier to effect articulation of the first and second jaws from a linear position to a position angled with respect to a longitudinal axis of the elongated member (Para. 0343).
Regarding claim 8, Contini discloses the surgical fastener applier wherein the power pack includes a second motor (Fig. 12, items 152, 154, 156) and the second motor effects linear movement of the articulation mechanism.
Regarding claim 9, Contini discloses the surgical fastener applier further comprising a handle manually movable (Fig. 54, item 464 and 460) to move a jaw clamping mechanism to clamp tissue between the first and second jaws (Para. 0327).
Prior Art Rejection
Claims 10-20 are currently free from prior art. However, a subsequent prior art rejection may be made in view of Applicant’s amendments submitted to overcome the above rejections.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VERONICA MARTIN whose telephone number is (571)272-3541. The examiner can normally be reached Monday-Thursday 8:00-6:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Anna Kinsaul can be reached at (571)270-1926. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/VERONICA MARTIN/Primary Examiner, Art Unit 3731