`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.0 Box 1450
`Alexandria, Virginia 22313-1450
`www.uspto gov
`
`12/031,628
`
`92223
`
`02/14/2008
`
`Kyle P. Moore
`
`END621 ."1USNP/070330
`
`2913
`
`7590
`
`02/18/2010
`
`
`
`
`
`K&L Gates LLP
`Henry W. Oliver Building 535 Smithfield Street
`Pittsburgh, PA 15222
`
`EXAMINER
`SMITH. SCOTT A
`PAPER NUMBER
`
`DELIVERY MODE
`
`PAPER
`
`ART UNIT
`
`3721
`
`MAIL DATE
`
`02/18/2010
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`PTOL-90A (Rev. 04/07)
`
`1
`
`IS 1002
`
`1
`
`IS 1002
`
`

`

`
`
`Application No.
`
`12/031,628
`
`Applicant(s)
`
`MOORE ET AL.
`
`
`
`Art Unit
`Examiner
`Office Action Summary
`
`Scott A. Smith 3721
`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE 3 MONTH(S) OR THIRTY (30) DAYS,
`WHICHEVER IS LONGER, FROM THE MAILING DATE OF THIS COMMUNICATION.
`Extensions of time may be available under the provisions of 37 CFR 1. 136(a).
`In no event however may a reply be timely filed
`after SIX (6) MONTHS from the mailing date of this communication
`If NO period for reply is specified above. the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will. by statute. cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed. may reduce any
`earned patent term adjustment. See 37 CFR 1.704(b).
`
`Status
`
`1)IZ| Responsive to communication(s) filed on 14 February 2008.
`
`2a)|:| This action is FINAL.
`
`2b)IZ This action is non-final.
`
`3)I:I Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under EX parte Quayle, 1935 CD. 11, 453 0.6. 213.
`
`Disposition of Claims
`
`4)IZ CIaim(s)1-_20 is/are pending in the application.
`
`4a) Of the above CIaim(s)
`is/are withdrawn from consideration.
`
`5)I:I CIaim(s)_ is/are allowed.
`
`6)IZ CIaim(s) 1-3 5-16 and 18-20 is/are rejected.
`
`BIZ CIaim(s) 4 and 17 is/are objected to.
`
`8)I:I CIaim(s)_ are subject to restriction and/or election requirement.
`
`Application Papers
`
`9)I:I The specification is objected to by the Examiner.
`10)IZI The drawing(s) filed on 14 February 2008 is/are: a)IZ accepted or b)I:I objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121(d).
`
`11)I:I The oath or declaration is objected to by the Examiner. Note the attached Office Action or form PTO-152.
`
`Priority under 35 U.S.C. § 119
`
`12)I:I Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)—(d) or (f).
`a)I:I All
`b)I:I Some * c)I:I None of:
`
`1.I:I Certified copies of the priority documents have been received.
`
`2.I:I Certified copies of the priority documents have been received in Application No. _
`
`3.I:I Copies of the certified copies of the priority documents have been received in this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
`
`* See the attached detailed Office action for a list of the certified copies not received.
`
`Attachment(s)
`
`4) D Interview Summary (PTO-413)
`1) X Notice of References Cited (PTO-892)
`Paper N0(S)/M3” Date. _
`2) I] Notice of Draftsperson‘s Patent Drawing Review (PTO—948)
`3) IZI Information Disclosure Statement(s) (PTO/SB/08)
`5) I:I Notice of Informal Patent Application
`
`Paper No(s)/Mai| Date 10/9/08 2 '5/18/09 2 .
`6) D Other: _
`U.S. Patent and Trademark Office
`PTOL-326 (Rev. 08-06)
`
`Part of Paper No./Mai| Date 20100212
`
`Office Action Summary
`
`2
`
`

`

`Application/Control Number: 12/031,628
`Art Unit: 3721
`
`Page 2
`
`DETAILED ACTION
`
`Claim Rejections - 35 USC § 102
`
`1.
`
`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 —
`
`(b) the invention was patented or described in a printed publication in this or a foreign country or in public
`use or on sale in this country, more than one year prior to the date of application for patent in the United
`States.
`
`2.
`
`Claims 1, 10 and 15 are rejected under 35 U.S.C. 102(b) as being anticipated by
`
`Alesi et al. ‘130
`
`Alesi et al. ‘130 discloses a disposable loading unit (10) for attachment to a
`
`surgical cutting and stapling apparatus, said disposable loading unit (10) comprising: a
`
`carrier (20); a staple cartridge (44) supported in said carrier (20); an anvil assembly (64)
`
`movably coupled to said carrier (20) for selective movable travel between open and
`
`closed positions (fig.: 6) relative to said staple cartridge (44); an axial drive assembly
`
`(80, 84) supported within said carrier (44) to move in a distal direction from a start
`
`position to an end position (figs.: 6, 11 and 12) through said carrier (20) and said staple
`
`cartridge (44) and in a proximal direction from said end position to said start position
`
`(paragraph [0037]); a motor (86) supported within said carrier (20) and interfacing with
`
`said axial drive assembly (80, 84) to drive said axial drive assembly (80, 84) in said
`
`distal and proximal directions; and a battery (98a- 98c) supported within said carrier (20)
`
`and coupled to said motor (86) for supplying power thereto.
`
`3
`
`

`

`Application/Control Number: 12/031,628
`Art Unit: 3721
`
`Page 3
`
`Claim Rejections - 35 USC § 103
`
`3.
`
`The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all
`
`obviousness rejections set forth in this Office action:
`
`(a) A patent may not be obtained though the invention is not identically disclosed or described as set
`forth in section 102 of this title, if the differences between the subject matter sought to be patented and
`the prior art are such that the subject matter as a whole would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said subject matter pertains.
`Patentability shall not be negatived by the manner in which the invention was made.
`
`4.
`
`This application currently names joint inventors.
`
`In considering patentability of
`
`the claims under 35 U.S.C. 103(a), the examiner presumes that the subject matter of
`
`the various claims was commonly owned at the time any inventions covered therein
`
`were made absent any evidence to the contrary. Applicant is advised of the obligation
`
`under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was
`
`not commonly owned at the time a later invention was made in order for the examiner to
`
`consider the applicability of 35 U.S.C. 103(0) and potential 35 U.S.C. 102(e), (f) or (9)
`
`prior art under 35 U.S.C. 103(a).
`
`5.
`
`Claims 2, 3, 11 and 16 are rejected under 35 U.S.C. 103(a) as being
`
`unpatentable over Alesi et al. ‘130 in view of Shippert ‘200.
`
`Alesi et al. ‘130 lacks the movable battery. Shippert ‘200 discloses a surgical
`
`instrument comprising a movable battery as claimed.
`
`In view of the teachings of
`
`Shippert ‘200, it would have been obvious to one skilled in the art to provide the stapler
`
`of Alesi et al. ‘130 with the movable battery as claimed in order to provide for a simple
`
`on/off switch for powering the device.
`
`6.
`
`Claims 5-7, 13, 14 and 19 are rejected under 35 U.S.C. 103(a) as being
`
`unpatentable over Alesi et al. ‘130 in view of Viola et al. ‘847.
`
`4
`
`

`

`Application/Control Number: 12/031,628
`Art Unit: 3721
`
`Page 4
`
`Alesi et al. ‘130 lacks the indicator. Viola et al. ‘847 discloses a surgical
`
`instrument comprising an indicator for various functions.
`
`In view of the teachings of
`
`Viola et al. ‘847, it would have been obvious to one skilled in the art to provide the
`
`stapler of Alesi et al. ‘130 with the indicator as claimed in order to reveal the position of
`
`the anvil or drive element of the device.
`
`7.
`
`Claims 8, 9, 18 and 20 are rejected under 35 U.S.C. 103(a) as being
`
`unpatentable over Alesi et al. ‘130 in view of US Patent Publication 2006/0217729,
`
`hereinafter Eskridge et al. ‘729.
`
`Alesi et al. ‘130 lacks the motor current limiter. Eskridge et al. ‘729 discloses a
`
`surgical device comprising a motor current limiter.
`
`In view of the teachings of Eskridge
`
`et al. ‘729, it would have been obvious to one skilled in the art to provide the device of
`
`Alesi et al. ‘130 with a means for stopping the motor due to excessive resistance by the
`
`drive or excessive current from the motor.
`
`8.
`
`Claim 12 is rejected under 35 U.S.C. 103(a) as being unpatentable over Alesi et
`
`al. ‘130 in view of Shippert ‘200 and Eskridge et al. ‘729.
`
`It would have been obvious to one skilled in the art to provide the stapler of Alesi
`
`et al. ‘130 with the movable battery as claimed, as taught by Shippert ‘200 for the
`
`reasons as set forth above, and to provide the device of Alesi et al. ‘130 with a means
`
`for stopping the motor as taught by Eskridge et al. ‘729 for the reasons as set forth
`
`above.
`
`5
`
`

`

`Application/Control Number: 12/031,628
`Art Unit: 3721
`
`Page 5
`
`9.
`
`Claims 4 and 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.
`
`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to Scott A. Smith whose telephone number is 571 -272-
`
`4469. The examiner can normally be reached on 5:30—4:00 Tues.—Fri..
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
`
`supervisor, Rinaldi Rada can be reached on 571-272—4467. The fax phone number for
`
`the organization where this application or proceeding is assigned is 571-273-8300.
`
`Information regarding the status of an application may be obtained from the
`
`PatentApplication Information Retrieval (PAIR) system. Status information for
`
`published applications may be obtained from either Private PAIR or Public PAIR.
`
`Status information for unpublished applications is available through Private PAIR only.
`
`For more information about the PAIR system, see http://pair-direct.uspto.gov. Should
`
`you have questions on access to the Private PAIR system, contact the Electronic
`
`Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a
`
`USPTO Customer Service Representative or access to the automated information
`
`system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1 000.
`
`S. Smith
`
`/Scott A. Smith/
`
`Primary Examiner, Art Unit 3721
`
`6
`
`

`

`Application/Control Number: 12/031,628
`Art Unit: 3721
`
`Page 6
`
`7
`
`

`

`Notice of References Cited
`
`Application/Control No.
`
`Applicant(s)/Patent Under
`Reexamination
`
`MOORE ET AL.
`12/031,623
`Examiner
`Art Unit
`
`Scott A. Smith
`
`3721
`
`Page 1 of1
`
`U.S. PATENT DOCUMENTS
`
`Viola et al.
`
`.
`.
`.
`Date
`Document Number
`
`Country Code-Number-Kind Code
`MM.YYYY
`ClaSSIflcatlon
`12-2008
`227/1752
`
`
`
`FOREIGN PATENT DOCUMENTS
`Document Number
`Date
`.
`.
`.
`Country Code-Number-Kind Code
`MM-YYYY
`Classn‘lcatlon
`
`Country
`
`Name
`
`
`
`
`
`
`
`*A copy of this reference is not being furnished with this Office action. (See MPEP § 707.05(a).)
`Dates in MM-YYYY format are publication dates. Classifications may be US or foreign.
`U.S. Patent and Trademark Office
`PTO-892 (Rev. 01-2001)
`
`Notice of References Cited
`
`Part of Paper No. 20100212
`
`8
`
`

`

`IN THE UNITED STATES PATENT AND TRADEIVIARK OFFICE
`
`END621 3USNP!070330
`PATENT
`
`-
`Art Unit 3721
`Examiner Scott A. Smith
`
`In re application of
`Kyle P. Moore et a1.
`
`p
`
`Serial No. 12/031,628
`
`Filed: February 14, 2008
`
`:
`:
`:
`
`:
`:
`
`:
`
`.
`DISPOSABLE MOTOR-DRIVEN
`LOADING UNIT FOR USE WITH A
`
`SURGICAL CUTTING AND STAPLING
`APPARATUS
`
`Confirmation No. 2913
`
`RESPONSE TO OFFICE ACTION
`
`Pittsburgh, Pennsylvania 15222-2613
`
`April 16, 2010
`
`VIA ELECTRONIC FILING
`
`Mail Stop Amendment
`Commis sioner for Patents
`
`PO. Box 1450
`Alexandria, VA 22313 -1450
`
`Sir:
`
`Responsive to the Office Action dated February 18, 2010 (the “Office Action”) issued in
`
`connection with the above—identified application (the “Subject Application”), Assignee of the
`
`entire right, title, and interest in and to the subject application (hereinafter “Applicant”), submits
`
`the following:
`
`Amendments to the Claims begin on page 2 of this paper.
`
`Remarks begin on page 8 of this paper.
`
`P14337548 v1 0237980-00218
`
`9
`
`

`

`Application Serial No. 12/0311628
`Response datedApr-il 16, 2010
`Response to Ofi‘icial Action Februwy 18, 2010
`
`AMENDMENTS TO THE CLAIMS
`
`This listing of claims will replace all prior versions and listings of claims in the
`
`application:
`
`Listing of Claims:
`
`1.
`
`(Currently amended) A disposable loading unit for attachment to a surgical
`
`cutting and stapling apparatus, said disposable loading unit comprising:
`
`a carrier;
`
`a staple cartridge supported in said carrier;
`
`an anvil assembly movably coupled to said carrier for selective movable travel between
`
`open and closed positions relative to said staple cartridge;
`
`an axial drive assembly supported Within said carrier to move in a distal direction from a
`
`start position to an end position through said carrier and said staple cartridge and in a proximal
`
`direction from said end position to said start position;
`
`a motor supported within said carrier and interfacing with said axial drive assembly to
`
`drive said axial drive assembly in said distal and proximal directions; and '
`
`a battery holder movably supported within said carrier and attachable to a control rod of
`
`the surgical cutting and stapling apparatus; and
`
`a battery supported within said earner battery holder such that said battery is retained in a
`
`disconnected position prior to coupling said disposable loading unit to the surgical cutting and
`
`stapling apparatus and is movable therefrom to at least one subseguent position upon coupling
`
`said disposable loading unit to said surgical stapling apparatus mad—eeapled—te—said—meter—fer
`
`Claims 2-4. (Canceled)
`
`10
`
`10
`
`

`

`Application Serial No.12/031,628
`Response dated April 1 6, 2010
`Response to Ofi’iciei Action February 18, 2010
`
`5.
`
`(Original)
`
`The disposable loading unit of claim 1 further comprising an
`
`indicator supported on said disposable loading unit for indicating when said axial drive
`
`assembly is in a starting position.
`
`6.
`
`(Original)
`
`The disposable loading unit of claim 1 further comprising an
`
`indicator supported on said disposable loading unit for indicating when said anvil assembly is in
`
`said closed position.
`
`7.
`
`(Original)
`
`The disposable loading unit of claim 1 fiirther comprising an
`
`indicator supported on said disposable loading unit for indicating when said axial drive assembly
`
`is in a distal-most position.
`
`8.
`
`(Original)
`
`The disposable loading unit of claim 1 further comprising means
`
`for stopping said motor from driving said drive assembly in said proximal direction when said
`
`axial drive assembly encounters resistance that exceeds a predetermined amount of resistance.
`
`9;
`
`(Original)
`
`The disposable loading unit of claim 8 wherein said means for
`
`stopping said motor comprises a current limiter operably coupled to said motor.
`
`'
`
`10.
`
`(Currently amended) A disposable loading unit for attachment to a surgical
`
`cutting and stapling apparatus, said disposable loading unit comprising:
`
`a carrier;
`
`a staple cartridge supported in said carrier;
`
`_
`
`an anvil assembly movably coupled to said carrier for selective movable travel between
`
`open and closed positions relative to said staple cartridge;
`
`a housing coupled to said carrier and configured for removable operable attachment to
`
`the surgical cutting and stapling apparatus;
`
`11
`
`11
`
`

`

`Application Serial No. 12/193], 628
`Response datedApril I 6, 2010
`Response to Ofi‘iciai Action February 18, 2010
`
`an axial drive assembly supported within said carrier and said housing to move in a distal
`
`direction from a start position to an end position through said carrier and said staple cartridge and
`
`in a proximal direction from said end position to said start position;
`
`a motor supported within said carrier and interfacing with said axial drive assembly to
`drive said axial drive assembly in said distal and proximal directions; and
`
`a battery holder movably supported within said carrier and attachable to a control
`
`member of the surgical cutting and stapling apparatus: said battery holder being movable from a
`
`deactivated position to at least one subsequent position upon attachment to the control member;
`
`an_d
`
`a battery supported within said movable battery holder such that when said battery holder
`
`is in said deactivated position, said battery does not supply control power and when said battery
`
`holder is moved from said deactivated position to said at least one subsequent positiop, said
`
`
`
` battegy supplies control power -.. '-
`
`
`
`11.
`
`(Currently amended) The disposable loading apparatus of claim 10 wherein said
`
`battery is retained in said discerneeeted deactivated position prior to said housing movable
`
`battery housing being coupled to the control member of the surgical cutting and stapling
`
`apparatus..-.
`
`--=.‘= ==-*= .= =-.-* .‘= ==='-
`
`.:::- =.= -;
`
`.=-=.
`
`-g
`
`
`
`.
`
`l
`
`l'
`
`.
`
`12.
`
`(Original)
`
`The disposable loading unit of claim 11 further comprising means
`
`for stepping said motor when said axial drive assembly encounters resistance that exceeds a
`
`predetermined amount of resistance.
`
`12
`
`12
`
`

`

`Application Serial No. 12/031, 628
`Response dated April 16, 2010
`Response to Ofi‘ieial Action February 18, 2010
`
`13.
`
`(Original)
`
`The disposable loading unit of claim 10 further comprising means
`
`on said housing for indicating when said axial drive assembly is in a starting position and an
`
`ending position.
`
`14.
`
`(Original)
`
`The disposable loading unit of claim 10 further comprising means
`
`_ on said housing for indicating when said anvil is in said closed position.
`
`15.
`
`(Currently amended) A surgical cutting and stapling apparatus comprising:
`
`a handle assembly;
`
`a drive system operable supported in said handle assembly and constructed to impart
`drive motions and a retraction motion;
`
`a movable handle portion operably supported on said handle assembly and interfacing
`
`with said drive system such that manipulation of said movable handle causes said drive system to
`
`impart said drive motions;
`
`an elongated body protruding from said handle assembly and having a distal end
`
`couplable to a disposable loading unit, said disposable loading unit comprising:
`
`a carrier;
`
`a staple cartridge supported in said carrier;
`
`an anvil assembly movably coupled to said carrier for selective movable travel
`
`between open and closed positions relative to said staple cartridge;
`an axial drive assembly supported within said carrier to move in a distal direction
`
`from a start position to an end position through said carrier and said staple cartridge and
`
`move in a proximal direction from said end position to said start position;
`
`a motor supported within said carrier and interfacing with said axial drive
`
`assembly to drive said axial drive assembly in said distal and proximal directions; and
`
`a battery holder movably supported within said carrier and interfacing with a
`
`control rod operably supported by said elongated body to receive said drive motions
`
`therefrom upon manipulation of said moveable handle portion; and
`- 5 -
`
`13
`
`13
`
`

`

`Application Serial No.12/031.628
`Response datedApril I 6, 2010
`Response to Ofi’icial Action February 18, 2010
`
`
`
` battefl holder
`
`such that said-batteg is retained in a disconnected position prior to coupling said
`
`disposable loading unit to said distal end of said elongated body and said battery is
`
`movable therefrom to at least one connected position when said disposable loading unit is
`
`coupled to said distal end of said elongated body.
`
`Claims 16 and 17 (Canceled)
`
`18.
`
`(Original)
`
`The surgical cutting and stapling apparatus of claim 15 further
`
`comprising means for stopping said motor when said axial drive assembly encounters resistance
`
`that exceeds a predetermined amount of resistance.
`
`19.
`
`(original)
`
`The surgical cutting and stapling apparatus of claim 15 further
`
`comprising:
`
`a first indicator on said disposable loading unit for indicating when said axial drive
`
`assembly is in a starting position;
`a second indicator on said disposable loading unit for indicating when said anvil is in said
`
`closed position; and
`
`a third indicator on said disposable loading unit for indicating when said axial drive
`
`assembly is in said end position.
`
`20.
`
`(Original)
`
`The surgical cutting and stapling apparatus of claim 18 wherein
`
`said means for stopping said motor comprises a current limiter” operably coupled to said motor.
`
`21.
`
`(New) The disposable loading unit of claim 10 flirther comprising a biasing
`
`member within said carrier for biasing said movable battery holder to said deactivated position.
`_ 6 -
`
`14
`
`14
`
`

`

`Application Serial No. 12/031, 628
`Response datedApril I 6, 2010
`Response to Ofi'icialAction February 18, 2010
`
`22.
`
`(New) The disposable loading unit of claim 10 wherein said at least one
`
`subsequent position comprises a first contact arrangement in said carrier such that when said
`
`battery is moved into electrical contact with said first contact arrangement, said battery supplies
`
`control power therethrough.
`
`23.
`
`(New) The disposable loading unit of claim 22 wherein said at least one
`
`subsequent position further comprises a second contact arrangement in said carrier such that
`
`when said battery is moved into electrical contact with said second contact arrangement, said
`
`battery supplies control power therethrough.
`
`15
`
`15
`
`

`

`Application Serial No. 12/031, 628
`Response dated April 16, 2010
`Response to Ofi‘icial Action February [8, 2010
`
`REMARKS
`
`At the outset, Applicant wishes to express appreciation to Examiner Smith for
`
`determining that the subject application contains patentable subject matter.
`
`Claims 1-20 are pending in the subject application. Claims 1-3, 5-16 and 18-20 stand
`
`rejected. Claims 4 and 17 have been objected to, but would be allowable if rewritten in
`
`independent form to include all of the recitations of the base claim and any intervening claims.
`
`In the present Amendment, Applicant has amended independent Claim l to include the
`‘
`Irecitations of Claims 2-4 and Claims 2-4 have been canceled without disclaimer or prejudice.
`
`Claim 1 is in condition for allowance. Claims 5-9, which depend either directly or indirectly
`
`from Claim 1, are also allowable. Claim 15 has been amended to include the recitations of
`
`Claims 16 and 17 and Claims 16 and 17 have been canceled without disclaimer or prejudice.
`
`Claim 15 is in condition for allowance. Claims 18-20, which depend from Claim 15, are also
`
`allowable.
`
`Also in the present Amendment, Applicant has amended independent Claim 10 to include
`
`recitations similar to those added to Claim 1. Accordingly Claim 10 is seen to be allowable for
`
`at least the same reasons that Claim 1 is allowable. Claims 11-14 and new Claims 21-23 all
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`depend from Claim 10 and therefore, they, too, are in condition for allowance.
`
`Applicant is herewith submitting a Supplemental Information Disclosure Statement.
`
`Consideration of the Supplemental Information Disclosure Statement is respectfully requested.
`
`Applicant respectfully submits that all of the claims presented in the present application
`
`are in condition for allowance. Applicant’s present Response should not in any way be taken as
`acquiescence to any of the specific assertions, statements, etc., presented in the Official Action
`
`not explicitly addressed herein. Applicant reserves the right to specifically address all such
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`assertions and statements in subsequent reSponses. Applicant also reserves the right to seek
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`claims of a broader or different scope in a continuation application.
`
`16
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`16
`
`

`

`Application Serial No. 12/031, 628
`Response dated April 16, 2010
`Response to Oflicial Action February 18, 2010
`
`Applicant has made a diligent effort to properly respond to the Official Action and
`
`believes that the claims are in condition for allowance. If the Examiner has any remaining
`
`concerns, the Examiner is invited to contact the undersigned at the telephone number set forth
`
`'below so that such concerns may be expeditiously addressed.
`
`Respectfully submitted,
`
`
`
`K&L GATES LLP
`K&L Gates Center
`210 Sixth Avenue
`
`Pittsburgh, Pennsylvania 15222
`(412) 355-8303
`,
`
`17
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`17
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`

`

`
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.0 Box 1450
`Alexandna, Virgmia 22313-1450
`www.uspto gov
`
`12/85 6,099
`
`92223
`
`08/13/2010
`
`Kyle P. Moore
`
`END62l 3IISCNT1/070330CONl
`
`1340
`
`7590
`
`11/22/2011
`
`
`
`
`
`K&L Gates LLP
`210 SD(TII AVENUE
`PITTS BURGH, PA 15222-2613
`
`EXAMINER
`SMITH. SCOTTA
`PAPER NUMBER
`
`DELIVERY MODE
`
`PAPER
`
`ART UNIT
`
`3721
`
`MAIL DATE
`
`11/22/201 1
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`PTOL-90A (Rev. 04/07)
`
`18
`
`18
`
`

`

`
`Application No.
`Applicant(s)
`
`Office Action Summary
`
`12/856,099
`
`MOORE ET AL.
`
`Art Unit
`3721
`
`
`
`Examiner
`SCOTT SMITH
`
`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE 3 MONTH(S) OR THIRTY (30) DAYS,
`WHICHEVER IS LONGER FROM THE MAILING DATE OF THIS COMMUNICATION.
`Extensions of time may be available underthe provisions of 37 CFR1. 136(aI.
`In no event however may a reply be timely filed
`after SIX (I MONTHS from the mailing date of this communication
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date ofthis communication.
`-
`- Failure to reply within the set or extended period for replywill, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office laterthan three months aflerthe mailing date ofthis communication, even iftimely filed, may reduce any
`earned patent term adjustment. See 37 CFR1.704(b).
`
`Status
`
`DIX Responsive to communication(s) filed on 13 August 2010.
`
`2a)|:l This action is FINAL.
`
`2b)IZ This action is non—final.
`
`3)I:| An election was made by the applicant in response to a restriction requirement set forth during the interview on
`_; the restriction requirement and election have been incorporated into this action.
`
`4)|:| Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Exparte Quay/e, 1935 CD. 11, 453 O.G. 213.
`
`Disposition of Claims
`
`5)IZ Claim(s)1—_20is/are pending in the application.
`5a) Of the above Claim(s) _ is/are withdrawn from consideration.
`6 I] Claim 3) _ is/are allowed.
`1_2—0is/are rejected.
`
`is/are objected to.
`are subject to restriction and/or election requirement.
`
`Application Papers
`
`10)|:I The specification is objected to by the Examiner.
`
` Attachment(s)
`
`11)E| The drawing(s) filed on 13 August 2010 is/are: a)IXI accepted or b)|:| objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (cl).
`
`12)|:I The oath or declaration is objected to by the Examiner. Note the attached Office Action or form PTO—152.
`
`Priority under 35 U.S.C. § 119
`
`13)|:I Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`
`a)|:l All
`
`b)I:l Some * c)|:l None of:
`
`1.|:| Certified copies of the priority documents have been received.
`2.|:| Certified copies of the priority documents have been received in Application No. _
`
`3.I:I Copies of the certified copies of the priority documents have been received in this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
`
`* See the attached detailed Office action for a list of the certified copies not received.
`
`1) E Notice of References Cited (PTO-892)
`2) D Notice of Draftsperson‘s Patent Drawing Review (PTO-948)
`3) E Information Disclosure Statement(s) (PTO/SB/OS)
`Paper No(s)/Mai| Date 3/10/11 (2!.
`U.S. Patent and Trademark Office
`PTOL'326 (Rev. 03'1 1)
`
`4) D Interview Summary (PTO-413)
`Paper N°(5)/Ma” Daie- _
`5) I:I NOIICG 0f Informal Patent APPIICEIIIOn
`6) D Other:
`
`Office ACfiOfl Summary
`
`Part of Paper No./Mai| Date 20111119
`
`19
`
`
`
`19
`
`

`

`Application/Control Number: 12/856,099
`Art Unit: 3721
`
`Page 2
`
`DETAILED ACTION
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`Double Parenting
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`1.
`
`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
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`and to prevent possible harassment by multiple assignees. A nonstatutory
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`obviousness-type 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 VogeI, 422
`
`F.2d 438, 164 USPQ 619 (CCPA 1970); and 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 a nonstatutory
`
`double patenting ground provided the conflicting application or patent either is shown to
`
`be commonly owned with this application, or claims an invention made as a result of
`
`activities undertaken within the scope of a joint research agreement.
`
`20
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`20
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`

`

`Application/Control Number: 12/856,099
`Art Unit: 3721
`
`Page 3
`
`Effective January 1, 1994, a registered attorney or agent of record may sign a
`
`terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with
`
`37 CFR 3.73(b).
`
`2.
`
`Claims 1-20 are rejected on the ground of nonstatutory obviousness-type double
`
`patenting as being unpatentable over claims 1-18 of U.S. Patent No. 7,793,812.
`
`Although the conflicting claims are not identical, they are not patentably distinct from
`
`each other because they are substantially co-extensive in scope and differ in
`
`terminology used. Further, the claims of the present application appear to be broader in
`
`terms of the independent claims alone, in that they lack the claimed functions inherent
`
`of tool operation. For example, the independent claims of the patent state that the
`
`battery; i.e. power source is moved upon coupling of the loading unit. The present
`
`claims are capable of this function, if desired, and would have been obvious to one
`
`skilled in the art to omit such functional language.
`
`Claim Rejections - 35 USC § 102
`
`3.
`
`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 —
`
`(b) the invention was patented or described in a printed publication in this or a foreign country or in
`public use or on sale in this country, more than one year prior to the date of application for patent in
`the United States.
`
`4.
`
`Claim 1 is rejected under 35 U.S.C. 102(b) as being anticipated by Alesi et al.
`
`5,779,130.
`
`21
`
`21
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`

`

`Application/Control Number: 12/856,099
`Art Unit: 3721
`
`Page 4
`
`Alesi et al. 5,779,130 discloses the loading unit as claimed comprising a cartridge
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`assembly (44); a housing (20) coupled to said cartridge assembly and configured for
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`operable attachment to a surgical instrument; an axial drive assembly (80, 84)
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`supported for selective axial travel through said cartridge assembly from a start position
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`to an end position upon application of a rotary motion thereto; a motor (86) supported
`
`within said housing and operably interfacing with said axial drive assembly to selectively
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`apply said rotary motion thereto; and a power source (98a—98c) axially movable within
`
`said