`

`Application No.
`14/283,729
`
`Applicant(s)
`MOORE ET AL.
`
`Office Action Summary
`
`AIA (First Inventor to File)
`Status
`No
`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address -(cid:173)
`Period for Reply
`
`Examiner
`SCOTT SMITH
`
`Art Unit
`3721
`
`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE ;J. MONTHS 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 )~ Responsive to communication(s) filed on 5/21/14.
`0 A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on __ .
`2a)0 This action is FINAL.
`2b)~ This action is non-final.
`3)0 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)0 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 C.D. 11, 453 O.G. 213.
`
`Disposition of Claims*
`5)~ Claim(s) 21-36 is/are pending in the application.
`5a) Of the above claim(s) __ is/are withdrawn from consideration.
`6)0 Claim(s) __ is/are allowed.
`7)~ Claim(s) 21-36 is/are rejected.
`8)0 Claim(s) __ is/are objected to.
`9)0 Claim(s) __ are subject to restriction and/or election requirement.
`* If any claims have been determined allowable, you may be eligible to benefit from the Patent Prosecution Highway program at a
`participating intellectual property office for the corresponding application. For more information, please see
`http:i/www.uspto.gov/patents/init events/pphiindex.isp or send an inquiry to PPHfeedback(wuspto.aov.
`
`Application Papers
`10)0 The specification is objected to by the Examiner.
`11 )~ The drawing(s) filed on 5/21/14 is/are: a)~ accepted or b)O 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).
`
`Priority under 35 U.S.C. § 119
`12)0 Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
`a)O All b)O Some** c)O None of the:
`Certified copies of the priority documents have been received.
`1.0
`Certified copies of the priority documents have been received in Application No. __ .
`2.0
`Copies of the certified copies of the priority documents have been received in this National Stage
`3.0
`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)
`1) ~ Notice of References Cited (PT0-892)
`2) 0 Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mail Date __ .
`
`3) 0 Interview Summary (PT0-413)
`Paper No(s)/Mail Date. __ .
`4) 0 Other: __ .
`
`U.S. Patent and Trademark Office
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20140808
`
`Ethicon Exhibit 2005.002
`Intuitive v. Ethicon
`IPR2018-00935
`
`

`

`Application/Control Number: 14/283, 729
`Art Unit: 3721
`
`Page 2
`
`The present application is being examined under the pre-AIA first to invent provisions.
`
`DETAILED ACTION
`
`Double Patenting
`
`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
`
`and to prevent possible harassment by multiple assignees. A nonstatutory double
`
`patenting rejection is appropriate where the claims at issue 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 Langi, 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); 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 reference 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. A terminal
`
`disclaimer must be signed in compliance with 37 CFR 1.321 (b).
`
`Ethicon Exhibit 2005.003
`Intuitive v. Ethicon
`IPR2018-00935
`
`

`

`Application/Control Number: 14/283, 729
`Art Unit: 3721
`
`Page 3
`
`The USPTO internet Web site contains terminal disclaimer forms which may be
`
`used. Please visit http://www.uspto.gov/forms/. The filing date of the application will
`
`determine what form 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
`
`http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-l.jsp.
`
`2.
`
`Claims 21-30 are provisionally rejected on the ground of nonstatutory double
`
`patenting as being unpatentable over claims 21-38 of copending Application No.
`
`12/282,494. Although the claims at issue are not identical, they are not patentably
`
`distinct from each other because they are substantially co-extensive in scope in differ
`
`merely in the terminology used. For example, claim 21 of the present application recites
`
`a rotary drive and a linear member coupled thereto which moves axially, whereas claim
`
`21 of application 14/282,494 recites an axial drive supported for axial travel upon
`
`application of a rotary motion of a shaft. These are the same components, merely
`
`worded differently; i.e. the rotary shaft and rotary drive are equivalent, as is the axial
`
`drive and linear member which moves axially. The remaining claims are co-extensive in
`
`scope, or differ in the omission or addition of typical and well known surgical stapler
`
`components not critical to the invention, and such deviations would have been obvious
`
`to the skilled artisan.
`
`Ethicon Exhibit 2005.004
`Intuitive v. Ethicon
`IPR2018-00935
`
`

`

`Application/Control Number: 14/283, 729
`Art Unit: 3721
`
`Page 4
`
`This is a provisional nonstatutory double patenting rejection because the
`
`patentably indistinct claims have not in fact been patented.
`
`Claim Rejections - 35 USC § 102
`
`3.
`
`The following is a quotation of the appropriate paragraphs of pre-AIA 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.
`
`Claims 31-36 are rejected under pre-AIA 35 U.S.C. 102b as being anticipated by
`
`Alesi et al. 5,779,130.
`
`Alesi et al. 5,779,130 discloses a stapling attachment 10 configured to be
`
`operably attached to a surgical instrument system 12, 15, 17, said stapling attachment
`
`comprising a staple cartridge carrier 34; a staple cartridge body 52 supported by said
`
`staple cartridge carrier, wherein said staple cartridge body 52 comprises a proximal end
`
`and a distal end; a plurality of staples removably stored in said staple cartridge body; an
`
`anvil 64 supported relative to said staple cartridge carrier and movable from an open
`
`position to a closed position; a housing 22, wherein said staple cartridge carrier extends
`
`from said housing, and wherein said housing is removably attachable to the surgical
`
`instrument system; an electric motor system 86 configured to produce rotational motion;
`
`and drive means 80, 84 for converting the rotational motion produced by said electric
`
`motor to translational motion to eject said staples from said staple cartridge body, a sled
`
`74, a knife 62, wherein different cartridge bodies could be utilized, and wherein the
`
`Ethicon Exhibit 2005.005
`Intuitive v. Ethicon
`IPR2018-00935
`
`

`

`Application/Control Number: 14/283, 729
`Art Unit: 3721
`
`Page 5
`
`motor receives power when the housing is attached to the surgical system, as broadly
`
`claimed.
`
`Allowable Subject Matter
`
`5.
`
`Claims 21-30 appear to be allowable over the prior art.
`
`Conclusion
`
`6.
`
`The prior art made of record and not relied upon is considered pertinent to
`
`applicant's disclosure. See the attached PT0-892 for related art.
`
`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to SCOTT SMITH whose telephone number is (571 )272-
`
`4469. The examiner can normally be reached on 7:30-6:00 Mon.-Thur ..
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner's
`
`supervisor, Thanh Truong can be reached on 571-272-4472. The fax phone number for
`
`the organization where this application or proceeding is assigned is 571-273-8300.
`
`Ethicon Exhibit 2005.006
`Intuitive v. Ethicon
`IPR2018-00935
`
`

`

`Application/Control Number: 14/283, 729
`Art Unit: 3721
`
`Page 6
`
`Information regarding the status of an application may be obtained from the
`
`Patent Application 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 571-272-1000.
`
`S. Smith
`
`/SCOTT SMITH/
`Primary Examiner, Art Unit 3721
`
`Ethicon Exhibit 2005.007
`Intuitive v. Ethicon
`IPR2018-00935
`
`

`

`PATENT
`Attorney Docket: END6213USCNT7/070330CON7
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Art Unit: 3721
`
`Examiner: Scott A. Smith
`
`In re application of:
`Kyle P. Moore et al.
`
`Serial No.: 14/283, 729
`
`DETACHABLE MOTOR POWERED
`SURGICAL INSTRUMENT
`
`Filed: May 21, 2014
`
`Confirmation No.: 5133
`
`AMENDMENT
`
`Pittsburgh, Pennsylvania 15222
`November 12, 2014
`
`VIA ELECTRONIC FILING
`
`Mail Stop Amendment
`Commissioner for Patents
`P.O. Box 1450
`Alexandria, VA 22313-1450
`
`Commissioner:
`
`Responsive to the Office Action dated August 14, 2014 (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 Specification beginning on Page 2 of this Response;
`
`Listing of the Claims beginning on Page 4 of this Response; and
`
`Remarks beginning on Page 9 of this Response.
`
`Pl-3714931 v2
`
`Ethicon Exhibit 2005.008
`Intuitive v. Ethicon
`IPR2018-00935
`
`

`

`Application No. 14/283, 729
`Response dated November 12, 2014
`Responsive to Office Action dated August 14, 2014
`
`Amendments to the Specification
`
`Please replace paragraph [0142] with the following amended paragraph.
`
`[0142] Applicant of the present application also owns the following patent applications
`
`that have been filed on May 27, 2011 and which are each herein incorporated by
`
`reference in their respective entireties:
`
`U.S. Patent Application Serial No. 13/118,259, entitled SURGICAL INSTRUMENT
`
`WITH WIRELESS COMMUNICATION BETWEEN A CONTROL UNIT OF A ROBOTIC
`
`SYSTEM AND REMOTE SENSOR, U.S. Patent Application Publication No. US 2011-
`
`0295270 A1;
`
`U.S. Patent Application Serial No. 13/118, 194, entitled ROBOTICALL Y(cid:173)
`
`CONTROLLED ENDOSCOPIC ACCESSORY CHANNEL, U.S. Patent Application
`
`Publication No. US 2011-0295242 A 1;
`
`U.S. Patent Application Serial No. 13/118,253, entitled ROBOTICALLY(cid:173)
`
`CONTROLLED MOTORIZED SURGICAL INSTRUMENT, U.S. Patent Application
`
`Publication No. US 2011-0295269 A 1;
`
`U.S. Patent Application Serial No. 13/118,278, entitled ROBOTICALL Y(cid:173)
`
`CONTROLLED SURGICAL STAPLING DEVICES THAT PRODUCE FORMED
`
`STAPLES HAVING DIFFERENT LENGTHS, U.S. Patent Application Publication No. US
`
`2011-0290851 A 1;
`
`U.S. Patent Application Serial No. 13/118, 190, entitled ROBOTICALL Y(cid:173)
`
`CONTROLLED MOTORIZED CUTTING AND FASTENING INSTRUMENT, U.S. Patent
`
`Application Publication No. US 2011-0288573 A 1;
`
`U.S. Patent Application Serial No. 13/118,223, entitled ROBOTICALL Y(cid:173)
`
`CONTROLLED SHAFT BASED ROTARY DRIVE SYSTEMS FOR SURGICAL
`
`INSTRUMENTS, U.S. Patent Application Publication No. US 2011-0290854 A1;
`
`2
`
`Ethicon Exhibit 2005.009
`Intuitive v. Ethicon
`IPR2018-00935
`
`

`

`Application No. 14/283, 729
`Response dated November 12, 2014
`Responsive to Office Action dated August 14, 2014
`
`U.S. Patent Application Serial No. 13/118,263, entitled ROBOTICALL Y(cid:173)
`
`CONTROLLED SURGICAL INSTRUMENT HAVING RECORDING CAPABILITIES, U.S.
`
`Patent Application Publication No. US 2011 0290856 A1 US 2011-0295295 A1;
`
`U.S. Patent Application Serial No. 13/118,272, entitled ROBOTICALL Y(cid:173)
`
`CONTROLLED SURGICAL INSTRUMENT WITH FORCE FEEDBACK CAPABILITIES,
`
`U.S. Patent Application Publication No. US 2011-0290856 A1;
`
`U.S. Patent Application Serial No. 13/118,246, entitled ROBOTICALL Y-DRIVEN
`
`SURGICAL INSTRUMENT WITH E-BEAM DRIVER, U.S. Patent Application Publication
`
`No. US 2011-0290853 A1; and
`
`U.S. Patent Application Serial No. 13/118,241, entitled SURGICAL STAPLING
`
`INSTRUMENTS WITH ROTATABLE STAPLE DEPLOYMENT ARRANGEMENTS, U.S.
`
`Patent Application Publication No. US 2012-0298719 A1.
`
`3
`
`Ethicon Exhibit 2005.010
`Intuitive v. Ethicon
`IPR2018-00935
`
`

`

`Application No. 14/283, 729
`Response dated November 12, 2014
`Responsive to Office Action dated August 14, 2014
`
`Listing of the Claims
`
`The following Listing of the Claims replaces all prior Listing(s) of the Claims in the
`
`Subject Application.
`
`1-20. (Canceled)
`
`21.
`
`(Previously Presented)
`
`A disposable loading unit configured to be operably
`
`attached to a surgical instrument which is configured to selectively generate at least one
`
`control motion for the operation of said disposable loading unit, said disposable loading
`
`unit comprising:
`
`a carrier operably supporting a cartridge assembly therein;
`
`an anvil supported relative to said carrier and being movable from an open
`
`position to closed positions upon application of at least one control motion thereto;
`
`a housing coupled to said carrier, said housing including means for removably
`
`attaching said housing to the surgical instrument;
`
`a rotary drive at least partially supported within said housing;
`
`a motor supported within said housing and operably interfacing with said rotary
`
`drive to selectively apply a rotary motion thereto, wherein said motor is configured to
`
`receive power from a power source such that said motor can only selectively receive
`
`power from said power source when said means for removably attaching said housing to
`
`the surgical instrument is operably coupled to the surgical instrument; and
`
`a linear member coupled with said rotary drive which moves axially upon the
`
`application of a rotary motion thereto from said motor.
`
`22.
`
`(Previously Presented)
`
`The disposable loading unit of Claim 21, wherein said
`
`cartridge assembly comprises a plurality of staples removably stored therein.
`
`23.
`
`(Previously Presented)
`
`The disposable loading unit of Claim 22, wherein said
`
`linear member comprises a sled movable between a start position and an end position to
`
`eject said staples from said cartridge assembly.
`
`4
`
`Ethicon Exhibit 2005.011
`Intuitive v. Ethicon
`IPR2018-00935
`
`

`

`Application No. 14/283, 729
`Response dated November 12, 2014
`Responsive to Office Action dated August 14, 2014
`
`24.
`
`(Previously Presented)
`
`The disposable loading unit of Claim 23, wherein said
`
`linear member further comprises a knife configured to incise tissue captured between
`
`said anvil and said cartridge assembly.
`
`25.
`
`(Previously Presented)
`
`The disposable loading unit of Claim 21, wherein said
`
`cartridge assembly is configured to be removed from said carrier and replaced with a
`
`different cartridge assembly.
`
`26.
`
`(Previously Presented)
`
`A stapling sub-system configured to be operably
`
`engaged with a surgical instrument system, said stapling sub-system comprising:
`
`a staple cartridge carrier;
`
`a staple cartridge assembly supported by said staple cartridge carrier;
`
`an anvil supported relative to said staple cartridge carrier and movable from an
`
`open position to a closed position;
`
`a housing, wherein said staple cartridge carrier extends from said housing, and
`
`wherein said housing comprises a housing connector removably attachable to the
`
`surgical instrument system; and
`
`a rotary drive system, comprising
`
`a rotary shaft;
`
`a translatable drive member operably engaged with said rotary shaft,
`
`wherein said translatable drive member is selectively translatable through said staple
`
`cartridge assembly from a start position to an end position when a rotary motion is
`
`applied to said rotary shaft; and
`
`an electric motor operably interfacing with said rotary shaft to selectively
`
`apply said rotary motion to said rotary shaft, wherein said electric motor is operably
`
`disconnected from its power source when said housing is not attached to the surgical
`
`instrument system, and wherein said electric motor is operably connected to its power
`
`source when said housing is attached to the surgical instrument system.
`
`5
`
`Ethicon Exhibit 2005.012
`Intuitive v. Ethicon
`IPR2018-00935
`
`

`

`Application No. 14/283, 729
`Response dated November 12, 2014
`Responsive to Office Action dated August 14, 2014
`
`27.
`
`(Previously Presented)
`
`The stapling sub-system of Claim 26, wherein said
`
`staple cartridge assembly comprises a plurality of staples removably stored therein.
`
`28.
`
`(Previously Presented)
`
`The stapling sub-system of Claim 27, wherein said
`
`translatable drive member comprises a sled movable between said start position and
`
`said end position to eject said staples from said staple cartridge assembly.
`
`29.
`
`(Previously Presented)
`
`The stapling sub-system of Claim 28, wherein said
`
`translatable drive member further comprises a knife configured to incise tissue captured
`
`between said anvil and said cartridge assembly.
`
`30.
`
`(Previously Presented)
`
`The stapling sub-system of Claim 26, wherein said
`
`staple cartridge assembly is configured to be removed from said staple cartridge carrier
`
`and replaced with a different staple cartridge assembly.
`
`31.
`
`(Currently Amended)
`
`A stapling attachment configured to be operably
`
`attached to a surgical instrument system, said stapling attachment comprising:
`
`a staple cartridge carrier;
`
`a staple cartridge body supported by said staple cartridge carrier, wherein said
`
`staple cartridge body comprises a proximal end and a distal end;
`
`a plurality of staples removably stored in said staple cartridge body;
`
`an anvil supported relative to said staple cartridge carrier and movable from an
`
`open position to a closed position;
`
`a housing, wherein said staple cartridge carrier extends from said housing, and
`
`wherein said housing is removably attachable to the surgical instrument system;
`
`an electric motor system configured to produce rotational motion, wherein said
`
`electric motor selectively receives power from a power source only when said housing is
`
`coupled to said surgical instrument system; and
`
`drive means for converting the rotational motion produced by said electric motor
`
`to translational motion to eject said staples from said staple cartridge body.
`
`6
`
`Ethicon Exhibit 2005.013
`Intuitive v. Ethicon
`IPR2018-00935
`
`

`

`Application No. 14/283, 729
`Response dated November 12, 2014
`Responsive to Office Action dated August 14, 2014
`
`32.
`
`(Previously Presented)
`
`The stapling attachment of Claim 31, wherein said
`
`drive means comprises a sled movable between a proximal position and a distal position
`
`to eject said staples from said staple cartridge body.
`
`33.
`
`(Previously Presented)
`
`The stapling attachment of Claim 32, wherein said
`
`drive means further comprises a knife configured to incise tissue captured between said
`
`anvil and said staple cartridge body.
`
`34.
`
`(Previously Presented)
`
`The stapling attachment of Claim 31, wherein said
`
`staple cartridge body is configured to be removed from said staple cartridge carrier and
`
`replaced with a different staple cartridge body.
`
`35.
`
`(Canceled)
`
`36.
`
`(Previously Presented)
`
`The stapling attachment of Claim 31, wherein the
`
`translational motion is directed toward said distal end.
`
`37.
`
`(New) A loading unit configured to be operably attached to a surgical instrument
`
`which is configured to selectively generate at least one control motion for the operation
`
`of said loading unit, said loading unit comprising:
`
`an end effector;
`
`a housing including means for removably attaching said housing to the surgical
`
`instrument;
`
`a rotary drive at least partially supported within said housing;
`
`a motor supported within said housing and operably interfacing with said rotary
`
`drive to selectively apply a rotary motion thereto, wherein said motor is configured to
`
`receive power from a power source such that said motor can only selectively receive
`
`power from said power source when said means for removably attaching said housing to
`
`the surgical instrument is operably coupled to the surgical instrument; and
`
`a linear member coupled with said rotary drive which moves axially upon the
`
`application of a rotary motion thereto from said motor.
`
`7
`
`Ethicon Exhibit 2005.014
`Intuitive v. Ethicon
`IPR2018-00935
`
`

`

`Application No. 14/283, 729
`Response dated November 12, 2014
`Responsive to Office Action dated August 14, 2014
`
`38.
`
`(New) A stapling sub-system configured to be operably engaged with a surgical
`
`instrument system, said stapling sub-system comprising:
`
`a stapling portion;
`
`a housing, wherein said stapling portion extends from said housing, and wherein
`
`said housing comprises a housing connector removably attachable to the surgical
`
`instrument system; and
`
`a rotary drive system, comprising
`
`a rotary shaft;
`
`a translatable drive member operably engaged with said rotary shaft,
`
`wherein said translatable drive member is selectively translatable through said stapling
`
`portion from a start position to an end position when a rotary motion is applied to said
`
`rotary shaft; and
`
`an electric motor operably interfacing with said rotary shaft to selectively
`
`apply said rotary motion to said rotary shaft, wherein said electric motor is operably
`
`disconnected from its power source when said housing is not attached to the surgical
`
`instrument system, and wherein said electric motor is operably connected to its power
`
`source when said housing is attached to the surgical instrument system.
`
`39.
`
`(New) A stapling attachment configured to be operably attached to a surgical
`
`instrument system, said stapling attachment comprising:
`
`a staple cartridge body comprising a proximal end and a distal end;
`
`a plurality of staples removably stored in said staple cartridge body;
`
`an anvil supported relative to said staple cartridge body;
`
`a housing removably attachable to the surgical instrument system;
`
`an electric motor configured to produce rotational motion, wherein said electric
`
`motor selectively receives power from a power source only when said housing is coupled
`
`to said surgical instrument system; and
`
`drive means for converting the rotational motion produced by said electric motor
`
`to translational motion to eject said staples from said staple cartridge body.
`
`8
`
`Ethicon Exhibit 2005.015
`Intuitive v. Ethicon
`IPR2018-00935
`
`

`

`Application No. 14/283, 729
`Response dated November 12, 2014
`Responsive to Office Action dated August 14, 2014
`
`Status of the Claims
`
`Remarks
`
`Claims 21-34 and 36-39 are pending in the Subject Application. Claim 35 has
`
`been canceled by the Present Amendment without disclaimer or prejudice. Claims 37-39
`
`are new.
`
`Allowable Subject Matter
`
`Applicant appreciates the indication of allowable subject matter in Claims 21-30.
`
`Non-statutory Double Patenting Rejection
`
`Claims 21-30 stand rejected based on the judicially created doctrine of
`
`obviousness-type double patenting over Claims 21-38 of commonly-owned, co-pending
`
`U.S. Patent Application No. 14/282,494. Without admitting to the propriety of the
`
`rejection and expressly reserving the right to challenge the rejection in the future,
`
`Applicant submits a Terminal Disclaimer to overcome this rejection and advance at least
`
`Claims 21-30 of the Subject Application to allowance. The Office is hereby authorized to
`
`charge Deposit Account No. 02-1818 for the Terminal Disclaimer Fee and any other fees
`
`associated with this Response.
`
`Rejections under pre-AIA 35 U.S.C. § 102(b)
`
`Claims 31-34 and 36 stand rejected under pre-AIA 35 U.S.C. § 102(b) as being
`
`anticipated by U.S. Patent No. 5,779,130 to Alesi ("Alesi '130"). Without admitting to or
`
`acquiescing to any of the assertions made in the Official Action concerning Alesi '130
`
`and expressly reserving the right to challenge any of such assertions in the future,
`
`Applicant respectfully traverses the anticipation rejections in light of the amendments
`
`made thereto.
`
`Applicant has amended Claim 31 to recite, in part, a stapling attachment
`
`configured to be operably attached to a surgical instrument system, the stapling
`
`attachment comprising: a housing, wherein the staple cartridge carrier extends from the
`
`housing, and wherein the housing is removably attachable to the surgical instrument
`
`system, and an electric motor configured to produce rotational motion, wherein the
`
`9
`
`Ethicon Exhibit 2005.016
`Intuitive v. Ethicon
`IPR2018-00935
`
`

`

`Application No. 14/283, 729
`Response dated November 12, 2014
`Responsive to Office Action dated August 14, 2014
`
`electric motor selectively receives power from a power source only when the
`housing is coupled to the surgical instrument system. Alesi '130 does not disclose
`
`or suggest this.
`
`New Claims
`
`Claims 37-39 are new. The Applicant believes that Claims 37-39 are patentable
`
`over the cited art.
`
`Status of Commonly-Owned Applications
`
`Applicant is the owner of the applications identified below. Applicant has set forth
`
`the status of these applications as presently understood by Applicant. Applicant
`
`presumes that the Examiner can obtain copies of the US PTO file histories and related
`
`documents for the identified applications. Should the Examiner be unable to obtain such
`
`documents, please contact Applicant's undersigned Attorney and copies of any
`
`necessary documents will be immediately provided.
`
`U.S. Patent Application Serial No. 13/832,522, entitled DETACHABLE MOTOR
`POWERED SURGICAL INSTRUMENT; Status: Applicant has not yet received an
`
`Action on the merits.
`
`U.S. Patent Application Serial No. 13/118,210 entitled ROBOTICALLY(cid:173)
`
`CONTROLLED DISPOSABLE MOTOR-DRIVEN LOADING UNIT; Status: Now U.S.
`
`Patent No. 8,752,749.
`
`U.S. Patent Application Serial No. 12/856,099, entitled DISPOSABLE MOTOR(cid:173)
`
`DRIVEN LOADING UNIT FOR USE WITH A SURGICAL CUTTING AND STAPLING
`APPARATUS; Status: Now U.S. Patent No. 8,196,795.
`
`U.S. Patent Application Serial No. 12/031,628, entitled DISPOSABLE MOTOR(cid:173)
`
`DRIVEN LOADING UNIT FOR USE WITH A SURGICAL CUTTING AND STAPLING
`APPARATUS; Status: Now U.S. Patent No. 7,793,812.
`
`10
`
`Ethicon Exhibit 2005.017
`Intuitive v. Ethicon
`IPR2018-00935
`
`

`

`Application No. 14/283, 729
`Response dated November 12, 2014
`Responsive to Office Action dated August 14, 2014
`
`U.S. Patent Application Serial No. 13/118,259, entitled SURGICAL INSTRUMENT
`
`WITH WIRELESS COMMUNICATION BETWEEN A CONTROL UNIT OF A ROBOTIC
`
`SYSTEM AND REMOTE SENSOR, Status: Now U.S. Patent No. 8,684,253.
`
`U.S. Patent Application Serial No. 13/118, 194, entitled ROBOTICALL Y(cid:173)
`
`CONTROLLED ENDOSCOPIC ACCESSORY CHANNEL; Status: A Notice of
`
`Allowance was mailed on July 15, 2014. A Request for Continued Examination and
`
`Information Disclosure Statement were filed on September 26, 2014.
`
`U. S. Patent Application Serial No. 13/118,253, entitled ROBOTICALL Y(cid:173)
`
`CONTROLLED MOTORIZED SURGICAL INSTRUMENT; Status: A Non-Final Office
`
`Action was mailed on November 6, 2014. Applicant has not yet responded to that
`
`Action.
`
`U.S. Patent Application Serial No. 13/118,278, entitled ROBOTICALL Y(cid:173)
`
`CONTROLLED SURGICAL STAPLING DEVICES THAT PRODUCE FORMED
`
`STAPLES HAVING DIFFERENT LENGTHS; Status: A Non-Final Office Action was
`
`mailed on July 8, 2014. Applicant has not yet responded to that Action.
`
`U.S. Patent Application Serial No. 13/118, 190, entitled ROBOTICALL Y(cid:173)
`
`CONTROLLED MOTORIZED SURGICAL CUTTING AND FASTENING INSTRUMENT;
`Status: A Non-Final Office Action was mailed on October 9, 2014. Applicant has not
`
`yet responded to that Action.
`
`U.S. Patent Application Serial No. 13/118,223, entitled ROBOTICALL Y(cid:173)
`
`CONTROLLED SHAFT BASED ROTARY DRIVE SYSTEMS FOR SURGICAL
`
`INSTRUMENTS; Status: A Notice of Allowance was mailed on September 22, 2014.
`
`U.S. Patent Application Serial No. 13/118,263, entitled ROBOTICALL Y(cid:173)
`
`CONTROLLED SURGICAL INSTRUMENT HAVING RECORDING CAPABILITIES;
`Status: This application has been abandoned.
`
`U.S. Patent Application Serial No. 13/118,272, entitled ROBOTICALL Y(cid:173)
`
`CONTROLLED SURGICAL INSTRUMENT WITH FORCE-FEEDBACK CAPABILITIES;
`
`Status: This application has been abandoned.
`
`11
`
`Ethicon Exhibit 2005.018
`Intuitive v. Ethicon
`IPR2018-00935
`
`

`

`Application No. 14/283, 729
`Response dated November 12, 2014
`Responsive to Office Action dated August 14, 2014
`
`U.S. Patent Application Serial No. 13/118,246, entitled ROBOTICALL Y-DRIVEN
`
`SURGICAL INSTRUMENT WITH E-BEAM DRIVER; Status: A Notice of Allowance was
`
`mailed on October 27, 2014.
`
`U.S. Patent Application Serial No. 13/118,241, entitled SURGICAL STAPLING
`
`INSTRUMENTS WITH ROTATABLE STAPLE DEPLOYMENT ARRANGEMENTS;
`
`Status: A Final Office Action was mailed on October 16, 2014. Applicant has not yet
`
`responded to that Action.
`
`***************
`
`U.S. Patent Application Serial No. 14/281,177, entitled DETACHABLE MOTOR
`POWERED SURGICAL INSTRUMENT; Status: Applicant has not yet received an
`
`Action on the merits.
`
`U.S. Patent Application Serial No. 14/282,494, entitled DETACHABLE MOTOR
`POWERED SURGICAL INSTRUMENT; Status: A Non-Final Office Action was mailed
`
`on August 14, 2014. Applicant has not yet responded to that Action.
`
`U.S. Patent Application Serial No. 13/369,666, entitled ROBOTICALL Y(cid:173)
`
`CONTROLLED SURGICAL END EFFECTOR SYSTEM WITH ROTARY ACTUATED
`CLOSURE SYSTEMS; Status: Now U.S. Patent No. 8,573,465.
`
`U.S. Patent Application Serial No. 13/023,238, entitled DISPOSABLE MOTOR(cid:173)
`
`DRIVEN LOADING UNIT FOR USE WITH A SURGICAL CUTTING AND STAPLING
`
`APPARATUS; Status: Now U.S. Patent No. 8,540,130.
`
`U.S. Patent Application Serial No. 11/651,807, entitled SURGICAL INSTRUMENT
`
`WITH WIRELESS COMMUNICATION BETWEEN CONTROL UNIT AND REMOTE
`SENSOR; Status: Now U.S. Patent No. 8,459,520.
`
`U.S. Patent Application Serial No. 13/369,609, entitled DRIVE INTER