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 .
Response to Amendment
This Office Action is responsive to the amendment filed on 06/02/2026. As directed by the amendment: Claims 1, 6, 12-13, and 23 have been amended, claims 4 and 26 have been cancelled, and no claims have been added. Thus, claims 1-3 and 5-25 are presently under consideration in this application.
Response to Arguments
Applicant's arguments, see pages 8-9, filed 06/02/2026 regarding 35 U.S.C. 103 have been fully considered but they are persuasive. Amendments to the claim obviate the rejection of record. Therefore, the rejection is withdrawn. See updated rejection below.
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 1-3 and 5-25 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.
Claim 1 recites the limitation "the electrical pole conductors" in line 7, 8, and 9. There is insufficient antecedent basis for this limitation in the claim. Claim 1 line 6 recites “two electrical pole conductors”.
Regarding claim 1, it is unclear if the “one electrical pole conductor” of line 13 and 18 is a part of the “two electrical pole conductors” of line 5 or a different electrical pole conductor.
Claim 1 recites the limitation "the tool piece" in line 13. There is insufficient antecedent basis for this limitation in the claim. Claim 1 line 3 recites “at least one tool piece”.
Claim 2 recites the limitation "the electrical potential" in line 4. There is insufficient antecedent basis for this limitation in the claim.
Claim 2 recites the limitation "the tool piece" in line 5. There is insufficient antecedent basis for this limitation in the claim. Claim 1 line 3 recites “at least one tool piece”.
Claim 12 recites the limitation "the electrical pole conductors" in line 7, 8, and 9. There is insufficient antecedent basis for this limitation in the claim. Claim 1 line 5 recites “two electrical pole conductors”.
Claim 12 recites the limitation "the tool piece" in line 13 and 15. There is insufficient antecedent basis for this limitation in the claim. Claim 1 line 3 recites “at least one tool piece”.
Regarding claim 12, it is unclear if the “one electrical pole conductor” of line 13 and 18 is a part of the “two electrical pole conductors” of line 5 or a different electrical pole conductor.
Claim 12 recites the limitation "the second electrical pole conductor" in line 25. There is insufficient antecedent basis for this limitation in the claim.
Claim 13 recites the limitation "the second electrical pole conductor" in line 5. There is insufficient antecedent basis for this limitation in the claim.
Claims 2-3, 5-11, and 13-25 are rejected due to their dependency on the dependent claims.
Claim Rejections - 35 USC § 103
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.
Claim(s) 1-3, 5, 8-20, and 23-25 are rejected under 35 U.S.C. 103 as being unpatentable over Bacher et al. (US 20130053835)(Hereinafter Bacher) in view of Castro et al. (US 20160066939)(Hereinafter Castro) and Dorn (US 6334860)(Hereinafter Dorn).
Regarding claim 1 and 12, Bacher teaches an An endoscopic device (Abstract “A shaft for a micro-invasive surgical instrument”) comprising:
a shaft, the shaft having an end effector which is arranged at one end segment of the shaft (Abstract “a shaft tube with a proximal end portion and a distal end portion”) and which comprises at least one tool piece (Abstract “the shaft with a tool”),
one actuating unit which is configured to actuate the end effector and at least part of which extends through the shaft (Claim 10 “an actuation device (57) to rotate a transmission rod that is positioned in the shaft and whose distal end portion is coupled with the tool”) and…, and with a linear movement converter which couples the end effector and the actuating unit to one another ([0035] lines 4-6 “an actuation device to rotate a transmission rod, which is positioned in the shaft and whose distal end portion is coupled with the tool.” Linear movement converter 254 of Fig. 10 and 11 is shown to be moving linear mechanical movement between the two figures.), at least, …
wherein the linear movement converter includes at least one thrust and/or traction piston which is connected to the actuating unit ([0018] line 2 and [0019] lines 1-6 “the rotation bearing may be, in particular, configured as a Radiax bearing. … A Radiax bearing is a combination … axial bearing [thrust] that prevents the translational degree of freedom parallel to the longitudinal axis..” The axial bearing’s function is the same as that of the thrust which is to prevent translation. [0091] lines 2-9 “the rotation bearing 60 on the distal end portion 31 of the shaft 30 allows a rotation of the sleeve device formed by the sleeves 65, 67 and the tool 20 coupled with it together with the transmission rod 40 in relation to the shaft tube 301 of the shaft 30 about the longitudinal axis 29 of the tool 20. This rotation can, in particular, be powered by the rotary wheel 57 shown in FIGS. 1 and 2” The actuating unit can be seen in Fig. 1 (57) and connected to the electrical pole conductor and is connected to the thrust.);
and the linear movement converter electrically connects, at least in part, the second electrical pole conductor to a further tool piece of the end effector (Fig. 10-13 where the transmission rod 40 electrically connects with the further tool piece, see the arrow of Fig. 13.)
and the linear movement converter comprises a pair of pivot lever which are configured to translate a linear movement of the actuating unit to a pivoting movement of the tool piece ([0070] “The transmission rod 50 comprises two joints 415, 416 on the distal end portion 41. A first piston rod 256 connects the first joint 415 [first lever] on the distal end portion 41 of the transmission rod 40 with a joint 258 on the first jaw member 25 that is at a distance from an axle 232. A second piston rod 266 connects the second joint 416 [second lever] on the distal end portion 41 of the transmission rod 40 with a joint 268 on the second jaw member 26 that is distanced from the axle 232. From a comparison of FIGS. 3 through 5 it can be recognized that a linear sliding [linear movement] of the transmission rod” Examiner notes that the actuation unit is creating the linear movement from the rotation bearing, then causing the linear translation of the movement converter.).
However, Bacher does not teach an electrical pole conductor electrically connected to the tool piece to create an electrical potential, within the embodiment. Nevertheless, in another embodiment in Bacher, Bacher teaches which has two electrical pole conductor configured to provide different electrical potentials ([0096] lines 3-6 “bipolar electro-surgical application in which an electric current or an electric field can be generated between the jaw members 25, 26. For this purpose the transmission rod 40 comprises an insulating mantle 422 of an electrically insulating material,” In an electric field, the electric potentials of the first and second electrical pole conductors must have different potentials.)… , a second of the electrical pole conductors is at a second, different electrical potential ([0096] lines 3-6 “bipolar electro-surgical application in which an electric current or an electric field can be generated between the jaw members 25, 26. For this purpose the transmission rod 40 comprises an insulating mantle 422 of an electrically insulating material,” In an electric field, the electric potentials of the first and second electrical pole conductors must have different potentials.);
wherein the linear movement converter is electrically conductive in part ([0098] “The current path 75 leads to the first jaw member 25 by way of the transmission rod 40, the joint 255 between the transmission rod 40 and the lever 254, and the lever 254.”) and electrically connects one electrical pole conductor to the tool piece ([0098] lines 4-21“Rather, the insulating mantle 422 of the transmission rod 40 is not hatched; the first jaw member 25 and all components connected electrically conductively with it in the direction from left below to right above are shown hatched … The current path 76 leads to the second jaw member 26 by way of the shaft tube 301, the collar component 63, the contacts 288, spring tongues 287 and other areas of the coupling component 28, the joint device 23 with the prongs 231” View Fig. 13(current path arrow) for current path.)
and the at least one thrust and/or traction piston comprises at least one electrical pole conductor extension the at least one electrical pole conductor extension is at least partially covered with an insulating material and is electrically and/or mechanically connected to one electrical pole conductor of the actuating unit (It can be seen that insulation material 44 is partially covering the electrical pole conductor extension in Figs. 12-13, which Examiner interprets the start of the electrical pole conductor extension to begin at the point in which the horizontal line of the electrical pole conductor slants. [0032] “a sleeve component with a distal portion” As seen in the image, the slanted extension region (sleeve) is covered, in part, with insulating material 422 and darkened in a black color. [0035] lines 4-5 “an actuation device to rotate a transmission rod” Additionally, the electrical conductor rod 40 can be seen mechanically connected in Fig. 12 to the extension and the actuating unit can be seen in Fig.1 with the diagram of the proximal end.). Therefore, we find that a person with ordinary skill in the art would have modified Bacher's non-electrified embodiment (e.g., Bacher, Figs. 1-5, III 51-84) to include the electrical concepts and techniques taught in Bacher's alternate, electrified embodiment (id., Figs. 12-13, III 93-98)-or modified Bacher’s electrified embodiment to include the pivoting jaws and mechanical capabilities of Bacher’s non-electrified embodiment—to arrive at the claimed invention because a skilled artisan would have known to add a return pad or electrode on the patient to provide a current path back to the opposite terminal of the current generator in order to complete the circuit. See, e.g., Bacher Figs. 12—13 (element 40); Artale J 52, 54. Alternatively, if Bacher were modified to have two electrical pole conductors (bipolar), a skilled artisan would have known that the current would pass only through the tissue being grasped by the jaws, and then back to the current generator to complete the circuit. See Artale { 5. In other words, a skilled artisan in the electrical or medical technology arts would have understood how to modify Bacher’s non-electrified device so as to supply electrical current to both jaws and complete the circuit, either by incorporating concepts described and shown in Figure 13 of Bacher or in another conventional way. For a person of ordinary skill in the art, making such modifications would have required nothing more than a predictable application of a known technique to a known device ready for improvement. See KSR, 550 U.S. at 416-417. A skilled artisan would have also understood how to modify Bacher’s electrified device with a second pivot rod so that jaw 26 could be pivotable and electrified in a workable, electrically sound way. See id. at 418. We see no reason why it would have been “uniquely challenging or difficult for one of ordinary skill in the art” or “represented an unobvious step over the prior art” to modify Bacher as discussed above. Leapfrog Enters., Inc. v. Fisher- Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418-19).
However, Bacher does not teach a deflection mechanism, the deflection mechanism including one or more first connecting links and one or more second connecting links, at least one of the one or more first connecting links having opposed concave surfaces, and at least one of the one or more second connecting links having opposed convex surfaces, wherein one of the opposed concave surfaces and one of the opposed convex surfaces cooperate with one another in a ball-and-socket configuration. Castro, in the same field of endeavor, teaches an endoscopic device with end effectors for surgical use (Abstract), and further teaches a deflection mechanism ([0163] “FIGS. 5A and 5B are perspective views illustrating articulation ranges [deflection mechanism]”), the deflection mechanism including one or more first connecting links and one or more second connecting links, at least one of the one or more first connecting links having opposed concave surfaces, and at least one of the one or more second connecting links having opposed convex surfaces (See Fig. 4A and 4B where SR2 is the convex surface that is a semi-sphere that links to SR3 cutout of a semi-sphere of the concave surface.), wherein one of the opposed concave surfaces and one of the opposed convex surfaces cooperate with one another in a ball-and-socket configuration (Fig. 5A shows the bending of the surfaces in series where semi sphere surfaces meet is a ball-and-socket configuration because the concave surface is the “ball” and the “socket” is the convex surface.) to be capable of performing less invasive medical techniques from outside the body ([0013]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify endoscopic device containing a shaft by Bacher, with the deflection mechanism, the deflection mechanism including one or more first connecting links and one or more second connecting links, at least one of the one or more first connecting links having opposed concave surfaces, and at least one of the one or more second connecting links having opposed convex surfaces, wherein one of the opposed concave surfaces and one of the opposed convex surfaces cooperate with one another in a ball-and-socket configuration of Castro because such a modification would allow to be capable of performing less invasive medical techniques from outside the body.
However, Bacher in view of Castro do not teach which has two electrical pole conductor configured … a first of the electrical pole conductors is at a first electrical potential and coaxially surrounded by a first insulation, a second of the electrical pole conductors … surrounds the first of the electrical pole conductor and is surrounded coaxially by a second insulation. Dorn, in the same field of endeavor, teaches a bipolar tubular shaft with jaws that are conductive (Abstract), similar to the device of Bacher, and further teaches a first of the electrical pole conductors is at a first electrical potential and coaxially surrounded by a first insulation, a second of the electrical pole conductors … coaxially surrounds the first of the electrical pole conductor and is surrounded coaxially by a second insulation (See Fig. 3 where the first electrical pole conductor 52 is in the center and the second electrical pole conductor 54 is coaxial to the first electrical pole conductor, within the tube 74. Col. 6 lines 27-29 “The electrical lines 52 [first], 54 [second] are formed as thin, flexible wires [coaxially] surrounded by an insulating mantle.” Examiner notes that the “surrounded coaxially by a second insulation” is interpreted as the second electrical pole conductor that is coaxially surrounded by a second insultation.) to avoid short-circuiting of the jaw parts (Col. 1 lines 43-46). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify endoscopic device containing a shaft by Bacher in view of Castro, with the has two electrical pole conductor configured … a first of the electrical pole conductors is at a first electrical potential and coaxially surrounded by a first insulation, a second of the electrical pole conductors … surrounds the first of the electrical pole conductor and is surrounded coaxially by a second insulation of Dorn, because such a modification would allow to avoid short-circuiting of the jaw parts.
Regarding claim 2, Bacher does not teach and electrical pole conductor electrically connected to a the tool piece to create an electrical potential from a force path, within the embodiment. Nevertheless, in another embodiment in Bacher, Bacher teaches wherein at least one mechanical force path of the linear movement converter, via which force path force is transmitted from the actuating unit to the tool piece, and at least one electrically conductive path of the linear movement converter, via which conductive path the electrical potential is transmitted to the tool piece, are at least substantially identical ([0003] lines 15-22 “The proximal end portion and the distal end portion of the transmission rod are coupled with the actuation device or with the tool in such a way that a force exerted by medical staff onto the actuation devices or a relative movement of the actuation devices caused by medical staff can be transmitted to the tool, for example to move clamps toward one another or to press them together.” [0098] lines 4-21 “Rather, the insulating mantle 422 of the transmission rod 40 is not hatched; the first jaw member 25 and all components connected electrically conductively with it in the direction from left below to right above are shown hatched … The current path 76 leads to the second jaw member 26 by way of the shaft tube 301, the collar component 63, the contacts 288, spring tongues 287 and other areas of the coupling component 28, the joint device 23 with the prongs 231” View Fig. 13(current path arrow) for current path.). Therefore, we find that a person with ordinary skill in the art would have modified Bacher's non-electrified embodiment (e.g., Bacher, Figs. 1-5, III 51-84) to include the electrical concepts and techniques taught in Bacher's alternate, electrified embodiment (id., Figs. 12-13, III 93-98)-or modified Bacher’s electrified embodiment to include the pivoting jaws and mechanical capabilities of Bacher’s non-electrified embodiment—to arrive at the claimed invention because a skilled artisan would have known to add a return pad or electrode on the patient to provide a current path back to the opposite terminal of the current generator in order to complete the circuit. See, e.g., Bacher Figs. 12—13 (element 40); Artale J 52, 54. Alternatively, if Bacher were modified to have two electrical pole conductors (bipolar), a skilled artisan would have known that the current would pass only through the tissue being grasped by the jaws, and then back to the current generator to complete the circuit. See Artale { 5. In other words, a skilled artisan in the electrical or medical technology arts would have understood how to modify Bacher’s non-electrified device so as to supply electrical current to both jaws and complete the circuit, either by incorporating concepts described and shown in Figure 13 of Bacher or in another conventional way. For a person of ordinary skill in the art, making such modifications would have required nothing more than a predictable application of a known technique to a known device ready for improvement. See KSR, 550 U.S. at 416-417. A skilled artisan would have also understood how to modify Bacher’s electrified device with a second pivot rod so that jaw 26 could be pivotable and electrified in a workable, electrically sound way. See id. at 418. We see no reason why it would have been “uniquely challenging or difficult for one of ordinary skill in the art” or “represented an unobvious step over the prior art” to modify Bacher as discussed above. Leapfrog Enters., Inc. v. Fisher- Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418-19).
Regarding claim 3, Bacher does not teach a linear movement converter with insulating material for transmitting electrical potential, within the embodiment. Nevertheless, in another embodiment in Bacher, Bacher teaches wherein the linear movement converter includes an insulating material ([0096] “which electrically insulates the transmission rod 40 with respect to the shaft tube 301, the collar component [part of the movement converter] 63,”), wherein portions of components of the linear movement converter which are used to transmit movement from the actuating unit to the tool piece are configured free of the insulating material (Fig. 10-12 (60,70) outside regions are free from insulation material 422.), and are configured to transmit the electrical potential ([0097] lines 7-9 “the second jaw member 26 are electrically conductively connected with the collar component 63 and by it with the shaft tube 301.” Collar component 63 is a component of the rotary bearing 60, as noted above in [0020].). Therefore, we find that a person with ordinary skill in the art would have modified Bacher's non-electrified embodiment (e.g., Bacher, Figs. 1-5, III 51-84) to include the electrical concepts and techniques taught in Bacher's alternate, electrified embodiment (id., Figs. 12-13, III 93-98)-or modified Bacher’s electrified embodiment to include the pivoting jaws and mechanical capabilities of Bacher’s non-electrified embodiment—to arrive at the claimed invention because a skilled artisan would have known to add a return pad or electrode on the patient to provide a current path back to the opposite terminal of the current generator in order to complete the circuit. See, e.g., Bacher Figs. 12—13 (element 40); Artale J 52, 54. Alternatively, if Bacher were modified to have two electrical pole conductors (bipolar), a skilled artisan would have known that the current would pass only through the tissue being grasped by the jaws, and then back to the current generator to complete the circuit. See Artale { 5. In other words, a skilled artisan in the electrical or medical technology arts would have understood how to modify Bacher’s non-electrified device so as to supply electrical current to both jaws and complete the circuit, either by incorporating concepts described and shown in Figure 13 of Bacher or in another conventional way. For a person of ordinary skill in the art, making such modifications would have required nothing more than a predictable application of a known technique to a known device ready for improvement. See KSR, 550 U.S. at 416-417. A skilled artisan would have also understood how to modify Bacher’s electrified device with a second pivot rod so that jaw 26 could be pivotable and electrified in a workable, electrically sound way. See id. at 418. We see no reason why it would have been “uniquely challenging or difficult for one of ordinary skill in the art” or “represented an unobvious step over the prior art” to modify Bacher as discussed above. Leapfrog Enters., Inc. v. Fisher- Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418-19).
Regarding claim 5, claim 1 is obvious over Bacher, Castro, and Dorn. However, Bacher does not explicitly teach the electrical pole conductor extension is a flat strip. Although Bacher discloses the electrical pole conductor extension ([0032] “sleeve”), the sleeve can be a flat strip to allow a joint to connect to the lever to control the position of the end effector. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention electrical pole conductor extension is a flat strip, for the purpose of controlling the position of the end effector, since it has been held to be within the general skill of a worker in the art to select a known shape on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
Regarding claim 8, Bacher teaches wherein the thrust and/or traction piston comprises at least one coupling element which is free, at least in part, of an insulating material and which is electrically and/or mechanically connected to the electrical pole conductor extension (Fig.3-5 (25,26, 415,416) and [0070] “From a comparison of FIGS. 3 through 5 it can be recognized that a linear sliding of the transmission rod 40 parallel to the longitudinal axis 29 of the tool 20 by means of the piston rods 256, 266 causes a pivoting of the jaw members 25, 26 about the joints formed by the axle 232.”Piston rods 256, 266 are coupling element and corresponding coupling element that must be free from insulation to allow for linear sliding for mechanical movement of jaws. Bacher teaches that the thrust has the coupling elements 256 and 266 which mechanically connects the transmission rod which move linearly along the transmission rod to expand the jaws, and therefore acts as the linear movement converter, as claimed in claim 8.).
Regarding claim 9, Bacher teaches wherein the linear movement converter comprises the pair of pivot levers which are electrically and/or mechanically connected to the at least one tool piece and which are mechanically and/or electrically connected to the thrust and/or traction piston (Fig.3-5 (25,26, 415,416) and [0070] where pivot lever 415, 416 are linearly sliding (mechanical moving) tool pieces/jaws 25, 26 which contain the radiax bearing and piston rods making up the thrust and/or traction piston. ).
Regarding claim 10, Bacher teaches wherein each of the pair of pivot levers comprises a corresponding coupling element which corresponds to the coupling element of the thrust and/or traction piston and which is free of an insulating material, at least in part, wherein the coupling element and the corresponding coupling element are mechanically and/or electrically connected to one another (Fig.3-5 (25,26, 415,416) and [0070] “From a comparison of FIGS. 3 through 5 it can be recognized that a linear sliding of the transmission rod 40 parallel to the longitudinal axis 29 of the tool 20 by means of the piston rods 256, 266 causes a pivoting of the jaw members 25, 26 about the joints formed by the axle 232.”Piston rods 256, 266 are coupling element and corresponding coupling element that must be free from insulation to allow for linear sliding for mechanical movement of jaws.).
Regarding claim 11, Bacher teaches wherein the coupling element and the corresponding coupling element together define a pivot axis of the linear movement converter which is oriented at least substantially perpendicular to a primary extension axis of the end effector and is laterally offset thereto ([0070] “From a comparison of FIGS. 3 through 5 it can be recognized that a linear sliding of the transmission rod 40 parallel to the longitudinal axis 29 of the tool 20 by means of the piston rods 256, 266 causes a pivoting of the jaw members 25, 26 about the joints formed by the axle 232.” Based on Figs. 3 and 5, the axle 232 is in the same direction as the end effectors making it also perpendicular and laterally offset therto.).
Regarding claim 23, Bacher teaches wherein the insulating material is seamless ([0096] “the transmission rod 40 comprises an insulating mantle 422 of an electrically insulating material” The insulating material is arranged in a seamless matter in the absence to the evidence to the contrary.).
Regarding claim 24, Bacher teaches The endoscope and/or endoscopic instrument with an endoscopic device according to claim 1 ([0052] “the micro-invasive surgical instrument 10 can be suited especially for micro-invasive surgical interventions in which an endoscope and one or more instruments”).
Regarding claim 25, Bacher teaches surgical system with at least one endoscopic device according to claim 1 and further comprising at least one surgical robot ([0052] “the micro-invasive surgical instrument 10 can be suited especially for micro-invasive surgical interventions in which an endoscope and one or more instruments”).
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Bacher et al. (US 20130053835)(Hereinafter Bacher) in view of Castro et al. (US 20160066939)(Hereinafter Castro) and Dorn (US 6334860)(Hereinafter Dorn), and Danek et al. (US 20090069797)(Hereafter Danek).
Regarding claim 7, claim 1 is obvious over Bacher, Castro, and Dorn. Bacher in view of Castro and Dorn do not teach an electrical pole cut out using a laser cutting sheet metal. Regarding the claim limitation on an electrical pole, Danek teaches wherein the electrical pole conductor extension is, at least in part, a sheet metal component ([0125] “Such a configuration could comprise an etched, machined, laser cut, or otherwise manufactured piece of metal.”). Danek teaches this to precisely cut small material metal with small thicknesses ([0125] lines 3-8). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify endoscopic device containing a shaft by Bacher in view of Castro and Dorn with the electrical pole cut out of laser cutting sheet metal of Danek because such a modification would allow to precisely cut small material metal with small thicknesses.
Regarding claim 13, claim 1 is obvious over Bacher, Castro, and Dorn. Bacher teaches that the thrust is comprised within the movement converter. However, Bacher in view of Castro and Dorn do not teach a further electrical pole. Regarding the claim limitation on a further electrical pole, Wand teaches wherein the thrust and/or traction piston comprises at least one further electrical pole conductor extension which is covered, at least in part, with an insulating material and which is arranged offset to the electrical pole conductor extension and which is electrically and/or mechanically connected to the further electrical pole conductor of the actuating unit ([0026] “The connection line can be led outside past the instrument grip [thrust] or along it and be contacted outside of the instrument grip.” Lines 19-20 93[0100] lines 1-4 “The connection lines 68 and 70 are configured as flexible, electrically insulated cable lines, which, starting from the distal end 16, extend in the tube 24 as far as the bushing 26.” And [0082] lines 4-6 “It can thereby be ensured that the section of the at least one connection line does not interfere with actuation [unit] of the grip element [movement converter].” This shows that the actuation unit, and at least in part, the movement converter, must be connected to these electrical connection lines. ). Wand teaches this to allow for a flow of high-frequency current to coagulate body tissue ([0035] lines 9-10). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify endoscopic device containing a shaft by Bacher in view of Castro and Dorn with the further electrical pole of Wand because such a modification would allow for a flow of high-frequency current to coagulate body tissue. Therefore, claim 13 is obvious over Bacher and Wand. Furthermore, A skilled artisan would have also understood how to modify Bacher’s electrified device with a second pivot rod so that jaw 26 could be pivotable and electrified in a workable, electrically sound way. See id. at 418. We see no reason why it would have been “uniquely challenging or difficult for one of ordinary skill in the art” or “represented an unobvious step over the prior art” to modify Bacher as discussed above. Leapfrog Enters., Inc. v. Fisher- Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418-19).
Regarding claim 14, claim 1 is obvious over Bacher, Castro, and Dorn. Bacher in view of Castro and Dorn do not teach a further electrical pole. Regarding the claim limitation on a further electrical pole, Wand teaches wherein in a side view, the electrical pole conductor extension surrounds, at least in part, the further electrical pole conductor extension ([0035] “comprises two electric connection lines electrically connected to the tool …By supplying energy to the tubular shaft, an electric current, in particular, a high-frequency current, can flow between the jaw parts, in order to coagulate body tissue.” This is a design choice and will not affect the function of the claimed invention.). Wand teaches this to allow for a flow of high-frequency current to coagulate body tissue ([0035] lines 9-10). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify endoscopic device containing a shaft by Bacher in view of Castro and Dorn with the further electrical pole of Wand because such a modification would allow for a flow of high-frequency current to coagulate body tissue. Therefore, claim 14 is obvious over Bacher and Wand. Furthermore, A skilled artisan would have also understood how to modify Bacher’s electrified device with a second pivot rod so that jaw 26 could be pivotable and electrified in a workable, electrically sound way. See id. at 418. We see no reason why it would have been “uniquely challenging or difficult for one of ordinary skill in the art” or “represented an unobvious step over the prior art” to modify Bacher as discussed above. Leapfrog Enters., Inc. v. Fisher- Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418-19).
Regarding claim 15, claim 1 is obvious over Bacher, Castro, and Dorn. Bacher in view of Castro and Dorn do not teach a further electrical pole. Regarding the claim limitation on a further electrical pole, Wand teaches wherein the thrust and/or traction piston has at least one further coupling element which is free of an insulating material, at least in part, and which is electrically and/or mechanically connected to the further electrical pole conductor extension ([0007] “In the known tubular shaft instruments, the at least one electric connection line as well as the at least one coupling element are introduced into the instrument grip in which the electric connection line is contacted by electric contact members.” The further coupling elements is free from an insulating material as it is not taught.). Wand teaches this to allow for a flow of high-frequency current to coagulate body tissue ([0035]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify endoscopic device containing a shaft by Bacher in view of Castro and Dorn with the further electrical pole of Wand because such a modification would allow for a flow of high-frequency current to coagulate body tissue. Therefore, claim 15 is obvious over Bacher and Wand. Furthermore, A skilled artisan would have also understood how to modify Bacher’s electrified device with a second pivot rod so that jaw 26 could be pivotable and electrified in a workable, electrically sound way. See id. at 418. We see no reason why it would have been “uniquely challenging or difficult for one of ordinary skill in the art” or “represented an unobvious step over the prior art” to modify Bacher as discussed above. Leapfrog Enters., Inc. v. Fisher- Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418-19).
Regarding claim 16, claim 1 is obvious over Bacher, Castro, and Dorn. Bacher in view of Castro and Dorn do not teach a further electrical pole. Regarding the claim limitation on a further electrical pole, Wand teaches wherein the further coupling element is arranged on a side of the thrust and/or traction piston opposing the coupling element ([0007] “In the known tubular shaft instruments, the at least one electric connection line as well as the at least one coupling element are introduced into the instrument grip in which the electric connection line is contacted by electric contact members.” “The coupling element” will be treated as one coupling element as recited in claim 16 as “the further coupling element”.). Wand teaches this to allow for a flow of high-frequency current to coagulate body tissue ([0035]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify endoscopic device containing a shaft by Bacher in view of Castro and Dorn with the further electrical pole of Wand because such a modification would allow for a flow of high-frequency current to coagulate body tissue. Therefore, claim 16 is obvious over Bacher and Wand. Furthermore, A skilled artisan would have also understood how to modify Bacher’s electrified device with a second pivot rod so that jaw 26 could be pivotable and electrified in a workable, electrically sound way. See id. at 418. We see no reason why it would have been “uniquely challenging or difficult for one of ordinary skill in the art” or “represented an unobvious step over the prior art” to modify Bacher as discussed above. Leapfrog Enters., Inc. v. Fisher- Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (citing KSR, 550 U.S. at 418-19).
Regarding claim 17, Bacher teaches wherein a second of the pair of pivot levers is connected to at least one further tool piece of the end effector ([0070] “The transmission rod 50 comprises two joints 415, 416 on the distal end portion 41…From a comparison of FIGS. 3 through 5 it can be recognized that a linear sliding of the transmission rod 40 parallel to the longitudinal axis 29 of the tool 20 by means of the piston rods 256, 266 causes a pivoting of the jaw members 25, 26 about the joints formed by the axle 232.” Fig. 3-5 (415,416) are attached to further tool piece. The end of the transmission rod contain the locking device 48 in Fig. 4 for the thrust.).
Regarding claim 18, Bacher teaches wherein the second of the second of the pair pivot levers is arranged on a side of the thrust and/or traction piston opposing a first of the pair of pivot levers (Fig. 3-5 (256,266,415,416) [0070] lines 1-5 “A first piston rod 256 connects the first joint 415 on the distal end portion 41 of the transmission rod 40 with a joint 258 on the first jaw member 25 that is at a distance from an axle 232. A second piston rod 266 connects the second joint 416 on the distal end portion 41 of the transmission rod 40 with a joint 268 on the second jaw member 26 that is distanced from the axle 232.” The two piston rods represent the pivot lever and further pivot lever. These two pivots are on the distal side of the thrust. Fig. 3-5 show the levers opposing one another via dashed line. ).
Regarding claim 19, Bacher teaches wherein the second of the pair pivot levers comprises a further corresponding coupling element which corresponds to the further coupling element of the thrust and/or traction piston and which is free of an insulating material, at least in part, wherein the further coupling element and the further corresponding coupling element are mechanically and/or electrically connected to one another (Fig. 3-5 (258,268,415,416) [0070] lines 1-5 “A first piston rod 256 connects the first joint 415 on the distal end portion 41 of the transmission rod 40 with a joint 258 on the first jaw member 25 that is at a distance from an axle 232. A second piston rod 266 connects the second joint 416 on the distal end portion 41 of the transmission rod 40 with a joint 268 on the second jaw member 26 that is distanced from the axle 232.” The 258,268 joints are the two further corresponding coupling elements are corresponding mechanically to joints 415,416 (further coupling elements). The two coupling elements are taught to be free from an insulating material as both are not mentioned to have an insulating material.).
Regarding claim 20, Bacher teaches wherein the further coupling element and the further corresponding coupling element together define a further pivot axis which is oriented at least substantially perpendicular to a main extension axis of the end effector and is arranged laterally offset thereto, wherein the further pivot axis is different from the pivot axis which is defined by the coupling element and the corresponding coupling element ([0070] “From a comparison of FIGS. 3 through 5 it can be recognized that a linear sliding of the transmission rod 40 parallel to the longitudinal axis 29 of the tool 20 by means of the piston rods 256, 266 causes a pivoting of the jaw members 25, 26 about the joints formed by the axle 232.” And [0071] lines 7-9 “One end portion of the axle 232 positioned perpendicular to the sectional planes of FIGS. 3 through 5 is held or mounted in one of the two prongs 231 of the joint device 23.” To clarify the art cited above, looking at Fig. 3, the further corresponding coupling element translates horizontally from right to left (further pivot axis), while the main axis extension, based on axle 232, moves perpendicularly to that translated further pivot axis. This is different than the pivot axis shown in Fig. 10. See explanation from claim 11 above).
Claim 21 is rejected under 35 U.S.C. 103 as being unpatentable over Bacher et al. (US 20130053835)(Hereinafter Bacher) in view of Castro et al. (US 20160066939)(Hereinafter Castro), Dorn (US 6334860)(Hereinafter Dorn), Artale et al. (US 20150209103)(Hereafter Artale).
Regarding claim 21, Bacher teaches wherein the end effector has an end effector head which is, at least in part, from an insulating material and within which the linear movement converter is arranged, at least to a large extent (0096] “which electrically insulates the transmission rod 40 with respect to the shaft tube 301, the collar component [part of the movement converter] 63,”).
However, Bacher in view of Casro and Dorn does not teach the end effector embodied from insulating material. Artale, in the same field of endeavor, teaches an endoscopic device with an end effector jaw that is electrically insulate in order to dissect the tissue using the electrode at the tip ([0024] lines 19-26). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify endoscopic device containing a shaft that is insulated by part the movement converter by Bacher in view of Castro and Dorn with an end effector that is insulated of Artale because such a modification would allow to dissect the tissue using the electrode at the tip. Therefore, claim 22 is obvious over Bacher and Artale.
Claim 22 is rejected under 35 U.S.C. 103 as being unpatentable over Bacher et al. (US 20130053835)(Hereinafter Bacher) in view of Castro et al. (US 20160066939)(Hereinafter Castro), Dorn (US 6334860)(Hereinafter Dorn), and Buisse et al. (JP 4394880)(Hereafter Buisse).
Regarding claim 22, claim 1 is obvious over Bacher, Castro, and Dorn. Bacher in view of Castro and Dorn do does not teach a Comparative Tracking Index value. Regarding the claim limitation on an insulation material, Buisse teaches the CTI value of 300-600 volts to reduce the incidence of flashover (Pg. 3 lines 42-43). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify endoscopic device containing a shaft by Bacher in view of Castro and Dorn with an insulation material with a CTI value of Buisse because such a modification would allow to reduce the incidence of flashover. Therefore, claim 22 is obvious over Bacher and Buisse.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Bacher et al. (US 20130053835)(Hereinafter Bacher) in view of Castro et al. (US 20160066939)(Hereinafter Castro), Dorn (US 6334860)(Hereinafter Dorn), and Taylor et al. (US 20100094289)(IDS)(Hereafter Taylor).
Regarding claim 6, claim 1 is obvious over Bacher, Castro, and Dorn. Bacher in view of Castro and Dorn do not teach side view the electrical pole conductor extension is hook-shaped. Taylor, in the same field of endeavor, teaches an electrosurgical instrument for treating tissue with jaw members for electrically conducting tissue upon contact (Abstract), and further teaches wherein side view the electrical pole conductor extension is hook-shaped (
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) to control the movement of the jaws. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have the electrical pole conductor extension be hook-shaped, for the purpose of controlling the movement of the jaws, since it has been held to be within the general skill of a worker in the art to select a known shape on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MOUSSA M HADDAD whose telephone number is (571)272-6341. The examiner can normally be reached M-TH 8:00-6:00.
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/MOUSSA HADDAD/Examiner, Art Unit 3796
/ALLEN PORTER/Primary Examiner, Art Unit 3796
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