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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114 was filed in this application after a decision by the Patent Trial and Appeal Board, but before the filing of a Notice of Appeal to the Court of Appeals for the Federal Circuit or the commencement of a civil action. Since this application is eligible for continued examination under 37 CFR 1.114 and the fee set forth in 37 CFR 1.17(e) has been timely paid, the appeal has been withdrawn pursuant to 37 CFR 1.114 and prosecution in this application has been reopened pursuant to 37 CFR 1.114. Applicant’s submission filed on 01/06/2026 has been entered.
Response to Arguments
Applicant's arguments, see pages 8-9, filed 12/05/2025 regarding 35 U.S.C. 103 have been fully considered but they are not persuasive. Applicant argues on page 8 that “while Bacher does disclose, that transmission rod 40 (see Figs. 12-13 below) comprises an insulating mantle 422 of an electrically insulating material, which electrically insulates the transmission rod 40 with respect to the shaft tube 301, the collar component 63, the coupling component 28 and the joint device 23, Bacher does not disclose at least one thrust and/or traction piston which is connected to the actuating unit and which comprises at least one electrical pole conductor extension which is at least partially covered with an insulating material as claimed.” Examiner disagrees because Applicant has amended to include language from dependent claim 4 into the independent claim, which is now rejected by the Board and is the “law of the case”. Because the Board provided a new ground of rejection to claims 1-26 (claims 1 and 4 included), “a Board decision …is thus controlling in that application and any subsequent, related application. See MPEP § 1214.01 (where a new ground of rejection is entered by the Board pursuant to 37 CFR 41.50(b), argument without either amendment of the claims so rejected or the submission of a showing of facts can result only in a final rejection of the claims, since the examiner is without authority to allow the claims unless amended or unless the rejection is overcome by a showing of facts not before the Board). As such, a submission containing arguments without either amendment of the rejected claims or the submission of a showing of facts will not be effective to remove such new grounds of rejection or any other rejection affirmed in such decision.” See MPEP 706.07(h)(XI)(A). As such, the Board decided that the Examiner’s finding and explanations in the Final Office Action dated 12/15/2023 are adopted, but did not provide an adequate reasoning to support the conclusion of obviousness (See page 6 of the Board Decision filed 07/29/2025. The Board later, on pages 7-8, provided rationales as to why a skilled artisan would be able to combine well-known technology in the field. Therefore, the rejection is updated based on the law of the case.
Nevertheless, it can be seen that insulation material 44 can seen partially covering the electrical pole conductor extension, 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. Furthermore, [0032] of Bacher teaches “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”. Therefore, the rejection is maintained.
Response to Amendment
This Office Action is responsive to the amendment filed on 12/05/2025. As directed by the amendment: Claims 1-3 and 5-25 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.
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, 8-11, and 23-25 are rejected under 35 U.S.C. 103 as being unpatentable over Bacher et al. (US 20130053835)(Hereinafter Bacher).
Regarding claim 1, 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 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 a the tool piece to create an electrical potential, within the embodiment. Nevertheless, in another embodiment in Bacher, Bacher teaches which has at least one electrical pole conductor configured to provide at least one 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,”)… 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 at least the 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 which comprises at least one electrical pole conductor extension which is covered, at least in part, with an insulating material and which is electrically and/or mechanically connected to the 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).
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. 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 Danek et al. (US 20090069797)(Hereafter Danek).
Regarding claim 7, claim 1 is anticipated over Bacher as indicated above. However, Bacher does 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 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.
Claims 12-20 are rejected under 35 U.S.C. 103 as being unpatentable over Bacher et al. (US 20130053835)(Hereinafter Bacher) in view of Wand et al. (US 20160235476)(Hereafter Wand).
Regarding claim 12, claim 1 is anticipated over Bacher as indicated above. Bacher further teaches 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…,
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 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 a the tool piece to create an electrical potential, within the embodiment. Nevertheless, in another embodiment in Bacher, Bacher teaches which has at least one electrical pole conductor configured to provide at least one 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,”)… 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 at least the 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 which comprises at least one electrical pole conductor extension which is covered, at least in part, with an insulating material and which is electrically and/or mechanically connected to the 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. The claim 12 term "electrical pole conductor" encompasses a power/electric line in Wand (and a current path in Bacher). Further, [0035] of Wand mentions that each of the 2 jaws connect one of the connection lines, which means that each connection line is "embodied separately", as claimed.). 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 further electrical pole which is separate from the electrical pole conductor, and the linear movement converter electrically connects, at least in part, the one further electrical pole conductor to a further tool piece of the end effect. Regarding the claim limitation on a further electrical pole, Wand teaches characterized in that the actuating unit, for providing at least one further electrical potential, has at least one further electrical pole conductor which is separate from the electrical pole conductor, and the linear movement converter electrically connects, at least in part, the one further electrical pole conductor to a further tool piece of the end effector ([0035] “comprises two electric connection lines electrically connected to the tool.” And [0082] “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]). 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 further electrical pole which is separate from the electrical pole conductor, and the linear movement converter electrically connects, at least in part, the one further electrical pole conductor to a further tool piece of the end effect of Wand because such a modification would allow for a flow of high-frequency current to coagulate body tissue. Therefore, claim 12 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 13, claim 1 is anticipated over Bacher as indicated above. Bacher teaches that the thrust is comprised within the movement converter. However, Bacher does 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 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 anticipated over Bacher as indicated above. However, Bacher does 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 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 anticipated over Bacher as indicated above. However, Bacher does 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 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 anticipated over Bacher as indicated above. However, Bacher does 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 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 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 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 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 Buisse et al. (JP 4394880)(Hereafter Buisse).
Regarding claim 22, claim 1 is anticipated over Bacher as indicated above. However, Bacher 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 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 Taylor et al. (US 20100094289)(IDS)(Hereafter Taylor).
Regarding claim 6, claim 1 is obvious over Bacher. Bacher does 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
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/MOUSSA HADDAD/Examiner, Art Unit 3796
/ALLEN PORTER/Primary Examiner, Art Unit 3796