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examination under 37 CFR 1.114 and the fee set forth in 37 CFR 1.17(e) has been timely paid, the appeal has been withdrawn pursuant to 37 CFR 1.114 and prosecution in this application has been reopened pursuant to 37 CFR 1.114.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 February 19, 2026 has been entered.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claims 1-4,17-18, and 21-29 are rejected under 35 U.S.C. 103 as being unpatentable by Nalagatla et al. (US 2020/0206805 A1—previously cited) or alternatively over Nalagatla in view of Dinino et al (US 2019/0321048 A1).
Regarding claim 1, Nalagatla discloses: A jaw assembly for a surgical clip applier (Fig. 24A-24B), the jaw assembly comprising: a first jaw 616a (i.e., note that the interpretation of the jaw ends after 630) comprising a first interface surface (Fig. 24B shows interface surface on member 630), wherein the first jaw has a proximal end and a distal end (Figs. 24A-24B), the first jaw comprising a first base 620a at the proximal end (Fig. 24B reproduced below), the first base having a proximal end and a distal end (Fig. 24B reproduced below) and defining a longitudinal axis (i.e., along the interface surface through the center of the device) having a midpoint (Fig. 24B reproduced below) halfway between the proximal end and the distal end (Fig. 24B reproduced below), the first base having a proximal portion extending from the proximal end to the midpoint (Fig. 24B reproduced below), wherein the first base comprises at least one recess at the proximal end of the first base (i.e., Fig. 24B), and a first arm 622a extending distally from the first base in a direction radially outward with respect to the longitudinal axis (Fig. 24A-B shows 622a extending in a direction radially outward); a second jaw 616b comprising a second interface surface (Fig. 24B shows interface surface on member 630); and a welded seam (i.e., along the interface surface; para. [0117] discloses fixedly coupling the first and second portions 612, 614 together by welding) coupling the first jaw to the second jaw (Fig. 24A), wherein the first jaw and the second jaw are positioned such that the first interface surface contacts the second interface surface (Fig. 24A) and the welded seam couples the first jaw to the second jaw at the contact of the first interface surface with the second interface surface (para. [0117]; Fig. 24A).
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Nalagatla doesn’t directly disclose the first interface surface extends continuously from the proximal portion of the first base to the distal end of the first base.
However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have the first interface surface extends continuously from the proximal portion of the first base to the distal end of the first base by omitting the first two recesses and their function since the function of having four recesses as opposed to only two does not affect the functionality of the device. Further, Applicant places no criticality on the number of recesses and only recites “one or more recesses” (para. [0026]). Additionally and similarly, Nalagatla discloses “plurality of apertures” (para. [0115]) instead of four apertures and thereby is not limited to four, but may include any number except one. Further, the court has affirmed omitting a step or an element when that element and its function is not required. See MPEP 2144.04 (II), Ex parte Wu, 10 USPQ 2031 (Bd. Pat. App. & Inter. 1989), In reLarson, 340 F.2d 965, 144 USPQ 347 (CCPA 1965), and In re Kuhle, 526 F.2d 553, 188 USPQ 7 (CCPA 1975) (deleting a prior art switch member and thereby eliminating its function was an obvious expedient).
However, even if Applicant disagrees, Examiner also points to Dinino which is in the same field of endeavor of end effector assemblies, drive sleeves, and clip appliers and further includes two jaws 369a, 368b with bases 366a, 366b. Dinino also discloses a continuous interface surface distal of recess 365a from a proximal portion of the first base to the distal end of the first base (Fig. 9).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the device of Nalagatla such that the interface surface is extended such that the first interface surface extends continuously from the proximal portion of the first base to the distal end of the first base for the purpose of operating the jaws from a proximal end of the base (paras. [0058]- [0061]).
Regarding claim 2, Nalagatla and Dinino disclose the jaw assembly of claim 1. Nalagatla also discloses: wherein the second jaw has a proximal end and a distal end (Fig. 24A-B), the second jaw comprising a second base 620b at the proximal end (Fig. 24B) and a second jaw member 628 extending distally from the second base to the distal end of the second jaw (Fig. 24A-B).
Regarding claim 3, Nalagatla discloses the jaw assembly of claim 2. Nalagatla also discloses: the welded seam couples the first base to the second base (Fig. 24A, when seam is welded, the first and second base are coupled).
Regarding claim 4, Nalagatla discloses the jaw assembly of claim 1. Nalagatla also discloses: second jaw comprises a mirror image of the first jaw (Fig. 24B shows the first and second jaw being mirror images of each other, para. [0115] discloses that they are mirror images).
Regarding claim 5, Nalagatla discloses the jaw assembly of claim 1. Nalagatla teaches that the jaws are connected by a weld (see above), but is silent as to the weld being a laser weld. The claimed phrase “the welded seam comprises a laser welded seam” is being treated as a product by process limitation; that is, that the jaws are connected by laser welding. As set forth in MPEP 2113, product by process claims are NOT limited to the manipulations of the recited steps, only to the structure implied by the steps. Once a product appearing to be substantially the same or similar is found, a 35 U.S.C. 102/103 rejection may be made and the burden is shifted to applicant to show an unobvious difference. See MPEP 2113.
Thus, even though Nalagatla is silent as to the process used to create the welded seam between the jaws, it appears that the product in Nalagatla would be the same or similar as that claimed.
Regarding claim 17, Nalagatla discloses: A laparoscopic clip applier (Fig. 1) comprising: an elongate shaft 18 having a proximal end and a distal end (Fig. 1); a handle assembly 12 disposed at the proximal end of the elongate shaft (Fig. 1); a jaw assembly 20 extending distally from the distal end of the elongate shaft (Fig. 1), the jaw assembly actuatable by the handle assembly to crimp a clip (para. [0063]); wherein the jaw assembly comprises: a first jaw 616a comprising a first interface surface 630, wherein the first jaw has a proximal end and a distal end (Fig. 24A-B), the first jaw comprising a first base 620a at the proximal end (Fig. 24B), the first base having a proximal and a distal end (Figs. 24A-24B) and defining a longitudinal axis (i.e., along the interface surface through the center of the device) having a midpoint (Fig. 24B reproduced above) halfway between the proximal end and the distal end (Fig. 24B reproduced above), the first base having a proximal portion extending from the proximal end to the midpoint (Fig. 24B), wherein the first base comprises at least one recess at the proximal end of the first base (see Fig. 24B reproduced above), and a first arm 622a extending distally from the first base in a direction radially outward with respect to the longitudinal axis (Fig. 24B shows 622a extending in a direction radially outward); a second jaw 616b comprising a second interface surface (Fig. 24B shows interface surface on member 630); and a welded seam (i.e., along the interface surface; para. [0117] discloses fixedly coupling the first and second portions 612, 614 together by welding) joining the first jaw to the second jaw (Fig. 24A), wherein the first jaw and the second jaw are positioned such that the first interface surface contacts the second interface surface (Fig. 24A) and the welded seam couples the first jaw to the second jaw at the contact of the first interface surface with the second interface surface (Fig. 24A).
Nalagatla doesn’t directly disclose the first interface surface extends continuously from the proximal portion of the first base to the distal end of the base.
However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have the first interface surface extends continuously from the proximal portion of the first base to the distal end of the first base by omitting the first two recesses and their function since the function of having four recesses as opposed to only two does not affect the functionality of the device. Further, Applicant places no criticality on the number of recesses and only recites “one or more recesses” (para. [0026]). Additionally and similarly, Nalagatla discloses “plurality of apertures” (para. [0115]) instead of four apertures and thereby is not limited to four, but may include any number except one. Further, the court has affirmed omitting a step or an element when that element and its function is not required. See MPEP 2144.04 (II), Ex parte Wu, 10 USPQ 2031 (Bd. Pat. App. & Inter. 1989), In reLarson, 340 F.2d 965, 144 USPQ 347 (CCPA 1965), and In re Kuhle, 526 F.2d 553, 188 USPQ 7 (CCPA 1975) (deleting a prior art switch member and thereby eliminating its function was an obvious expedient).
However, even if Applicant disagrees, Examiner also points to Dinino which is in the same field of endeavor of end effector assemblies, drive sleeves, and clip appliers and further includes two jaws 369a, 368b with bases 366a, 366b. Dinino also discloses a continuous interface surface distal of recess 365a from a proximal portion of the first base to the distal end of the first base (Fig. 9).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the device of Nalagatla such that the interface surface is extended such that the first interface surface extends continuously from the proximal portion of the first base to the distal end of the first base for the purpose of operating the jaws from a proximal end of the base (paras. [0058]- [0061]).
Regarding claim 18, Nalagatla and Dinino disclose the jaw assembly of claim 17. Nalagatla also discloses: wherein the second jaw has a proximal end and a distal end (Fig. 24A-B), the second jaw comprising a second base 630 at the proximal end (Fig. 24B) and a second jaw member 616b extending distally from the second base to the distal end of the second jaw (Fig. 24A-B).
Regarding claim 21, Nalagatla and Dinino disclose the jaw assembly of claim 2. Nalagatla also discloses: the first base has a radially inwardly facing portion 633 (i.e., at 630) and wherein the first interface surface is positioned at the radially inwardly facing portion (Fig. 24A).
Regarding claim 22, Nalagatla and Dinino disclose the jaw assembly of claim 2. Nalagatla also discloses: the first jaw member comprises a first arm 618a having a proximal end at the first base and a distal end comprising a clip jaw (Fig. 24A-B).
Regarding claim 23, Nalagatla and Dinino disclose the jaw assembly of claim 22. Nalagatla also discloses: the first arm comprises a radially outward bend at the proximal end (i.e. Fig. 24B shows the radial bend just distal to 630).
Regarding claim 24, Nalagatla and Dinino disclose the jaw assembly of claim 23. Nalagatla also discloses: the first arm comprises a cam bend 622a adjacent the distal end of the first arm and proximal the clip jaw (Fig. 24A-B).
Regarding claim 25, Nalagatla and Dinino disclose the jaw assembly of claim 22. Nalagatla also discloses: the clip jaw comprises a groove 632a formed therein configured to receive a leg of a surgical clip therein (Figs. 24A-B).
Regarding claim 29, Nalagatla and Dinino disclose the jaw assembly of claim 1. Nalagatla further discloses: wherein the first arm comprises a radially outward bias with respect to the longitudinal axis (Fig. 24A).
Regarding claim 30, Nalagatla discloses the jaw assembly of claim 1. Nalagatla further discloses: wherein the first arm has a lateral width and the first base has a lateral width (Fig. 24B).
Natagatla fails to directly disclose: the lateral width of the first arm being small relative to the lateral width of the first base.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention, as a matter of being obvious to try - choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success (see KSR International Co. v. Teleflex Inc., 550 U.S. 398, 82 USPQ2d 1385, 1395-97 (2007)), to obtain the predictable result of the lateral width of the first arm being small relative to the lateral width of the first base since Nalagatla’s first arm distal end is flexible to allow movement of the clip jaw from an open to a closed configuration (similar to [0024] of Applicant’s spec.). Therefore, since Nalagatla’s first arm distal end is flexible to allow movement of the clip jaw from an open to a closed configuration (para. [0079]), then it would be obvious to try the only three choices 1) the lateral width of the first arm being smaller than the lateral width of the first base, 2) the lateral width of the first arm being equal to the lateral width of the first base, or 3) the lateral width of the first arm being larger than the lateral width of the first base. These are the only three options apparent to one of ordinary skill in the art, with there being no undue experimentation and there being a reasonable expectation of success at arriving at the lateral width of the first arm being small relative to the lateral width of the first base.
Regarding claim 31, Nalagatla discloses the jaw assembly of claim 1. Nalagatla further discloses: wherein the first arm has a length along the longitudinal axis and the first base has a length along the longitudinal axis (Fig. 24B).
Nalagatla fails to directly disclose wherein the length of the first arm is larger than the length of the first base.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention, as a matter of being obvious to try - choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success (see KSR International Co. v. Teleflex Inc., 550 U.S. 398, 82 USPQ2d 1385, 1395-97 (2007)), to obtain the predictable result of the length of the first arm is larger than the length of the first base since Nalagatla’s first arm distal end is flexible (para. [0079]) to allow movement of the clip jaw from an open to a closed configuration (verbatim also to [0024] of Applicant’s spec.). Therefore, since Nalagatla’s first arm distal end is flexible to allow movement of the clip jaw from an open to a closed configuration (para. [0079]), then it would be obvious to try the only three choices 1) the lateral width of the first arm being smaller than the lateral width of the first base, 2) the lateral width of the first arm being equal to the lateral width of the first base, or 3) the lateral width of the first arm being larger than the lateral width of the first base. These are the only three options apparent to one of ordinary skill in the art, with there being no undue experimentation and there being a reasonable expectation of success at arriving at the length of the first arm is larger than the length of the first base.
Regarding claim 32, Nalagatla and Dinino disclose the jaw assembly of claim 1. Nalagatla also discloses wherein the at least one recess at the proximal end of the first base comprises a first recess in the proximal portion of the first base and a second recess in the proximal portion of the first base (see Fig. 24B reproduced below).
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Regarding claim 33, Nalagatla and Dinino disclose the jaw assembly of claim 32. The resulting device of Nalagatla as modified or by Nalagatla in view of Dinino also discloses wherein the first interface surface extends distally continuously from the second recess in the proximal portion of the first base to the distal end of the first base.
Regarding claim 34, Nalagatla and Dinino disclose the jaw assembly of claim 1. The resulting device of Nalagatla as modified by Dinino also discloses wherein the first base has a first length along the longitudinal axis between the proximal end and the distal end, and wherein the first interface surface extends continuously along more than half of the first length.
Response to Arguments
Applicant’s arguments with respect to claims 1 and 17 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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 RACHAEL LYNN GEIGER whose telephone number is (571)272-6196. The examiner can normally be reached Mon-Fri 8:00am-5:00pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Darwin Erezo can be reached on 5712724695. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RACHAEL L GEIGER/Examiner, Art Unit 3771
/BROOKE LABRANCHE/Primary Examiner, Art Unit 3771