DETAILED ACTION
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 12/02/2025 has been entered.
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 .
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.
Claim Objections
Claim 1 objected to because of the following informalities:
“the least one recessed portion” in line 9 should be written “the at least one recessed portion”
Appropriate correction is required.
Claim 21 objected to because of the following informalities:
“the recessed portion” in line 13 should be written “the at least one recessed portion”
Appropriate correction is required.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1, 7-9, and 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nott et al., (US 20180280075; hereinafter Nott) in view of Cheng et al., (US 20130138103; hereinafter Cheng), Nesbitt, (US 20200054384), and Nott et al., (US 20180280075; hereinafter N2).
Regarding claim 1, Nott (Figures 1A-1B) teaches a method of manufacturing a surgical instrument that includes a set of jaws (109a, 109b) and an energized feature (220) operable to apply ultrasonic energy or RF energy to tissue, wherein the method comprises affixing the energized feature (220) to at least one jaw of the set of jaws ([0092], [0095], [0097]). Nott fails to disclose the method comprising: forming at least one of a microscopic surface pattern or a nanoscopic surface roughness into a base surface of the energized feature to produce at least one recessed portion and at least one raised portion. However, Cheng (Figures 1-4) discloses a method of manufacturing an energized feature (11) operable to apply ultrasonic energy or RF energy to tissue ([0035]), the method comprising: forming at least one of a microscopic surface pattern or a nanoscopic surface roughness (13) into a base surface of the energized feature (11) to produce at least one recessed portion (depressions shown in Figure 4) and at least one raised portion (peak portions adjacent to the depressions shown in Figure 4), ([0036], [0043]-[0044]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Nott to include the step of forming at least one of a microscopic surface pattern or a nanoscopic surface roughness into a base surface of the energized feature to produce at least one recessed portion and at least one raised portion, as taught by Cheng, because the modification would achieve a better heat dissipating effect for enabling the heat of the energized feature to be evenly dissipated and thus for allowing less heat to be transmitted to the surrounding of the energized feature; and also there will be less tissue or eschar stuck on the energized feature (Cheng; [0050]).
Nott/Cheng fails to teach applying a hydrophobic coating that includes at least one of silicone, titanium nitride, chromium nitride, or titanium aluminum nitride to the at least one recessed portion and to the at least one raised portion of the energized feature after forming at least one of the microscopic surface pattern or the nanoscopic surface roughness. However, Nesbitt (Figures 1-3C) teaches a method of manufacturing a surgical instrument (100) comprising applying a hydrophobic coating that includes at least one of silicone, titanium nitride, chromium nitride, or titanium aluminum nitride to an at least one recessed portion and an at least one raised portion (roughened portion) of an energized feature (102) after forming the roughened portion ([0124]-[0125]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Nott/Cheng to include the step of applying a hydrophobic coating that includes at least one of silicone, titanium nitride, chromium nitride, or titanium aluminum nitride to the at least one recessed portion and to the at least one raised portion of the energized feature after forming the roughened portion, as taught by Nesbitt, because the modification would minimize the buildup of tissue or eschar on the surface of the energized feature, enabling a user such as a surgeon to continue a surgical procedure without having to continuously clean, scrape or brush off adhered charred tissue from the surface of the electrode (Nesbitt; [0125]). Furthermore, the roughened portion in the modified device would be the at least one of the microscopic surface pattern or the nanoscopic surface roughness producing the at least one recessed portion.
Nott/Cheng/Nesbitt fails to teach removing the hydrophobic coating from at least one raised portion while maintaining the hydrophobic coating on the at least one recessed portion. However, N2 (Figures 1A-2) teaches a method of manufacturing a surgical instrument, wherein the method comprises removing a hydrophobic coating (235) from at least one raised portion (raised portions adjacent to the depressions) while maintaining the hydrophobic coating on at least one recessed portion (depressions), ([0096]: the coating 235 may be applied to the surface of the electrode 220 and then selectively removed such that the coating is deposited only within the depressions/recessed portions). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Nott/Cheng/Nesbitt to include removing the hydrophobic coating from at least one raised portion while maintaining the hydrophobic coating on the at least one recessed portion, as taught by N2, because the modification would provide ensure a non-stick surface in the depressions/recessed portions while maintaining the quality of the seal between the tissue and the jaw members with the exposed raised portions (N2; [0085], [0096]).
Regarding claim 7, Cheng (Figures 1-2) further teaches wherein the act of forming further comprises using at least one of laser ablating or chemical etching to form at least one of the microscopic surface pattern or the nanoscopic surface roughness (13), ([0036]-[0037]).
Regarding claim 8, Cheng (Figures 1-2) further teaches wherein the at least one recessed portion (produced by the at least one of a microscopic surface pattern or a nanoscopic surface roughness 13) is recessed at a microscopic depth from the base surface, wherein the base surface comprises a plurality of pillars, wherein the pillars include at least one of rectangular pillars, circular pillars, diamond shaped pillars, or slotted pillars ([0044], [0048]).
Regarding claim 9, Nott/Cheng/Nesbitt further teaches wherein the act of applying the hydrophobic coating further comprises dipping at least the energized feature into the hydrophobic coating (Nesbitt; [0122]).
Regarding claim 15, Nott (Figures 1-2) further discloses wherein the surgical instrument (100) includes a shaft assembly (104) and an end effector (108), wherein the end effector (108) extends distally from the shaft assembly (104), wherein the end effector (108) includes the energized feature (220), wherein the method further comprises coupling the energized feature (220) with the end effector (108), ([0092], [0095], [0097]).
Claim(s) 2-4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nott/Cheng/Nesbitt as applied to claim 1 above, and further in view of Felts et al., (US 20120252709; hereinafter Felts).
Regarding claim 2, Nott/Cheng/Nesbitt fails to teach (a) loading the energized feature into a vacuum chamber; (b) decreasing a pressure of the vacuum chamber; and (c) plasma treating the base surface and the recessed portion after decreasing the pressure of the vacuum chamber to clean and activate the energized feature. However, Felts teaches a method of manufacturing a surgical instrument ([0057], [0098]), the method comprising: (a) loading a feature into a vacuum chamber ([0412]: deposition chamber); (b) decreasing the pressure of the vacuum chamber ([0412]: deposition chamber requires decreasing the pressure of the vacuum chamber); (c) plasma treating the feature to clean and activate the feature after decreasing the pressure of the vacuum chamber ([0453]: plasma pre-treatment). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Nott/Cheng/Nesbitt to include the steps of (a) loading the feature into a vacuum chamber; (b) decreasing a pressure of the vacuum chamber; and (c) plasma treating the base surface and the recessed portion after decreasing the pressure of the vacuum chamber to clean and activate the energized feature, as taught by Felts, because the modification would provide a pretreatment which cleans and activates the contact surface prior to coating (Felts; [0453]). Furthermore, the feature in the modified device would be the energized feature taught by Nott/Cheng/Nesbitt.
Regarding claim 3, Nott/Cheng/Nesbitt/Felts further teaches wherein the act of plasma treating is performed prior to the act of applying the hydrophobic coating that includes silicone. Specifically, the plasma treatment is a pre-treatment done before the application of a coating on the instrument, as taught by Felts. Therefore, the modified method would include the act of plasma treating performed prior to the act of applying the hydrophobic coating that includes silicone as taught by Nott/Cheng/Nesbitt.
Regarding claim 4, Nott/Cheng/Nesbitt/Felts further teaches wherein the act of plasma treating uses at least one of oxygen or argon. Specifically, Felts teaches that the act of plasma treating uses at least one of oxygen or argon ([0411], [0439]).
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nott/Cheng/Nesbitt/Felts as applied to claim 2 above, and further in view of Keenan et al., (US 20030199165; hereinafter Keenan).
Regarding claim 5, Nott/Cheng/Nesbitt/Felts fails to teach passivating the energized feature in an acid bath prior to the act of plasma treating. However, Keenan teaches a method of coating an electrosurgical instrument in which an energized feature is passivated in an acid bath prior to the steps of coating ([0070]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Nott/Cheng/Nesbitt/Felts to include the step of passivating the energized feature in an acid bath prior to the coating steps, as taught by Keenan, because the modification would oxidize the material (Keenan; [0070]) to form a protective outer layer.
Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nott/Cheng/Nesbitt/Felts/Keenan as applied to claim 5 above, and further in view of Kumar.
Regarding claim 6, Nott/Cheng/Nesbitt/Felts/Keenan teaches the invention of claim 5, but fails to teach wherein the hydrophobic coating includes at least one of titanium nitride, chromium nitride, or titanium aluminum nitride. However, Kumar (Figures 1-3) teaches a method of manufacturing a surgical instrument that includes an energized feature operable to apply ultrasonic energy or RF energy to tissue ([0057], [0098]), wherein the hydrophobic coating includes at least one of titanium nitride, chromium nitride, or titanium aluminum nitride ([0055], [0057]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Nott/Cheng/Nesbitt/Felts/Keenan to include the hydrophobic coating as at least one of titanium nitride, chromium nitride, or titanium aluminum nitride, as taught by Kumar, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. MPEP 2144.07.
Claim(s) 10-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nott/Cheng/Nesbitt as applied to claim 1 above, and further in view of Cichocki et al., (US 20140277120; hereinafter Cichocki).
Regarding claims 10-12, Nott/Cheng/Nesbitt fails to teach wherein the hydrophobic coating includes a cross-linkable siloxane polymer, a non-cross-linkable siloxane polymer, a silicone cross- linking agent, a platinum catalyst, and at least one solvent; and includes a silicone rubber base, wherein the silicone rubber base includes dimethylvinyl silyl terminated polydimethysiloxane and a silica filler. However, Cichocki teaches a method of manufacturing a surgical instrument, wherein the hydrophobic coating includes a cross-linkable siloxane polymer, a non-cross-linkable siloxane polymer, a silicone cross- linking agent, a platinum catalyst, and at least one solvent; and includes a silicone rubber base, wherein the silicone rubber base includes dimethylvinyl silyl terminated polydimethysiloxane and a silica filler ([0018]-[0024]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Nott/Cheng/Nesbitt to include the hydrophobic coating including a cross-linkable siloxane polymer, a non-cross-linkable siloxane polymer, a silicone cross- linking agent, a platinum catalyst, and at least one solvent; and including a silicone rubber base, wherein the silicone rubber base includes dimethylvinyl silyl terminated polydimethysiloxane and a silica filler, as taught by Cichocki, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. MPEP 2144.07.
Regarding claim 13, Nott/Cheng/Nesbitt further teaches wherein the hydrophobic coating has a weight (Nesbitt; [0124]-[0125]), but fails to teach wherein the at least one solvent includes heptane. However, Cichocki teaches a method of manufacturing a surgical instrument, wherein the at least one solvent includes heptane ([0030]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Nott/Cheng/Nesbitt to include the at least one solvent comprising heptane, as taught by Cichocki, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. MPEP 2144.07.
Nott/Cheng/Nesbitt/Cichocki fails to teach wherein the percentage of heptane of the weight is between about 60% and about 95%. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Nott/Cheng/Nesbitt/Cichocki to include the percentage of heptane of the weight between about 60% and about 95% since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. MPEP 2144.05(I).
Claim(s) 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nott/Cheng/Nesbitt.
Regarding claim 14, Nott/Cheng/Nesbitt further teaches heat curing after the act of applying the hydrophobic coating (Nesbitt; [0049], [0121]), but fails to teach heat curing at a temperature of between about 120 degrees Celsius to 200 about degrees Celsius. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Nott/Cheng/Nesbitt to include heat curing at a temperature of between about 120 degrees Celsius to 200 about degrees Celsius since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. MPEP 2144.05(I).
Claim(s) 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nesbitt in view of Felts.
Regarding claim 16, Nesbitt (Figures 1-3) discloses a method of manufacturing a surgical instrument (100) that includes an energized feature (102) operable to apply ultrasonic energy or RF energy to tissue ([0073]), the method comprising: (d) applying a hydrophobic coating that includes at least one of silicone, titanium nitride, chromium nitride, or titanium aluminum nitride after the act of plasma treating ([0124]-[0125]); and heat curing electrodes of the energized feature while applying the hydrophobic coating to thereby heat the hydrophobic coating ([0049], [0121]).
Nesbitt fails to teach (a) loading the energized feature into a vacuum chamber; (b) decreasing the pressure of the vacuum chamber; and (c) plasma treating at least one surface of the energized feature to clean and activate the energized feature after decreasing the pressure of the vacuum chamber. However, Felts teaches a method of manufacturing a surgical instrument ([0057], [0098]), the method comprising: (a) loading a feature into a vacuum chamber ([0412]: deposition chamber); (b) decreasing the pressure of the vacuum chamber ([0412]: deposition chamber requires decreasing the pressure of the vacuum chamber); and (c) plasma treating at least one surface of the feature to clean and activate the feature after decreasing the pressure of the vacuum chamber ([0453]: plasma pre-treatment). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Nesbitt to include the steps of (a) loading the feature into a vacuum chamber; (b) decreasing a pressure of the vacuum chamber; and (c) plasma treating at least one surface of the feature after decreasing the pressure of the vacuum chamber to clean and activate the feature, as taught by Felts, because the modification would provide a pretreatment which cleans and activates the contact surface prior to coating (Felts; [0453]). Furthermore, the feature in the modified device would be the energized feature disclosed by Nesbitt.
Claim(s) 17-18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nesbitt/Felts, as applied to claim 16 above, and further in view of Keenan.
Regarding claims 17-18, Nesbitt/Felts fails to teach passivating the energized feature in an acid bath prior to the act of plasma treating, wherein the acid bath includes at least one of citric acid bath or a nitric acid bath. However, Keenan teaches a method of coating an electrosurgical instrument in which an energized feature is passivated in an acid bath prior to the steps of coating, wherein the acid bath includes at least one of citric acid bath or a nitric acid bath ([0070]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Nesbitt/Felts to include the step of passivating the energized feature in an acid bath prior to the coating steps, wherein the acid bath includes at least one of citric acid bath or a nitric acid bath, as taught by Keenan, because the modification would oxidize the material (Keenan; [0070]) to form a protective outer layer.
Claim(s) 21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cheng in view of Nesbitt and N2.
Regarding claim 21, Cheng (Figures 1-2) discloses a method of manufacturing a surgical instrument (10) that includes an energized feature (11) operable to apply ultrasonic energy or RF energy to tissue ([0035]), the method comprising: forming at least one of a microscopic surface pattern or a nanoscopic surface roughness (13) into a base surface of the energized feature (11) to produce at least one recessed portion (depressions shown in Figure 4) and at least one projected portion (peak portions shown adjacent to the depressions in Figure 4), the at least one projected portion defining a set of valleys (mini valleys within the peak portions shown in Figure 3) and a set of raised portions (mini raised portions adjacent to the mini valleys within the peak portions), ([0036], [0043]-[0044]). Cheng fails to disclose applying a hydrophobic coating that includes at least one of silicone, titanium nitride, chromium nitride, or titanium aluminum nitride to at least the recessed portion of the energized feature after forming at least one of the microscopic surface pattern or the nanoscopic surface roughness; and (c) heat curing electrodes of the energized feature while applying the hydrophobic coating. However, Nesbitt (Figures 1-3C) teaches a method of manufacturing a surgical instrument (100) comprising applying a hydrophobic coating that includes at least one of silicone, titanium nitride, chromium nitride, or titanium aluminum nitride to at least a recessed portion (roughened portion) of an energized feature (102) after forming the roughened portion ([0124]-[0125]); and (c) heat curing electrodes of the energized feature while applying the hydrophobic coating ([0049]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Cheng to include the steps of applying a hydrophobic coating that includes at least one of silicone, titanium nitride, chromium nitride, or titanium aluminum nitride to at least a roughened portion of the energized feature after forming the roughened portion and heat curing electrodes of the energized feature while applying the hydrophobic coating, as taught by Nesbitt, because the modification would minimize the buildup of tissue or eschar on the surface of the energized feature, enabling a user such as a surgeon to continue a surgical procedure without having to continuously clean, scrape or brush off adhered charred tissue from the surface of the electrode (Nesbitt; [0125]). Furthermore, the roughened portion in the modified device would be the at least one of the microscopic surface pattern or the nanoscopic surface roughness producing the at least one recessed portion.
Cheng/Nesbitt fails to teach exposing the base surface at the set of raised portions while maintaining the hydrophobic coating at the recessed portion. However, N2 (Figures 1A-2) teaches a method of manufacturing a surgical instrument, wherein the method comprises exposing a base surface of an electrode (220) at a set of raised portions (raised portions adjacent to the depressions) while maintaining a hydrophobic coating (235) at a recessed portion (depressions), ([0096]: the coating 235 may be applied to the surface of the electrode 220 and then selectively removed such that the coating is deposited only within the depressions/recessed portions). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Nott/Cheng/Nesbitt to include exposing the base surface at the set of raised portions while maintaining the hydrophobic coating at the recessed portion, as taught by N2, because the modification would provide ensure a non-stick surface in the depressions/recessed portions while maintaining the quality of the seal between the tissue and the jaw members with the exposed base surface at the set of raised portions (N2; [0085], [0096]).
Claim(s) 22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cheng/Nesbitt/N2, as applied to claim 21, and further in view of Kumar.
Regarding claim 22, Cheng/Nesbitt/N2 teaches the method of claim 21, but fails to teach that the step of applying a hydrophobic coating including at least one of titanium nitride, chromium nitride, or titanium aluminum nitride. However, Kumar teaches a method of manufacturing a surgical instrument, wherein the hydrophobic coating includes titanium nitride ([0047], [0055], [0057]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Cheng/Nesbitt/N2 to include the hydrophobic coating including at least one of titanium nitride, chromium nitride, or titanium aluminum nitride, as taught by Kumar, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. MPEP 2144.07.
Response to Arguments
Applicant’s arguments filed 11/14/2025, directed to the newly amended limitations of claims 1, 16, and 21, have been fully considered and are persuasive. Therefore, the rejection(s) has/have been withdrawn. However, upon further consideration, a new ground(s) of rejection is/are made in view of newly found prior art references N2 and Felts. With regard to newly amended claim 1, N2 teaches a method of manufacturing a surgical instrument that includes removing the hydrophobic coating from at least one raised portion while maintaining the hydrophobic coating on the at least one recessed portion. In combination with Nott/Cheng/Nesbitt, the modified method teaches the invention as claimed at least in amended claim 1. With regard to newly amended claim 16, Felts teaches a method of manufacturing a surgical instrument that includes (a) loading a feature into a vacuum chamber; (b) decreasing the pressure of the vacuum chamber; and (c) plasma treating at least one surface of the feature to clean and activate the feature after decreasing the pressure of the vacuum chamber. In combination with Nesbitt, the modified method teaches the invention as claimed at least in amended claim 16. With regard to newly amended claim 21, N2 teaches a method of manufacturing a surgical instrument that includes exposing the base surface at the set of raised portions while maintaining the hydrophobic coating at the recessed portion. In combination with Cheng/Nesbitt, the modified method teaches the invention as claimed at least in amended claim 21.
Conclusion
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/C.C.P./Examiner, Art Unit 3794
/EUN HWA KIM/Primary Examiner, Art Unit 3794
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