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, 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 03/17/2026 has been entered.
Response to Amendment
The Amendments filed March 17, 2026 have been entered. Applicant’s amendments have overcome the 112b and 101 rejections previously set-forth in the Final Rejection mailed on 01/09/2026. Currently, claims 1, 8, 16, and 20 have been amended, and claims 1, 3-10, 12-21, 25, 27-31 are pending in the application.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the second insulating pad contacting the first insulating pad when the tissue grabbing apparatus is in a closed position as required by claims 1, 8, and 16 must be shown or the feature(s) canceled from the claim(s). The Examiner notes additional details regarding these at-issue limitations can be found in the rejection under 35 U.S.C. 112(a) below. No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1, 3-10, 12-21, 25, 27-31 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding independent claims 1, 8 and 16, the claims presently recite “wherein the second insulating pad contacts the first insulating pad when the tissue grabbing apparatus is in a closed position”.
The Examiner has reviewed the instant disclosure and has identified that there is
no sufficient evidence, either in the Specification or Drawings to support the at-issue claim limitation. Specifically, paragraph [0073] of the filed Specification provides a description of a) a closed configuration that is not “fully closed” given that tissue is located between the jaws 114 and 116 and b) a closed configuration of the jaws when tissue is not grasped by the gripping surfaces as illustrated in figure 5B. The Examiner notes that the multiple other recitations in the Specification discuss the jaws to ”close” with the jaws having tissue disposed therebetween (see [0003], [0014], [0101], [0149] and [0152]). Other recitations in the disclosure discuss the jaws to be closed in a manner such that the jaws remain parallel to one another (see [0014] and [0072]). Neither these cited portions nor any other portion of the disclosure in the Specification provides any manner of implicit or explicit support or evidence that there is specifically contact between the first insulating pad and the second insulating pad when the jaws are in the closed position as required in each of claims 1, 8 and 16. Similarly, none of the figures including Figure 5B (as reference in paragraph [0073] above) provide a clear enough illustration of the closed position to show that contact between the first insulating pad and the second insulating pad actually occurs.
Thus, is the Examiner’s position that the requirement in claims 1, 8, and 16 of the second insulating pad contacting the first insulating pad when the tissue grabbing apparatus is in a closed position was not described in the Specification or illustrated in the Drawings in such a way as to reasonably convey to one of ordinary skill in the art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention given that the disclosure specifically provides that the first and second insulating pads are, at best, near each other when the jaws are in the closed configuration. Claims 3-7, 9-10, 12-15, 17-21, 25, 27-31 are also rejected because they are respectively dependent on claims 1, 8 and 16. Appropriate correction is required.
Response to Arguments
Applicant’s arguments filed 03/17/2026 with respect to claims 1, 8, 16 have been considered but are moot because in light of the newly proffered rejection of the pending claims under 35 U.S.C. 112(a) above, the Examiner does not acquiesce to any arguments made against the prior art and reserves the right to revisit the prior art in based upon any subsequent response.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANA VERUSKA GUERRERO ROSARIO whose telephone number is (571)272-6976. The examiner can normally be reached Monday - Thursday 7:00 - 4:30 PM EST.
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/A.V.G./Examiner, Art Unit 3794
/Ronald Hupczey, Jr./Primary Examiner, Art Unit 3794
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