DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Response to Amendment
The Amendments filed September 09, 2025 have been entered. Currently, claims 1-10 and 12 are pending in the application. Furthermore, the Sugiyama reference has been changed from the W.O application to the U.S Patent for ease of cross-reference and facilitating review.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of pre-AIA 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for a patent.
(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of application for patent in the United States.
Claims 1-7, 9-10, and 12 are rejected under pre-AIA 35 U.S.C. 102(a)/(1) as being anticipated by Tanaka (U.S. Patent No. 7353068 B2).
Regarding independent claim 1, Tanaka discloses a method for a minimally invasive electro-surgical system (201) (Col. 17, lines 22-36 & Figs. 19, 25-27), the method comprising:
determining if a first user activation (Step 53) is detected at a user input device (switch pedals 31, 32, 33) (Col. 17, lines 58-67) of a control console (foot switch 3) (Col. 21, lines 36-49);
in response to determining that the first user activation is received at the user input device:
providing feedback (Step 54) to a user of the detection of the first user activation at the user input device (Col. 21, lines 50-53),
during a first predetermined period of time starting from the detection of the first user activation (Step 58), determining if a first user deactivation is detected at the user input device (Step 59), and
in response to determining that the first user deactivation is not detected at the user input device, activating an electrosurgical device to couple electrosurgical energy to tissue (Step 63) (Col. 22, lines 3-20 and lines 26-29).
Regarding claim 2, Tanaka discloses further comprising:
determining if a second user activation is detected at the user input device (Step 64) (Col. 22, lines 30-35);
in response to determining that the second user activation is received at the user input device:
providing feedback (Step 54, second time) to the user of the detection of the second user activation at the user input device (Col. 21, lines 50-53),
during a second predetermined period of time (Step 58, second time), determining if a second user deactivation is detected at the user input device (Step 59, second time), and
in response to determining that the second user deactivation is detected, skipping activation of the electrosurgical device (Steps 60-61) (Col. 22, lines 3-20).
Regarding claim 3, Tanaka discloses further comprising:
in response to determining that the second user deactivation is detected:
swapping energy control from a first electrosurgical tool to a second electrosurgical tool (Steps 54-56) (Col. 21, lines 50-62).
Regarding claim 4, Tanaka discloses wherein the feedback provided to the user is visual feedback provided by a graphical user interface displayed by a video display device (8) (Col. 22, lines 3-5).
Regarding claim 5, Tanaka discloses wherein the feedback provided to the user is visual feedback provided by an activated energy strip border displayed by a graphical user interface on a video display device (Col. 4, lines 14-24).
Regarding claims 6-7, Tanaka discloses wherein the feedback provided to the user is an audible feedback generated by a speaker (25) of the surgeon console (Col. 5, lines 22-45 & Fig. 3).
Regarding claim 9, Tanaka discloses further comprising:
while the electrosurgical device is active (Step 63, first time), determining if a second user deactivation is detected at the user input device (Steps 64-65), and
in response to determining that the second user deactivation is detected:
deactivating the electrosurgical device (action of returning to Step 52) (Col. 22, lines 30-44),
determining if a second user activation is detected at the user input device (Steps 53-56, second time);
in response to determining that the second user activation is not detected (Step 59, second time, wherein the output control device 302 determines that the decided mode has been cancelled, and returns to Step S54):
during a second predetermined period of time, determining if a third user activation is detected at the user input device (Steps 55-56, third time).
Regarding claim 10, Tanaka discloses further comprising:
while the electrosurgical device is active (Step 63, first time), determining if a second user deactivation is detected at the user input device (Steps 64-65); and
in response to determining that the second user deactivation is detected:
deactivating the electrosurgical device (action of returning to Step 52) (Col. 22, lines 30-44);
determining if a second user activation is detected at the user input device (Steps 53-56, second time);
in response to determining that the second user activation is detected:
providing feedback to the user (Step 62) and repeating the activating of the electrosurgical device to couple electrosurgical energy to tissue.
Regarding claim 12, Tanaka discloses wherein the electrosurgical device is an electrosurgical energy generator, and an electrosurgical tool couples the electrosurgical energy to tissue (Col. 17, lines 21-30).
Claim Rejections - 35 USC § 103
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim 8 is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Tanaka as applied to claim 1 above, and further in view of Sugiyama (E.P. Application No. 2189128 B1).
Regarding claim 8, Tanaka discloses the invention substantially as claimed in claim 1 discussed above.
However, Hamel does not disclose wherein the feedback provided to the user is
a tactile feedback generated by a vibration device of the control console.
Sugiyama, in the same field of endeavor, teaches a medical device (21) comprising a warning generating means (35) which provides tactile feedback (e.g.,
vibration) to the user (pa. 0018).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the feedback of the
control console of Tanaka in order to incorporate the tactile feedback of Sugiyama for the purpose of allowing a surgeon to immediately stop any movement of the device if necessary.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-5, 9-10, and 12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4, 6-9, 13, 24-25 of U.S. Patent No. 9827059 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the copending application claims anticipate the claims of the instant application. Accordingly, the instant application claims 1-5, 9-10, and 12 are not patentably distinct from the copending application claims 1-4, 6-9, 13, 24-25. Here, the more specific copending application claims encompass the broader instant application claims. Following the rationale in In re Goodman 11 F.3d 1046, 29 USPQ2d2010 (Fed. Cir. 1993), where applicant has once been granted a patent containing a claim for the specific narrow invention, applicant may not obtain a second patent with a claim for the generic or broader invention without first submitting an appropriate terminal disclaimer. Furthermore, any deficiencies in the claim language can be mitigated by secondary reference Tanaka as described and cited above in the 102 rejection.
Claims 1-10, and 12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9, 12, 15-24 of U.S. Patent No. 9375288 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the copending application claims anticipate the claims of the instant application. Accordingly, the instant application claims 1-10, and 12 are not patentably distinct from the copending application claims 1-9, 12, 15-24. Here, the more specific copending application claims encompass the broader instant application claims. Following the rationale in In re Goodman 11 F.3d 1046, 29 USPQ2d2010 (Fed. Cir. 1993), where applicant has once been granted a patent containing a claim for the specific narrow invention, applicant may not obtain a second patent with a claim for the generic or broader invention without first submitting an appropriate terminal disclaimer. Furthermore, any deficiencies in the claim language can be mitigated by secondary reference Tanaka as described and cited above in the 102 rejection.
Response to Arguments
Applicant’s arguments, see pages 2-3, filed 02/11/2026, with respect to the 102 rejection of claims 1-7, and 12 under Hamel have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Tanaka (U.S. Patent No. 7353068 B2).
Conclusion
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/A.V.G./Examiner, Art Unit 3794 /Ronald Hupczey, Jr./Primary Examiner, Art Unit 3794
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