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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 02/02/2026 has been entered.
Response to Arguments
Election/Restrictions: Applicant hereby elects Group 1: Apparatus, claims 1, 4, 6-10, and 22. Claims 19 and 21 are with withdrawn from consideration as being directed to a non-elected invention. The examiner has required restriction between product or apparatus claims (Group I: Claims 1, 4, 4-10, 22) and process claims (19 and 21). Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
Interview
Interview: The Examiner acknowledges the interview held January 22, 2026. No binding agreement was reached during that interview. The Examiner appreciates Applicant’s clarifying arguments and the amendment to claim 1, and has considered them in the analysis below.
Rejection under 35 U.S.C. § 112(b) (Indefiniteness): The amendment clarifies the claimed structure and function and identifies a specific control action and resulting energy dissipation mechanism. The Examiner finds that the amended language is supported by the specification (e.g., original disclosure ¶[0097]–[0098] and FIG. 10, which describe disconnecting supply and coupling motor leads together so the motor generates current that can be dissipated internally). Accordingly, the Examiner withdraws the rejection under 35 U.S.C. § 112(b) of claim 1 and dependent claims 4 and 6–10.
Applicant’s amendments and arguments with respect to amended claim(s) 1, 4, 6-10 and 22 have been considered but are moot because the new ground of rejection.
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.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1, 4, 7-10, and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Yates (US2010/0076474) in view of Deck et al. (US 6,310,452 B1) and Ma et al. (US 6,128,151)
Yates discloses nearly all the limitations of Claim 1:
– a powered surgical device with a motor in the handle driving a cutting element/compression member via a shaft and end effector (Yates Abstract, FIG. 1, ¶[0059]–[0066])
– an actuator (trigger or “run motor” switch) that the user manually depresses to drive the motor and releases to stop (Yates ¶[0032], FIG. 10 run-motor switch 110, stop-motor switch 142, logic in FIG. 12)
– circuitry that “removes power” immediately when the user releases the actuator and then reverses the motor at end-of-stroke (Yates ¶[0053]–[0056], FIG. 18 timing diagram).
However, Yates does not clearly teach the specific sequence and hardware as recited in claim 1: "an electronic control circuit configured to, in response to a stop of the manual actuation of the actuator, cause a plurality of leads associated with the motor to couple, wherein the coupling of the plurality of leads causes an electrical current generated by the motor to dissipate through a component of the motor such that kinetic power associated with the at least one of the compression member or the cutting element is reduced." Deck (US 6,310,452, Col. 3:55–67; col. 4:5–35) and Ma (US 6,128,151, Col. 5:15–60) are motor‑control references that disclose dynamic/rheostatic/shorting braking topologies and switching arrangements for dissipating electrical energy generated by a motor when it is driven into a braking condition. These are the references teach of coupling or shorting motor leads or otherwise routing motor‑generated current into a dissipation path (internal windings or external resistors), as claimed. Therefore, it would have been obvious to one ordinary skill in the art at the time the invention was made to replace Yates’s general braking options with the Deck/Ma braking circuit so that, when the manual actuator is stopped, the control circuit executes the coupling/shorting of motor leads taught by Deck/Ma, thereby dissipating motor current through a motor component or resistor and reducing kinetic energy of the compression/cutting elements. Substituting a known braking circuit into Yates’s motor control is a routine engineering choice to achieve more effective braking. The skilled artisan would expect that coupling/shorting the motor leads (or routing generated current into a resistor) will reduce motor speed/kinetic energy — a predictable application of known motor control techniques.
Regarding claim 4, Yates, ¶[0029]–[0031], FIGs. 1–3, 5–6 — explicitly discloses a powered surgical stapler/endocutter in which the motor drives a knife (cutting element) and actuates a closure/compression mechanism in coordinated fashion during a firing stroke. Yates teaches that the motor output is coupled to both the cutting and clamping mechanisms so that both move during actuation.
Regarding claim 7, Yates, ¶[0029], FIGs. 1–3 — clearly discloses a proximal handle, an elongate shaft extending distally, and an end effector at the distal end. This is the basic form of Yates’s surgical endocutter.
Regarding claim 8, Yates discloses nearly all the limitations of Claim 1. Yates fails to disclose wherein the electronic control circuit is configured to halt rotation of the motor by causing the electrical current generated by the motor to dissipate through the component of the motor. Deck, col. 3:55–67; col. 4:5–35; FIG. 2 — teaches shorting/coupling motor leads so that generated current is dissipated in the motor windings (a motor component), thereby halting rotation. Ma, col. 5:25–45; FIGs. 3–5 — similarly discloses dissipating generated current through the motor windings to brake the motor. Therefore, it would have been obvious to one ordinary skill in the art at the time the invention was made to replace Yates’s general braking options with the Deck/Ma braking circuit so that, when the manual actuator is stopped, the control circuit executes the coupling/shorting of motor leads taught by Deck/Ma, thereby dissipating motor current through a motor component or resistor and reducing kinetic energy of the compression/cutting elements and in view of Deck and Ma, it would have been obvious to configure Yates’s control circuit to halt rotation by dissipating current through a motor component, as this is a known dynamic braking technique. Substituting a known braking circuit into Yates’s motor control is a routine engineering choice to achieve more effective braking. The skilled artisan would expect that coupling/shorting the motor leads (or routing generated current into a resistor) will reduce motor speed/kinetic energy — a predictable application of known motor control techniques.
Regarding claim 9, Yates discloses nearly all the limitations of Claim 1. Yates fails to disclose the device of claim 1, further comprising a battery, wherein the electronic control circuit is configured to cause the electrical current to dissipate through the component of the motor by disconnecting the plurality of electrical leads from the battery and coupling the electrical leads together. Deck, col. 3:55–67; col. 4:5–35; FIG. 2 — explicitly shows braking circuits where the motor is disconnected from the supply (battery) and the motor leads are coupled/shorted together to dissipate generated current in the windings. Ma, col. 5:25–45 — also shows disconnecting the supply and coupling leads for braking. Therefore, it would have been obvious to one ordinary skill in the art at the time the invention was made to replace Yates’s general braking options with the Deck/Ma braking circuit so that, when the manual actuator is stopped, the control circuit executes the coupling/shorting of motor leads taught by Deck/Ma, thereby dissipating motor current through a motor component or resistor and reducing kinetic energy of the compression/cutting elements and it would have been obvious to one of ordinary skill to implement Deck/Ma’s disconnect‑and‑couple lead configuration in Yates’s control circuit to achieve effective braking upon cessation of actuation. Substituting a known braking circuit into Yates’s motor control is a routine engineering choice to achieve more effective braking. The skilled artisan would expect that coupling/shorting the motor leads (or routing generated current into a resistor) will reduce motor speed/kinetic energy — a predictable application of known motor control techniques.
Regarding claim 10, Yates discloses nearly all the limitations of Claim 1. Yates fails to disclose the device of claim 9, further comprising a resistive load, wherein the electronic control circuit is configured to cause the electrical current to pass the resistive load by connecting one or more of the plurality of the electrical leads to the resistive load. Deck (col. 3:60–67; col. 4:5–35; FIG. 2) teaches braking arrangements where the motor leads are connected to a resistive element to dissipate generated current (rheostatic braking). Ma (col. 5:35–45) teaches similarly discloses connecting motor terminals to a resistor to dissipate energy. Therefore, it would have been obvious to one of ordinary skill to configure the braking circuit in Yates (as modified per Deck/Ma) to include a resistive load in the dissipation path, as taught in Deck/Ma, to control braking torque and heat dissipation. Combining these teachings would have been a routine design choice to achieve predictable braking performance in Yates’s surgical instrument.
Regarding claim 22, Yates fails to disclose the device of claim 1, wherein the kinetic power, if not dissipated, causes a rotation of a motor component, and wherein the motor component is configured to rotate to cause the at least one of the compression member or the cutting element to move along the end effector. Yates, ¶[0029]–[0031], FIGs. 1–3, 5–6 — discloses that the motor drives the compression member and/or cutting element; if braking is not applied, kinetic energy in the motor and drive train will continue to move these components. Deck/Ma — teach that dynamic braking dissipates kinetic energy in the motor to stop rotation and thus stop the driven load. Therefore, it would have been obvious to recognize (as in Yates) that undissipated kinetic power will cause continued motion of the motor and attached load, and to apply Deck/Ma’s braking to dissipate that power to stop motion. Yates provides the surgical device context and general motor control/braking motivation, and Deck/Ma provide specific, well‑known dynamic braking circuit topologies (disconnect supply, couple leads, dissipate current in motor windings or resistive load). Combining these teachings would have been a routine design choice to achieve predictable braking performance in Yates’s surgical instrument.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Yates (US2010/0076474) in view of Deck (US 6,310,452 B1) and Ma (US 6,128,151) and further in view of Duchon (US 5,916,165).
Yates in view of Deck and Ma disclose the device of claim 1, but fails to disclose a bladder actuator, as claimed in claim 6. Duchon a hand‑held pressure‑bladder input coupled via a fluid conduit to a pressure transducer that outputs an electrical control signal for a motor (e.g., Col. 2-7 air bladder 48, 52). It would have been obvious to one of ordinary skill in the art, at the time of the invention, to replace the trigger‑operated electrical input of Yates with the pneumatic bladder input of Duchon et al. (US 5,916,165) in order to provide an alternative proportional control mechanism, as both are known user‑actuated input devices for generating control signals to operate a motor and to provide proportional, ergonomic, or alternative user input (e.g., for accessibility, sterility, or tactile feedback). Substituting one known type of proportional actuator (bladder + transducer) for another known actuator (trigger + electrical switch) is a predictable design choice. Both are handheld, user‑operated input devices that generate a control signal for a motor controller.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TAN-UYEN THI HO whose telephone number is (571)272-4696. The examiner can normally be reached Normal Schedule M-F Between 7:00 am and 4:00 pm.
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/TAN-UYEN T HO/Supervisory Patent Examiner, Art Unit 3771