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 .
Response to Amendment
This office action is in response to the amendment filed August 07, 2025. Claim(s) 1, 21, 25, 27, 34, and 37-38 are amended. Claim(s) stand canceled. Claim(s) [3] stand withdrawn. Claim(s) [4] are pending and addressed below. Applicant’s amendment to the claims have overcome each and every [5] previously set forth in the Non-Final Office Action dated [6].
Response to Arguments
Applicant’s amendments to the claims have overcome the claim objections presented in the Non-Final Office Action dated May 16, 2025.
Applicant’s arguments with respect to claim(s) 1 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.
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.
Claim 40 is 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.
Claim 40 recites “a thickness of the terminal end is larger than the thickness of the second portion.” As understood by Applicant’s disclosure, Fig. 4D best shows the claimed subject matter; however, Applicant’s specification recites “[t]he elements illustrated in the accompanying drawings are not necessarily drawn to scale, but rather, may have been exaggerated to highlight the important features of the subject matter therein.” (pp. [0013]). While it appears the bottom surface of the terminal end extends below the bottom surface of the second portion, it is not clear whether or not their respective top surfaces lie in the same plane or if the top surface of the second portion is higher than that of the terminal end. There is no explicit, implicit, or inherent support anywhere in the Specification that discusses the thicknesses of the second portion compared to the terminal end, nor are the Drawings definitively clear as to the thicknesses of the two portions.
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, 21, 23, 25, 27-35, 37-38, and 40-43 is/are rejected under 35 U.S.C. 103 as being unpatentable over Morisaki (U.S. Pub. No. 2019/0133636)(previously cited) in view of Masuda et. al. (U.S. Pub. No. 2012/0277778)(previously cited), hereinafter, “Masuda.”
Regarding claim 1, Morisaki teaches an ultrasonic treatment device, comprising:
a blade (13; Fig. 2, it is noted, “treatment section 13” is taught as having a “treatment surface 25” with inclined surfaces 28 and 29 extending therefrom, see Figs. 2 & 3 and pp. [0030]. This configuration is considered a blade); and
a jaw (21; Fig. 2) configured to open and close relative to the blade (13), the jaw (21) including:
a base (31 and 41; Fig. 13) including:
a top wall (41; Fig. 13),
side walls (31; Fig. 13), and
a through hole (“X”; Fig. 11); and
an inner channel (51; Fig. 10) defined by the top wall (41) and the side walls (31); and
a pad (61; Fig. 13) located in the inner channel (51, the pad including:
a grasping surface (62; Fig. 13) facing the blade (13, pp. [0044]), and
a top surface (see annotated Fig. 13 below) opposed to the grasping surface (62), the top surface abutting the top wall (41),
wherein the top wall (41) has a first portion (see annotated Fig. 11 below), a second portion (see annotated Fig. 11 below), and a third portion (see annotated Fig. 11 below), where the second potion (see annotated Fig. 11 below) is located proximally relative to the first portion (see annotated Fig. 11 below), the through hole (X) is located proximally relative to the second portion (see annotated Fig. 11 below), and the third portion is located between the second portion and the through hole (see annotated Fig. 11 below),
wherein a thickness of the first portion is smaller than a thickness of the second portion (see annotated Fig. 11 below).
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However, Morisaki does not explicitly disclose a thickness of the third portion is smaller than the thickness of the second portion.
Masuda teaches an ultrasonic treatment device (Fig. 1), comprising: a blade (43; Fig. 3) and a jaw (34; Fig. 3) the jaw (34) including: a base (33; Fig. 4) including: a top wall (33a; Fig. 4), side walls (62; Fig. 4), and a through hole (57; Fig. 4),
wherein the top wall (33a) has a first portion (see annotated Fig. 4 below), a second portion (see annotated Fig. 4 below), and a third portion (see annotated Fig. 4 below), where the second potion (see annotated Fig. 4 below) is located proximally relative to the first portion (see annotated Fig. 4 below), the through hole (57) is located proximally relative to the second portion (see annotated Fig. 4 below), and the third portion is located between the second portion and the through hole (see annotated Fig. 4 below),
wherein a thickness of the first portion is smaller than a thickness of the second portion (see annotated Fig. 4 below), and a thickness of the third portion is smaller than the thickness of the second portion (see annotated Fig. 4 below) so that “body member” 47 of jaw (34) can connect to the base (33) providing the pivoting motion of jaw (34), (see Figs. 2 & 3).
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Masuda is considered to be analogous to the claimed invention because it is in the same field of ultrasonic treatment tools. 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 third portion and “cover” 36 of jaw (21) of Morisaki to incorporate the teachings of Masuda by providing the third portion with a thickness less than the second portion and shortening the length of the cover such that the distal end connects to the third portion. Doing so would be a simple substitution of one known jaw member configuration for another to obtain predictable results of providing an ultrasonic treatment device with a reasonable expectation of success.
Regarding claim 21, Morisaki in view of Masuda teaches the invention as discussed above in claim 1. Morisaki further teaches a thickness of the top wall (41) increases from a distal end of the base (31, 41) toward a proximal end of the base (see Fig. 11 where the left side is the distal end and the right side is the proximal end).
Regarding claim 23, Morisaki in view of Masuda teaches the invention as discussed above in claim 1. Morisaki further teaches the second portion (see annotated Fig. 11 above) has a bottom surface (see annotated Fig. 11 above), the bottom surface (see annotated Fig. 11 above) of the second portion (see annotated Fig. 11 above) abuts the top surface of the pad (61, see Fig. 11).
Regarding claim 25, Morisaki in view of Masuda teaches the invention as discussed above in claim 1. Morisaki further teaches the top wall (41) has a bottom surface (see annotated Fig. 13 above), the bottom surface faces the top surface (see annotated Fig. 13 above), and the bottom surface is a plane (see annotated Fig. 13 above).
Regarding claim 27, Morisaki in view of Masuda teaches the invention as discussed above in claim 1. Morisaki further teaches the base (31, 41) further includes a protrusion (71A, 71B; Fig. 13) protruding from the side walls (31).
Regarding claim 28, Morisaki in view of Masuda teaches the invention as discussed above in claim 27. Morisaki further teaches the protrusion (71A, 71B) comprises a first (71A) and second (71B) protrusions forming a space along a longitudinal axis of the base (31, 41).
Regarding claim 29, Morisaki in view of Masuda teaches the invention as discussed above in claim 27. Morisaki further teaches the pad (61) includes a groove (72A, 72B), the groove (72A, 72B) configured to receive the protrusion (71A, 71B, see Fig. 13).
Regarding claim 30, Morisaki in view of Masuda teaches the invention as discussed above in claim 29. Morisaki further teaches the groove (72A, 72B) is extended along a longitudinal axis of the pad (61, see Fig. 14).
Regarding claim 31, Morisaki in view of Masuda teaches the invention as discussed above in claim 29. Morisaki further teaches the protrusion (71A, 71B) of the base (31, 41) has a top surface (see annotated Fig. 13 above) and a bottom surface (see annotated Fig. 13 above),
the groove (72A, 72B) of the pad (61) has a top surface (see annotated Fig. 13 above) and a bottom surface (see annotated Fig. 13 above),
the top surface (see annotated Fig. 13 above) of the protrusion (71A, 71B) of the base (31, 41) faces the top surface (see annotated Fig. 13 above) of the groove (72A, 72B) of the pad (61), and
the bottom surface of the protrusion (71A, 71B) of the base (31, 41) faces the bottom surface (see annotated Fig. 13 above) of the groove (72A, 72B) of the pad (61).
Regarding claim 32, Morisaki in view of Masuda teaches the invention as discussed above in claim 31. Morisaki further teaches a distance between the top surface (see annotated Fig. 13 above) of the protrusion (71A, 71B) of the base (31, 41) and the top surface (see annotated Fig. 13 above) of the groove (72A, 72B) of the pad (61) is larger than a distance between the bottom surface (see annotated Fig. 13 above) of the protrusion (71A, 71B) of the base (31, 41) and the bottom surface (see annotated Fig. 13 above) of the groove (72A, 72B) of the pad (61).
Regarding claim 33, Morisaki in view of Masuda teaches the invention as discussed above in claim 31. Morisaki further teaches the jaw (21) further includes a first gap (see annotated Fig. 13 above), the first gap (see annotated Fig. 13 above) is located between the top surface (see annotated Fig. 13 above) of the protrusion (71A, 71B) of the base (31, 41) and the top surface of the groove of the pad (61).
Regarding claim 34, Morisaki in view of Masuda teaches the invention as discussed above in claim 33. Morisaki further teaches the jaw (21) further includes a second gap (see annotated Fig. 13 above), the second gap (see annotated Fig. 13 above) is located between the bottom surface (see annotated Fig. 13 above) of the protrusion (71A, 71B) of the base (31, 41) and the bottom surface (see annotated Fig. 13 above) of the groove (72A, 72B) of the pad (61).
Regarding claim 35, Morisaki in view of Masuda teaches the invention as discussed above in claim 31. Morisaki further teaches when the blade (13) abuts the grasping surface (62), the bottom surface of the groove (72A, 72B) of the pad (61) is spaced apart from the bottom surface (see annotated Fig. 13 above) of the protrusion (71A, 71B) of the base (31, 41).
Regarding claim 37, Morisaki in view of Masuda teaches the invention as discussed above in claim 1. Morisaki further teaches the base (31, 41) further includes an opening (see annotated Fig. 13 above) penetrating the side walls (31).
Regarding claim 38, Morisaki in view of Masuda teaches the invention as discussed above in claim 1. Morisaki further teaches the base (31, 41) further includes an external protrusion (43B, Fig. 10) protruding from an outer surface of the side walls (31).
Regarding claim 40, Morisaki in view of Masuda teaches the invention as discussed above in claim 1. Morisaki further teaches the top wall (41) further includes a terminal end (77; Fig. 11), wherein the terminal end (77) is located proximally relative to the second potion (see annotated Fig. 11 above).
Morisaki further teaches that the bottom surface of the terminal end extends below the bottom surface of the second portion, but does not explicitly disclose a thickness of the terminal end is larger than the thickness of the second portion.
Additionally, Morisaki teaches that the terminal end (77) extends down to connect with “pad member” 61 against “abutment surface” 76 restricting movement between the pad member and “holder member” 41 (pp. 0053). 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 terminal end of Morisaki by increasing its thickness, such that it is thicker than the second portion. Doing so would increase the contacting surface area between the pad member and holding member resulting in a better more secure connection. Further, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to cause the invention of Morisaki to have a thickness of the terminal end is larger than the thickness of the second portion since it has been held that “where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device” Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 SPQ 232 (1984). In the instant case, the invention of Morisaki operates in the same manner as the claimed invention, and an invention having the claimed relative dimensions would not perform differently than the invention of Morisaki. Further, applicant places no criticality on the dimensions claimed, as the terminal end thickness is not even discussed in the specification.
Regarding claim 41, Morisaki in view of Masuda teaches the invention as discussed above in claim 1. Morisaki further teaches the top wall (41) further includes a distal portion (see annotated Fig. 11 above), wherein the distal portion connects to the first portion (see annotated Fig. 11 above) and the first potion is located proximally relative to the distal portion (see annotated Fig. 11 above), and wherein a thickness of the first portion continuously increases from a distal end of the first portion toward a proximal end of the first portion (see annotated Fig. 11 above).
Regarding claim 42, Morisaki in view of Masuda teaches the invention as discussed above in claim 1. Masuda further teaches the top wall (33a) has a transitional surface (see annotated Fig. 4 above) located between the second portion and the third portion (see annotated Fig. 4 above), and the transitional surface intersects a longitudinal axis of the base (see annotated Fig. 4 above).
Regarding claim 43, Morisaki in view of Masuda teaches the invention as discussed above in claim 42. Masuda further teaches the transitional surface (see annotated Fig. 4 above) is perpendicular to the longitudinal axis of the base (see annotated Fig. 4 above).
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 DANIEL A. ICET whose telephone number is (571)272-0488. The examiner can normally be reached M-F: 8:00-5:00 CT.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Elizabeth Houston can be reached at 571-272-7134. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DANIEL ICET/Examiner, Art Unit 3771
/ELIZABETH HOUSTON/Supervisory Patent Examiner, Art Unit 3771