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 Arguments
Applicant’s arguments with respect to claim(s) 17 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.
Applicant's arguments filed 8/14/2025 regarding the arguments to Claims 19 and 20 have been fully considered but they are not persuasive. Applicant argues that the cited portions of Baber do not teach an energy detection coil, which was acknowledged in the prior action. This deficiency was cured through a 103 rejection to Claim 17, and as Applicant does not argue the impropriety of the 103 rejection, the rejections to Claims 19 and 20 are maintained.
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 19-27 and 35 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 Claims 19-20 and 27, Applicant does not have written description for the limitation “wire coil”. While Applicant’s Specification provides written description for the usage of coils, it is silent to the usage of specifically wire coils. For this reason, Claims 19-20 and 27 are rejected under U.S.C. 112(a) for failing to meet the written description requirement.
Regarding Claim 35, Applicant does not have written description for the limitations “wherein the hand-operated medical instrument is supplied by energy exclusively via internal energy conversion…” as Applicant’s Specification specifies that while the internal components, such as the RFID/processing components, are only powered by the internal components, the internal energy conversion is predicated by external physical energy, i.e. the physical manipulation of the components (see Applicant’s Specification Pg. 5, Lines 1-3). The stationary components of the electromagnet and coil cannot self-generate electricity without the external movement causing movement of the components to generate inductive energy. For these reasons, Claim 35 is rejected under U.S.C. 112(a) for failing to meet the written description requirement.
Claims 21-26 are rejected under U.S.C. 112(a) based on their dependency to Claim 19.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 20-26, 28, and 35 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding Claim 20, the limitation “wherein the energy detection coil comprises a second wire coil that is arranged separately from the first wire coil and magnetic core” renders the claims indefinite as it is unclear how the singular energy detection coil is able to be two coils at once, particularly as the coils are identified to be separate components. All dependent claims 21-26 are rejected for the same reasons provided for claim 20.
Regarding Claim 28, the claim contains the trademark/trade name “PowerCap”. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to identify/describe a type of battery and, accordingly, the identification/description is indefinite.
Regarding Claim 35, the claim is indefinite for similar reasons set forth in 112(a) rejection above. Claim 35 references the movement of the hand-operated device, which requires physical energy to be applied to the device, making it unclear how the device is only to be powered by internal inductive system as set forth in Claim 35. As Pg. 5 of Applicant’s Specification sets forth that this limitation is meant to define powering the internal components (the RFID/processing components), the Examiner will be applying prior art to meet this interpretation, for the purposes of expediting prosecution. Correction or arguments are still required to overcome this 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 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.
Claims 17-18, 28, and 35 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Publication 20160066910 awarded to Baber et al, hereinafter Baber, in view of U.S. 20160256184 awarded to Shelton IV et al, hereinafter Shelton.
Regarding Claim 17 and 35, Baber teaches a hand-operated medical instrument comprising a first movable part (distal connector flange 601) and a second movable part (switch drum 500), wherein the first movable part and the second movable part are movable relative to each other in an activation cycle (Para. 0211, “Moreover, further to the above, the switch drum 500 can also be positioned within the rotatable distal shaft portion. When the rotatable distal shaft portion is rotated, the distal connector flange 601 and the switch drum 500 can be rotated synchronously with one another. In addition, the switch drum 500 can be rotated between a first position and a second position relative to the distal connector flange 601”), the hand-operated medical instrument further comprising an apparatus configured to detect activation cycles of the hand-operated medical instrument, the apparatus comprising: an energy detection element arranged on the first movable part (Para. 0211, “Turning now to FIGS. 11 and 12, the distal connector flange 601 can comprise a Hall effect sensor 605, for example”) and arranged to detect inductively generated energy (Para. 0211); an energy-generating magnet arranged on the second movable part and arranged to inductively generate energy to be detected by the energy detection coil (Para. 0211, “the switch drum 500 can comprise a magnetic element, such as permanent magnet 505, for example. The Hall effect sensor 605 can be configured to detect the position of the permanent magnet 505”); and a memory and processing device having a counter and arranged to detect, at each relative movement, a voltage signal based on the energy induced in the energy detection coil and to increment the counter by one at each detection of the voltage signal, thereby counting the number of executed activation cycles of the hand-operated medical instrument (Para. 0253, “FIG. 22 illustrates one example of a power assembly 2100 comprising a usage cycle circuit 2102 configured to monitor a usage cycle count of the power assembly 2100. The power assembly 2100 may be coupled to a surgical instrument 2110. The usage cycle circuit 2102 comprises a processor 2104 and a use indicator 2106. The use indicator 2106 is configured to provide a signal to the processor 2104 to indicate a use of the battery back 2100 and/or a surgical instrument 2110 coupled to the power assembly 2100. A “use” may comprise any suitable action, condition, and/or parameter such as, for example, changing a modular component of a surgical instrument 2110, deploying or firing a disposable component coupled to the surgical instrument 2110,”), wherein the energy-generating magnet and the energy detection element are arranged such that, upon movement of the first movable part and the second movable part relative to each other, the energy-generating magnet is movable within a detection range of the energy detection coil relative thereto and induces energy therein via the energy detection element (Para. 0211, “When the switch drum 500 is rotated between its first position and its second position, the permanent magnet 505 can move relative to the Hall effect sensor 605. In various instances, Hall effect sensor 605 can detect changes in a magnetic field created when the permanent magnet 505 is moved. The Hall effect sensor 605 can be in signal communication with the shaft circuit board 610 and/or the handle circuit board 100, for example. Based on the signal from the Hall effect sensor 605, a microcontroller on the shaft circuit board 610 and/or the handle circuit board 100 can determine whether the articulation drive system is engaged with or disengaged from the firing drive system”). Baber does not teach wherein the energy detection component is a coil, or wherein the energy induced in the energy detection coil is directed to operate the memory and processing device and solely power these components. Baber does teach that there is a plurality of components that can be swapped for the hall sensor, and teaches coils as a potential substitute (Para. 0224).
Further, in the art of activation cycle detection (Para. 0313), Shelton teaches the usage of an electromagnet and coil system (Para. 0670, Fig. 133, coil 15043 and electromagnet 15041) for cycle detection (Para. 0271, “In various instances, magnetic field sensor 605 can detect changes in a magnetic field created when the permanent magnet 505 is moved. The magnetic field sensor 605 can be in signal communication with the shaft circuit board 610 and/or the handle circuit board 100, for example. Based on the signal from the magnetic field sensor 605, a microcontroller on the shaft circuit board 610 and/or the handle circuit board 100 can determine whether the articulation drive system is engaged with or disengaged from the firing drive system”), the electromagnet and coil generating sole power for the counting system (Para. 0674, “For instance, a plurality of electromagnets 15041 can be positioned around the wire coil 15043 which can be selectively energized to create a rotating magnetic field 15042. In such an embodiment, the magnetic field 15042 can be rotated relative to the wire coil 15043 to induce a current in the wire coil 15043 and power the control system 15040, the sensor 15050, and/or the transmitter 15060 even though the shaft 15020 has been stopped”).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Baber by Shelton, i.e. by using a coil as the energy detection component, and using the system to provide power to the processing and memory devices, for the predictable purpose of combining known prior art elements in the similar devices of Baber and Shelton for the predictable purpose of providing power to the device of Baber.
Regarding Claim 18, Baber modified by Shelton makes obvious the hand-operated medical instrument according to claim 17. Baber further teaches wherein the hand-operated medical instrument is supplied with energy from an internal energy source (Para. 0196).
Regarding Claim 28, Baber modified by Shelton makes obvious the hand-operated medical instrument according to claim 17. Baber further teaches wherein a smoothing buffer module with charging electronics, wherein the smoothing buffer module comprises a capacitor, a PowerCap, and/or a battery and is provided to support the memory and processing device (Para. 0226).
Claims 19-23 and 27 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Publication 20160066910 awarded to Baber et al, hereinafter Baber, in view of U.S. 20160256184 awarded to Shelton IV et al, hereinafter Shelton, further in view of U.S. Patent Publication 20100193567 awarded to Scheib et al, hereinafter Scheib.
Regarding Claim 19, Baber modified by Shelton makes obvious the hand-operated medical instrument according to claim 17. Baber modified by Shelton does not teach wherein the energy detection coil comprises a first wire coil wound about a magnetic core attached to the apparatus, but Shelton does teach wherein the previously taught coil 15043 should be used with electromagnets if an induced current is needed without the rotation of the shaft (Para. 0674, “In at least one alternative embodiment, a current can be induced in the wire coil 15043 even though the shaft 15020 is not rotating. For instance, a plurality of electromagnets 15041 can be positioned around the wire coil 15043 which can be selectively energized to create a rotating magnetic field 15042”).
Further, in the art of electromagnetically powered devices, Scheib teaches using a magnetic core in an wire coil for the purposes of generating current in a dual electromagnet system (Para. 0085, “In at least one such embodiment, the conductors can extend from a handle assembly of the surgical instrument, such as handle assembly 102, for example, to the distal end of elongate shaft 606, wherein the conductors can be wrapped or coiled around ferromagnetic cores, which can be comprised of iron and/or cobalt, for example, to comprise electromagnets 647a and 647b. In use, in at least one embodiment, a surgical instrument can further include a switch, or actuator, which can be operated to selectively couple the current source and/or voltage source to the conductors. In certain embodiments, when electrical current is not flowing through the conductors, electromagnets 647a, 647b may not generate a magnetic field and, when sufficient electrical current is flowing through the conductors, the electrical current can generate one or more magnetic fields which can be utilized to rotate driver 639”).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Baber modified by Shelton, i.e. by using the coil/magnet core of Scheib instead of the electromagnet/coil configuration of Shelton, for the predictable purpose of simply substituting one inductive system for another.
Regarding Claim 20, in light of the interpretation determined in the 112(b) rejection above, Baber modified by Shelton and Scheib makes obvious the hand-operated medical instrument according to claim 19, wherein a second wire coil is arranged separately from the first wire coil and the magnetic core (Shelton Para. 0670, Fig. 133, electromagnet 15041, the Examiner notes that an electromagnet is a coil wrapped around a magnet).
Regarding Claim 21, Baber modified by Shelton and Scheib makes obvious the hand-operated medical instrument according to claim 20. Baber further teaches wherein the energy-generating magnet is surrounded by a shield in such a way that its magnetic field is directed in an effective direction towards the energy detection coil and is attenuated in directions other than the effective direction (Para. 0340). Baber does not teach wherein the magnet is a neodymium or a samarium-cobalt magnet. However, Scheib teaches the usage of neodymium magnets or samarium-cobalt magnets in an electromagnet system (Para. 0094).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to choose a specific material, particularly a magnet made of neodymium or a samarium-cobalt material, since it is within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended us (see MPEP 2144.07), and Scheib teaches that these are known materials for usage in electromagnet systems.
Regarding Claims 22-23, Baber modified by Shelton and Scheib makes obvious the hand-operated medical instrument according to claim 21. Baber does not teach wherein the energy-generating magnet is insertable into the energy detection coil and induces energy therein by a linear movement, wherein the energy-generating magnet that can be introduced into the energy detection coil is arranged on a pivot arm and can be caused to oscillate by a body mechanically acting on the pivot arm.
However, in the art of electromagnetically power devices, Scheib teaches using linear insertion to generate an electromagnetic field, wherein the electromagnet is arranged on a pivot arm to oscillate a body mechanically (Para. 0085).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to further modify Baber, i.e. by using linear electromagnetic system instead of the permanent magnet to produce a magnetic field, for the predictable purpose of simply substituting one known method of producing electromagnetic energy/translating the energy to motion for another known method.
Regarding Claim 27, Baber modified by Shelton makes obvious the hand-operated medical instrument according to claim 17. Baber further teaches wherein the memory and processing device comprises an EEPROM and an integrated circuit or is formed as a combination component (Para. 0226), and in conjunction with the magnetic core and the coil wound thereon provides an externally addressable and/or readable RFID/NFC apparatus with RFID/NFC functionality (Para. 0492).
Claims 24-26 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Publication 20160066910 awarded to Baber et al, hereinafter Baber, in view of U.S. 20160256184 awarded to Shelton IV et al, hereinafter Shelton, further in view of U.S. Patent Publication 20100193567 awarded to Scheib et al, hereinafter Scheib, further in view of U.S. Patent Publication 20150335326 awarded to Dolan et al, hereinafter Dolan.
Regarding Claims 24-26, Baber modified by Shelton and Scheib makes obvious the hand-operated medical instrument according to claim 21. Baber does not teach wherein the energy-generating magnet is rotatably arranged in the energy detection coil and induces energy therein by a rotary movement, wherein a transmission gearing is arranged to adjust the rotational speed of the rotary movement, and wherein a flywheel mass is arranged to assist in maintaining the rotary movement.
However, in the art of electromagnetically powered devices, Dolan teaches wherein the energy-generating magnet is rotatably arranged in the energy detection coil and induces energy therein by a rotary movement, wherein a transmission gearing is arranged to adjust the rotational speed of the rotary movement (Para. 0089), and wherein a flywheel mass is arranged to assist in maintaining the rotary movement (Para. 0066).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Baber, i.e. by using a rotatable electromagnetic system as disclosed above instead of the permanent magnet to produce a magnetic field, for the predictable purpose of simply substituting one known method of producing electromagnetic energy/translating the energy to motion for another known method.
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.
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/JLM/
Examiner, Art Unit 3792
/UNSU JUNG/Supervisory Patent Examiner, Art Unit 3792
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