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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 3/19/2026 has been entered.
Response to Arguments
Applicant’s arguments with respect to claims 12, 14, 16-17, 20, and 22-27 are persuasive. The rejection has been withdrawn and the claims have been allowed.
Regarding claim 19, applicant 1st argues on page 7: “However, as described above, Long discloses utilizing the conductor 48 in implementations in which the closure tube 50 is constructed of an insulating material (see, e.g., Long at 4:43-48). Correspondingly, contrary to the above characterizations, Long fails to disclose providing both a conductor 48 with an insulating layer and an electrically conductive closure tube 50 in combination”.
The examiner believes the applicant is misinterpreting column 4 lines 35-54. The last sentence of the paragraph states “Conductor 48 may be insulated to prevent it from shorting to closure tube 50 or any of the mechanisms in closure tube 50”. Thus, insulated element 48 is used in combination with conductive element 50.
Regarding claim 19, applicant 2nd argues on pages 7-8: “To begin with, the outer tube 51, closure tube 50, and conductor 48 of Long, which the Office Action cites as disclosing the claimed communication cannula, are an integral part of the electrosurgical instrument 16 rather than the adapter 14.”
The examiner is now interpreting the neuro stimulator adapter as elements 8, 11, and 16 in figures 1, 2, and 4. Element 16 includes elements 48/50/51. Column 4 lines 13-18 states “Closure tube 50 is elongated to facilitate insertion of end effector 57 through a trocar cannula (such as cannula tube 10 of electrosurgical trocar 11), thus facilitating the use of electrosurgical instrument 16 in endoscopic or laparoscopic surgical procedures”. Thus element 16 from figure 4 is used inside of elements 8/11 and all may be interpreted as one system, which is analogous to what the applicant is claiming.
Regarding claim 19, applicant 3rd argues on page 8: “Further, the closure tube 50 of Long, which the Office Action cites as disclosing the claimed communicating layer, does not extend distally from both the outer tube 51 and the insulating layer of the conductor 48, which are identified as the outer layer and the inner insulating layer respectively. The closure tube 50 thus differs from a communicating layer that extends distally from the inner insulating layer and the outer layer, as set forth in claim 19”.
The examiner is now interpreting the extended portion of the communicating layer to be element 52 in figure 5, which extends distally past element 51 and 48.
Regarding claim 19, applicant 3rd argues on page 8: “The cited features of Long also fail to disclose a communicating member fixed to and extending distally from the communicating layer, the communicating member configured to be disposed adjacent to the tissue opening of the cannula when the adapter is coupled to the tissue removal device”.
The examiner is now interpreting element 58 in figure 5 to be the communicating member. Element 58 is fixed to and extends distally from elements 50/52.
Regarding claim 19, applicant 4th argues on page 8: “Page 3 of the Office Action broadly cites the closure tube 50 as disclosing a cannula of a tissue removal device having a tissue opening, and then cites the anvil 58 of Long as disclosing the claimed communicating member fixed to and extending distally from the communication layer of the adapter, which as described above was also asserted to be disclosed by the closure tube 50. However, characterization of the closure tube 50 as disclosing both a component of the tissue removal device and a component of an adapter for use with the tissue removal device is inconsistent. Moreover, it is unclear what portion of the closure tube 50 is being characterized as a tissue opening of a tissue removal device.
The examiner is now citing element 10 of figure 1 as the cannula of the adapter and element 19 of figure 3 as the tissue opening of the cannula/adapter. Element 50 is now cited only for the communication cannula and communicating layer (which is the conductive portion of the cannula).
Regarding claims 28-30, these claims are new and thus have a new rejection. Please note that the examiner is interpreting some of the elements differently than in the rejection for claim 19. This is a different rejection and thus the examiner is within his right to interpret elements differently.
Allowable Subject Matter
Claim 12, 14, 16-17, 20, and 22-27 allowed. The examiner found the applicant’s arguments on page 9 persuasive.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 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)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 19 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Long et al. (Patent Number: 5,925,041); hereinafter referred to as “Long”.
Regarding claim 19, Long discloses a neuro stimulator adapter (e.g. see figures 1, 2, and 4 elements 8, 11, and 16. Note: The examiner is interpreting the entire system of elements 8/11 and 16 as the “adapter” since the applicant is doing the same) for a tissue removal device (e.g. see column 4 lines 9-13 “electrosurgical instrument” and “monopolar cutter/stapler”, column 4 lines 13-18 states “Closure tube 50 is elongated to facilitate insertion of end effector 57 through a trocar cannula (such as cannula tube 10 of electrosurgical trocar 11), thus facilitating the use of electrosurgical instrument 16 in endoscopic or laparoscopic surgical procedures”) comprising a cannula (e.g. see figure 1 element 10) having a tissue opening (e.g. see figure 3 element 19), the neuro stimulator adapter (e.g. see figures 1, 2, and 4 elements 8, 11, and 16) comprising: a communication cannula (e.g. see figure 5 element 50) including an inner insulating layer (e.g. see figure 5 element 48 column 4 lines 52-54, “Conductor 48 may be insulated to prevent it from shorting to closure tube 50 or any of the mechanisms in closure tube 50”), a communicating layer (e.g. see figure 5 element 50, column 4 lines 37-39, “closure tube 50 is electrically conductive”), and an outer layer (e.g. see figure 5 element 51) each extending between a distal portion and a proximal portion of the communication cannula, wherein the communicating layer is positioned between the inner insulating layer and the outer layer (e.g. see elements 48, 50, and 51, NOTE: Element 50 is between elements 48 and 51, which are both insulated), the communicating layer further including an extended portion (e.g. see figure 5 element 52) that extends distally from the inner insulating layer and the outer layer; a communicating member (e.g. see figure 5 element 58) fixed to and extending distally from the communicating layer (e.g. see figure 5 elements 52 and 58 are attached together), the communicating member (e.g. see figure 5 element 58) configured to be disposed adjacent to the tissue opening (e.g. see figure 1 element 19) of the cannula (e.g. see figure 1 element 10) when the adapter is coupled to the tissue removal device (e.g. see column 4 lines 13-18 states “Closure tube 50 is elongated to facilitate insertion of end effector 57 through a trocar cannula (such as cannula tube 10 of electrosurgical trocar 11), thus facilitating the use of electrosurgical instrument 16 in endoscopic or laparoscopic surgical procedures”); and a connecting hub (e.g. see figure 4 element 70), wherein the proximal portion of the communication cannula is fixedly secured to the hub and the communication cannula extends distally from the hub (e.g. see figures 4 and 5 elements 50 and 70).
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.
Claim(s) 28-30 is/are rejected under 35 U.S.C. 103 as being unpatentable over Long in view of Mark et al. (Pub. No.: US 2012/0029354 A1); hereinafter referred to as “Mark”.
Regarding claim 28, Long discloses a neuro stimulator adapter (e.g. see figures 1, 2, and 4 elements 8, 11, and 16. Note: The examiner is interpreting the entire system of elements 8/11 and 16 as the “adapter” since the applicant is doing the same) for a tissue removal device (e.g. see column 4 lines 9-13 “electrosurgical instrument” and “monopolar cutter/stapler”, column 4 lines 13-18 states “Closure tube 50 is elongated to facilitate insertion of end effector 57 through a trocar cannula (such as cannula tube 10 of electrosurgical trocar 11), thus facilitating the use of electrosurgical instrument 16 in endoscopic or laparoscopic surgical procedures”) comprising a cannula (e.g. see figure 5 element 50) having a tissue opening (e.g. see figure 5 element 50), the neuro stimulator adapter (e.g. see figures 1, 2, and 4 elements 8, 11, and 16) comprising: an engagement sleeve (e.g. see figure 2 element 10) having a distal end and a proximal end; a hub (e.g. see figure 2 element 12), wherein the proximal end of the engagement sleeve is fixedly connected to the hub (e.g. see figure 2 elements 10 and 12) and the engagement sleeve extends distally from the hub such that the engagement sleeve is configured to insulate a majority of the cannula when the adapter is coupled to the tissue removal device (e.g. see column 4 lines 13-18 states “Closure tube 50 is elongated to facilitate insertion of end effector 57 through a trocar cannula (such as cannula tube 10 of electrosurgical trocar 11), thus facilitating the use of electrosurgical instrument 16 in endoscopic or laparoscopic surgical procedures”).
Long discloses the invention but is silent as to a communicating member extending from the hub towards the distal end of the engagement sleeve, the communicating member partially secured to an outside surface of the engagement sleeve; and a delivery sleeve extending from the hub towards the distal end of the engagement sleeve, the delivery sleeve partially secured to an outside surface of communicating member, wherein the communicating member extends beyond a distal end of the delivery sleeve. Mark teaches it is known to use such a modification as set forth in figure 42 elements 512, 514, [0145]-[0146] (Note: Element 514 is the communicating member and 512 is the delivery sleeve. The applicant discloses in [0107] of their published application that the delivery sleeve’s purpose is to facilitate a fiber optic light, which is what Mark also discloses in [0145]-[0146] for optical delivery lumen 512) to provide greater capability to deliver ancillary devices to or near a surgical site (e.g. see [0003] of Mark). It would have been obvious to one having ordinary skill in the art at the time the invention was made to use a delivery sleeve secured to the outside of the engagement sleeve to deliver a fiber optic light as taught by Mark in the system of Long, since said modification would provide the predictable results of greater capability to deliver ancillary devices to or near a surgical site.
Regarding claims 29-30, Long discloses the invention but is silent as to the communicating member includes an insulation layer extending from a proximal end to a distal end of the communicating member and a conductive area exposed at the distal end of the communicating member, wherein the conductive area is adjacent to the distal end of the engagement sleeve. However, Long teaches it is known to have a conductive portion (e.g. see column 5 lines 1-11) near the distal end of an insulated body (e.g. see figure 5 element 51). It would have been obvious to one having ordinary skill in the art at the time the invention was filed to use the conductive distal end in combination with the insulated body as taught by Long in the communication member of Mark, since said modification would provide the predictable results of allowing electrosurgical energy to flow through the grasped tissue to the external electrode, coagulating the grasped tissue (e.g. see column 5 lines 9-11).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PHILIP C EDWARDS whose telephone number is (571)270-1804. The examiner can normally be reached Mon-Fri, 9:00-5:00 EST.
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, Unsu Jung can be reached at 571-272-8506. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/P.C.E/Examiner, Art Unit 3792
/UNSU JUNG/Supervisory Patent Examiner, Art Unit 3792
Prosecution Insights