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
In light of Applicant’s amendment, claim(s) 1, 8, and 10 is/are amended. Claims 1-13 are pending examination.
Response to Arguments
Applicant’s arguments, filed 9/11/2025, with respect to the rejection(s) of claim(s) 1 and 8 under U.S.C. 102 have been fully considered and are persuasive. Specifically, Examiner agrees the newly amended limitations “based at least in part on the determined present motor rotation speed, between: a braking signal, providing active braking of the inner tubular member, selected according to the present motor rotation speed is beneath a specified threshold value, to abruptly stop rotation of the motor, the braking signal controlled such that the inner and outer cutting windows become circumferentially aligned following the active braking; and a second motor signal, selected according to the present motor rotation speed is above the specified threshold value, to rotate the inner tubular member via the motor at a second speed slower than the first speed, and then terminating the second motor signal to allow to motor to stop rotating such that the inner and outer cutting windows are circumferentially aligned” overcome the previous rejections as written. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Benamou in view of Krause.
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) 1-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Benamou et al. (US 20170303990 A1) (previously of record) in view of Krause et al. (US 5602449 A) (previously of record) and Mark et al. (US 20010007944 A1).
Regarding claim 1, Benamou discloses a powered surgical instrument (100), powered by a motor (105) (Paragraph 0036), the surgical instrument comprising:
a cutting assembly (140+142) including:
an outer tubular member (140) defining an outer cutting window (158) (Figure 2A-B; Paragraph 0037);
an inner tubular member (142+145) arranged to be rotated at a first speed via the motor, based on a first motor signal (control signal from motor), concentrically within the outer tubular member and defining an inner cutting window (154) (Figure 2A-B; Paragraph 0037; 0039); and
a control system (165+240) including:
an angular position sensor (hall-effect sensor) (Paragraph 0043), configured to provide an indication of angular orientation (Paragraph 0043) and
a controller (165, controller + processor) configured to:
control a rate of change of the angular orientation of the inner cutting window relative to the outer cutting window (Paragraph 0029; 0034; 0039),
terminate the first motor signal to initiate deceleration of the motor (Paragraph 0051-52);
determine a present motor rotation speed during the deceleration of the motor (Paragraph 0052);
monitor, via sensor feedback from the angular position sensor, a present angular position of the inner and outer cutting windows relative to each other (Paragraph 0043; 0046); and
a braking signal, providing active braking of the inner tubular member, when the present motor rotation speed is beneath a specified threshold value, to abruptly stop rotation of the motor such that the inner and outer cutting windows (Paragraph 0047; 0052) (“the control algorithm then applies dynamic braking to instantly stop rotation of the motor drive shaft 151 drive coupling 150 and the motor-driven component of the probe”).
Benamou fails to explicitly disclose the controller is configured to select, based at least in part on the determined present motor rotation speed, between: a braking signal, providing active braking of the inner tubular member, selected according to the present motor rotation speed is beneath a specified threshold value, to abruptly stop rotation of the motor, the braking signal controlled such that the inner and outer cutting windows become circumferentially aligned following the active braking; and a second motor signal, selected according to the present motor rotation speed is above the specified threshold value, to rotate the inner tubular member via the motor at a second speed slower than the first speed, and then terminating the second motor signal to allow to motor to stop rotating such that the inner and outer cutting windows are circumferentially aligned.
However, Krause is directed to a motor controlled cutting device and teaches a controller (16) configured to select, based at least in part on the determined present motor rotation speed (looking at the motor speed and determining if it is higher or lower than a defined threshold) (Col 8, lines 38-39), between: a braking signal (controlled stop), providing active braking of the inner tubular member (88), selected according to the present motor rotation speed is beneath a specified threshold value, to abruptly stop rotation of the motor (The claim limitation of “abruptly stop rotation of the motor” doesn’t specify how quickly “abrupt” is, thus the speed of the controlled stop is seen as an “abrupt stop”), and then the second motor signal is the “the motor is slowed down to a speed below the threshold value) (Col 8, line 40-44), the braking signal controlled such that the inner and outer cutting windows become circumferentially aligned (in a predetermined position) following the active braking (Col 7, line 7-13; Col 8, line 40-44); and a second motor signal (when the motor first is slowed down), selected according to the present motor rotation speed is above the specified threshold value (Col 8, line 37-38), to rotate the inner tubular member via the motor at a second speed slower than the first speed (the speed at which the motor is slowed down to) to allow to motor to stop rotating such that the inner and outer cutting windows are circumferentially aligned (Col 7, line 7-13).
A person of ordinary skill in the art before the effective filing date of the claimed invention would have been motivated to modify Benamou such that the controller is configured to select, based at least in part on the determined present motor rotation speed, between: a braking signal, providing active braking of the inner tubular member, selected according to the present motor rotation speed is beneath a specified threshold value, to abruptly stop rotation of the motor, the braking signal controlled such that the inner and outer cutting windows become circumferentially aligned following the active braking; and a second motor signal, selected according to the present motor rotation speed is above the specified threshold value, to rotate the inner tubular member via the motor at a second speed slower than the first speed to allow to motor to stop rotating such that the inner and outer cutting windows are circumferentially aligned, as taught by Krause, as both references and the claimed invention are directed to rotating medical devices. It would be obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified Benamou with the teachings of Krause by incorporating the controller is configured to select, based at least in part on the determined present motor rotation speed, between: a braking signal, providing active braking of the inner tubular member, selected according to the present motor rotation speed is beneath a specified threshold value, to abruptly stop rotation of the motor, the braking signal controlled such that the inner and outer cutting windows become circumferentially aligned following the active braking; and a second motor signal, selected according to the present motor rotation speed is above the specified threshold value, to rotate the inner tubular member via the motor at a second speed slower than the first speed to allow to motor to stop rotating such that the inner and outer cutting windows are circumferentially aligned in order to determine the most appropriate stop for the motor to allow the inner blade to stop at the desired position regardless of when the user stops the device. However, the combination of Benamou and Krause fails to explicitly teach terminating the second motor signal to allow to motor to stop rotating.
Furthermore, Mark is directed to a surgical cutting instrument and teaches terminating a motor signal to allow to motor to stop rotating, as the current to the motor can be terminated and the motor will coast to a stop at the appropriate position (Paragraph 0063).
A person of ordinary skill in the art before the effective filing date of the claimed invention would have been motivated to modify Benamou and Krause such that terminating a motor signal to allow to motor to stop rotating, as taught by Mark, as both references and the claimed invention are directed to surgical cutting instruments. It would be obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified Benamou and Krause with the teachings of Mark by incorporating terminating a motor signal to allow to motor to stop rotating in order to allow the motor to coast to a stop to safely stop the device (Mark Paragraph 0063).
Regarding claim 2, Benamou further discloses wherein the relative rotation between the inner and outer tubular members is stopped or paused in response to a user input (releasing actuation of an actuator button or foot pedal) (Paragraph 0052).
Regarding claim 3, Benamou further discloses wherein the control system is configured to receive the indication of angular orientation from the angular position sensor to offset the inner and outer cutting windows, without requiring user intervention, when relative rotation between the inner and outer tubular members is stopped or paused (Paragraph 0047; 0051).
Regarding claim 4, Benamou further discloses wherein the control system is configured to receive the indication of angular orientation from the angular position sensor upon a first alignment of the inner and outer tubular members (Paragraph 0045-46), and to stop or pause relative rotation between the inner and outer tubular members upon a second and subsequent alignment of the inner and outer tubular members (Paragraph 0051-52).
Regarding claim 5, Benamou further discloses wherein the control system is configured to stop or pause the relative rotation between the inner and outer tubular members without a user input (Paragraph 0042-43).
Regarding claim 6, Benamou as modified by Krause and ___ teaches the surgical instrument of claim 4 but fails to specifically disclose the control system is configured to, based on a user input to the control system, control a dwell time for which the relative rotation between the inner and outer tubular members is paused.
However, Krause is directed to a surgical instrument and teaches the control system is configured to, based on a user input to the control system, control a dwell time for which the relative rotation between the inner and outer tubular members is paused (Col 8, line 28-37).
It would be obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified Benamou with the teachings of Krause by incorporating wherein the control system is configured to, based on a user input to the control system, control a dwell time for which the relative rotation between the inner and outer tubular members is paused in order to make the stopping process of the instrument safer as there would be time for the speed of the cutter to reduce before removing the instrument from the body (Krause Col 3, lines 7-12).
Regarding claim 7, Benamou further discloses wherein the angular position sensor includes an optical encoder of a motor configured to be coupled to the inner tubular member and configured to rotate the inner tubular member in a forward direction and in a reverse direction (Paragraph 0020; 0051).
Regarding claim 8, Benamou discloses a powered surgical instrument (100), powered by a motor (105) (Paragraph 0036), the surgical instrument comprising:
a housing (104) (Paragraph 0036);
a cutting assembly (110) including:
an outer tubular member (140) defining an outer cutting window (158) extending through an annular surface of the outer tubular member (Figure 3A; Paragraph 0037);
an outer hub (120) coupled to a proximal portion of the outer tubular member (Figure 2A-B);
an inner tubular member (142) arranged to be rotated at a first speed via the motor, based on a first motor signal (control signal from motor), concentrically within the outer tubular member and defining an inner cutting window (154) (Figure 2A-B; Paragraph 0037; 0039);
an inner hub (105) positioned within the housing and coupled to a proximal portion of the inner tubular member (Figure 2A-B; Paragraph 0051); and
a control system (165+240) configured to”
control a rate of rotation of the inner tubular member relative to the outer tubular member (Figure 8; Paragraph 0052);
terminate the first motor signal to initiate deceleration of the motor (Paragraph 0051-52);
determine a present motor rotation speed during the deceleration of the motor (Paragraph 0052);
monitor, via sensor feedback from the angular position sensor, a present angular position of the inner and outer cutting windows relative to each other (Paragraph 0043; 0046); and
a braking signal, providing active braking of the inner tubular member, when the present motor rotation speed is beneath a specified threshold value, to abruptly stop rotation of the motor such that the inner and outer cutting windows are then at least partially aligned (Paragraph 0047; 0052) (“the control algorithm then applies dynamic braking to instantly stop rotation of the motor drive shaft 151 drive coupling 150 and the motor-driven component of the probe”).
Benamou fails to explicitly disclose the controller is configured to select, based at least in part on the determined present motor rotation speed, between: a braking signal, providing active braking of the inner tubular member, selected according to the present motor rotation speed is beneath a specified threshold value, to abruptly stop rotation of the motor, the braking signal controlled such that the inner and outer cutting windows become circumferentially aligned following the active braking; and a second motor signal, selected according to the present motor rotation speed is above the specified threshold value, to rotate the inner tubular member via the motor at a second speed slower than the first speed, and then terminating the second motor signal to allow to motor to stop rotating such that the inner and outer cutting windows are circumferentially aligned.
However, Krause is directed to a motor controlled cutting device and teaches a controller (16) configured to select, based at least in part on the determined present motor rotation speed (looking at the motor speed and determining if it is higher or lower than a defined threshold) (Col 8, lines 38-39), between: a braking signal (controlled stop), providing active braking of the inner tubular member (88), selected according to the present motor rotation speed is beneath a specified threshold value, to abruptly stop rotation of the motor (The claim limitation of “abruptly stop rotation of the motor” doesn’t specify how quickly “abrupt” is, thus the speed of the controlled stop is seen as an “abrupt stop”) (Col 8, line 40-44), the braking signal controlled such that the inner and outer cutting windows become circumferentially aligned (in a predetermined position) following the active braking (Col 7, line 7-13; Col 8, line 40-44); and a second motor signal (when the motor first is slowed down), selected according to the present motor rotation speed is above the specified threshold value (Col 8, line 37-38), to rotate the inner tubular member via the motor at a second speed slower than the first speed (the speed at which the motor is slowed down to) to allow to motor to stop rotating such that the inner and outer cutting windows are circumferentially aligned (Col 7, line 7-13).
A person of ordinary skill in the art before the effective filing date of the claimed invention would have been motivated to modify Benamou such that the controller is configured to select, based at least in part on the determined present motor rotation speed, between: a braking signal, providing active braking of the inner tubular member, selected according to the present motor rotation speed is beneath a specified threshold value, to abruptly stop rotation of the motor, the braking signal controlled such that the inner and outer cutting windows become circumferentially aligned following the active braking; and a second motor signal, selected according to the present motor rotation speed is above the specified threshold value, to rotate the inner tubular member via the motor at a second speed slower than the first speed to allow to motor to stop rotating such that the inner and outer cutting windows are circumferentially aligned, as taught by Krause, as both references and the claimed invention are directed to rotating medical devices. It would be obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified Benamou with the teachings of Krause by incorporating the controller is configured to select, based at least in part on the determined present motor rotation speed, between: a braking signal, providing active braking of the inner tubular member, selected according to the present motor rotation speed is beneath a specified threshold value, to abruptly stop rotation of the motor, the braking signal controlled such that the inner and outer cutting windows become circumferentially aligned following the active braking; and a second motor signal, selected according to the present motor rotation speed is above the specified threshold value, to rotate the inner tubular member via the motor at a second speed slower than the first speed to allow to motor to stop rotating such that the inner and outer cutting windows are circumferentially aligned in order to determine the most appropriate stop for the motor to allow the inner blade to stop at the desired position regardless of when the user stops the device. However, the combination of Benamou and Krause fails to explicitly teach terminating the second motor signal to allow to motor to stop rotating.
Furthermore, Mark is directed to a surgical cutting instrument and teaches terminating a motor signal to allow to motor to stop rotating, as the current to the motor can be terminated and the motor will coast to a stop at the appropriate position (Paragraph 0063).
A person of ordinary skill in the art before the effective filing date of the claimed invention would have been motivated to modify Benamou and Krause such that terminating a motor signal to allow to motor to stop rotating, as taught by Mark, as both references and the claimed invention are directed to surgical cutting instruments. It would be obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified Benamou and Krause with the teachings of Mark by incorporating terminating a motor signal to allow to motor to stop rotating in order to allow the motor to coast to a stop to safely stop the device (Mark Paragraph 0063).
Regarding claim 9, Benamou further discloses a first angular position sensor (245) to provide an indication of angular orientation of the inner tubular member to the control system (Paragraph 0043; 0047); and a second angular position sensor (240) to provide an indication of angular orientation of the outer tubular member to the control system, so that the inner and outer cutting windows are capable of being at least partially aligned by the control system, without requiring user intervention, when relative rotation between the inner and outer tubular members is stopped or paused (Paragraph 0043; 0045); and wherein the first and the second angular position sensors each include an optical sensor (Paragraph 0007) located with respect to the inner hub and the outer hub, respectively (Benamou discloses an optical sensor is interchangeable with the magnetic sensor described specifically in the disclosure) (Paragraph 0020).
Regarding claim 10, Benamou further discloses a first angular position sensor (245) to provide an indication of angular orientation of the inner tubular member to the control system (Paragraph 0043; 0047); and a second angular position sensor (240) to provide an indication of angular orientation of the outer tubular member to the control system, so that the inner and outer cutting windows are capable of being at least partially aligned by the control system, without requiring user intervention, when relative rotation between the inner and outer tubular members is stopped or paused (Paragraph 0043; 0045); wherein the first and the second angular position sensor each includes a hall-effect sensor located with respect to the inner hub and the outer hub, respectively (Paragraph 0043; 0047).
Regarding claim 11, Benamou further discloses wherein the control system is configured to, based on a user input, automatically control an angular position of the inner cutting window relative to the outer cutting window when the inner tubular member is stopped or paused between forward or reverse rotation of the inner tubular member (Paragraph 0051-52) (the system can be deactivated at a desired point when the physician releases the actuator button or foot pedal).
Regarding claim 12, Benamou further discloses wherein the inner hub is coupled to a motor (151) with a coupler (150) configured to allow the cutting assembly to be detachable from the housing (Paragraph 0037; 0057).
Regarding claim 13, Benamou further discloses wherein the control system is configured to, after receiving a signal from the angular position sensor indicating circumferential alignment of the inner cutting window with the outer cutting window, stop the inner tubular member within one or two subsequent 360 degree rotations of the inner tubular member (Paragraph 0051-53) (Paragraph 0053 states the rotation can be stopped with a variance of 10-15 degrees, which us within one to two 360 degree rotations).
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 ZEHRA JAFFRI whose telephone number is (571)272-7738. The examiner can normally be reached 8 AM-5:30 PM.
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/Z.J./Examiner, Art Unit 3771
/BROOKE LABRANCHE/Primary Examiner, Art Unit 3771