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 .
Applicant’s amendments and comments, received November 25, 2025, have been fully considered by the examiner. The following is a complete response to the November 25, 2025 communication.
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.
Claims 1-5, 9-13, 15-17 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Ichikawa et al (5,540,683) in view of the teachings of Robinson et al (10,709,497) and Fairbourn et al (9,913,947).
Ichikawa et al disclose a surgical device comprising a longitudinal shaft (92 – Figures 12-14) for insertion into a patient, and an end effector (91) on the distal portion of the shaft. The end effector is configured to cut tissue (col. 11, lines 7-10, for example) and comprises a first electrode and a second electrode with an insulation element (96) positioned between the electrodes to allow for bipolar cutting of tissue (col. 11, lines 1-10). Ichikawa et al fails to expressly disclose a non-stick layer covering the device, in particular, only the insulation layer.
Robinson et al, as addressed in the previous Office actions, provide a surgical device comprising a longitudinal shaft (12) having an end effector (110,120) on the distal portion of the shaft. The end effector includes an electrode (312,322) and an insulation element (316). A non-stick layer is provided over the insulation element (col. 5, lines 60-65, for example). The non-stick layer may be polydimethylsiloxane or hexadimethylsiloxane (col. 6, lines 18-27) and would therefore have the property of having a surface adherence to tissue that is less than a surface adherence to tissue of the material of the insulation element as claimed. Robinson et al also teach the coating may be provided on other parts of the end effector (e.g. on an electrode), similar to applicant’s own disclosure.
Fairbourn et al is cited to teach that it is known to coat both electrosurgical forceps (as taught by Robinson et al) and spatula/hook devices (as taught by Ichikawa et al) with a similar siloxane coating, thereby providing a nexus for the combination of providing the Robinson teaching of a siloxane coating on the hook shaped electrode of Ichikawa et al, and specifically a coating on only the insulation portion of the device.
To have provided the Ichikawa et al device with a non-stick coating over the insulation element to prevent tissue from adhering to the insulation surface during use would have been an obvious design consideration for one of ordinary skill in the art at the time of the invention since Robinson et al fairly teach the known use of such a coating on an electrosurgical end effector, and specifically on individual components such as an insulator. The combination is further made obvious by the teaching of Fairbourn et al who teach that such a coating may be provided on a variety of different devices including hook-shaped devices and forceps jaws alike.
Regarding claim 2, see Robinson et al at column 6, lines 18-27 as referenced above. Regarding claim 3, see Robinson et al at column 7, lines 10—20, for example). Regarding claim 4, see Robinson et al at column 7, lines 26-27. Regarding claim 5, the non-stick layer is continuously applied to the jaw members as disclosed by Robinson et al, and would intuitively be similarly provided on the Ichikawa et al end effector. Regarding claim 9, the same material is used for the Robinson et al non-stick coating and therefore has the same non-conductive properties. See, also, column 6, line 60 which discusses the dielectric nature of the coating. Regarding claim 10, there are a plurality of insulation elements including the insulation layer (96) of Ichikawa et al, and the coating which is also an insulation element. Regarding claim 11, see discussion of claim 9 above. Regarding claims 12 and 13, again the same material used by Robinson et al is the material disclosed and claimed by applicant and would have the same hydrophobic properties. Regarding claim 15, the Ichikawa et al end effector is a J-hook (Figures 12 and 13).
Regarding claim 16, Ichikawa et al, as addressed above, provides a device comprising an end effector having first and second electrodes separated by an insulator to provide bipolar cutting of tissue, and Robinson et al apply a non-stick layer to an insulation element of an end effector as addressed previously. The non-stick layer of Robinson et al may be a polydimethylsiloxane or hexadimethylsiloxane, which coatings are known to be hydrophobic (as applicant’s specification acknowledges). As addressed previously, Fairbourn et al provide the teaching that it is known to coat a variety of different electrosurgical end effectors, including spatula/J-hook instruments and forceps, with a similar non-stick coating.
To have provided the Ichikawa et al device with a non-stick coating over the end effector to prevent tissue from adhering to the end effector surface during use would have been an obvious design consideration for one of ordinary skill in the art at the time of the invention since Robinson et al fairly teach the known use of such a coating on an electrosurgical end effector. The combination is further made obvious by the teaching of Fairbourn et al who teach that such a coating may be provided on a variety of different devices including hook-shaped devices and forceps jaws alike.
Regarding claims 17 and 19, Robinson et al disclose depositing a coating using a chemical vapor deposition process (col. 6, lines 30-40, for example), which coating process is deemed an intuitive and obvious process for coating the Ichikawa et al device.
Claims 6 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Ichikawa et al (‘683) in view of the teachings of Robinson et al (‘497) and Fairbourn et al (‘947), and further in view of the teaching of Milbocker et al (2018/0236511).
Robinson et al provide a non-stick layer as addressed previously, but fail to expressly disclose providing hydrophobic pillars on the surface.
Milbocker et al disclose another coating for application to a substrate to create a hydrophobic pillars. See, for example, the abstract. Such pillars would further create asperities in the surface as recited in applicant’s claim 8.
To have provided the Robinson et al coating with hydrophobic pillars to create a desired hydrophilicity to the surface would have been an obvious consideration for one of ordinary skill in the art since Milbocker et al disclose the use of such pillars to control the hydrophilicity of a coating on a substrate. The combination of such a coating with the Ichikawa et al end effector, as evidenced by the teaching of Fairbourn et al, has been addressed previously.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Ichikawa et al (‘683) in view of the teachings of Robinson et al (‘497) and Fairbourn et al (‘947), and further in view of the teaching of Lin et al (2021/0403755).
Robinson et al fail to teach the coating comprises nanoparticles. In a similar field of coatings, Lin et al teach that dimethylsiloxane coatings may be provided as a nano-particle polymer (Abstract, for example) to protect metal surfaces from corrosion.
To have provided the Robinson et al coating as a nanoparticle polymer coating would have been an obvious consideration for one of ordinary skill in the art since Lin et al teach that it is known to provide similar coatings as a nanoparticle polymer for coating a metal device to prevent corrosion. The combination of such a coating with the Ichikawa et al end effector, as evidenced by the teaching of Fairbourn et al, has been addressed previously.
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Ichikawa et al (‘683) in view of the teachings of Robinson et al (‘497) and Fairbourn (‘947) and further in view of the teaching of Prausnitz et al (8,690,865).
Robinson et al fail to disclose etching the surface of the coating. In a similar field of endeavor, Prausnitz et al teach that it is fairly known to etch surfaces before applying a coating to the surface (col. 9, line 64 to col. 10, line 5). To have etched the Ichikawa et al surface prior to providing a coating as taught by Robinson et al and Fairbourn et al prior to applying the coating to assist in adhering the coating to the surface would have been an obvious consideration for one of ordinary skill in the art at the time of the invention since Prausnitz et al fairly teach this process.
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Ichikawa et al (‘683) in view of the teachings of Robinson et al (‘497) and Fairbourn et al (‘947) and further in view of the teaching of Heim et al (7,377,919).
Robinson et al disclose the chemical vapor deposition of the non-stick layer to the device, but fail to expressly disclose a process of physical vapor deposition for applying the layer. The examiner maintains that the various means for applying coatings are generally known to those of ordinary skill in the art. To that end, Heim et al disclose the use of chemical vapor deposition and physical vapor deposition, among other processes, to apply coatings to an electrosurgical instrument (col. 4, lines 50-60, for example). To have provided the non-stick coating to the Ichikawa et al device, as taught by the teachings of Robinson et al and Fairbourn et al, using a physical vapor deposition process would have been an obvious consideration for one of ordinary skill in the art at the time of the invention since Heim et al fairly teach it is known to use such a process as an obvious alternative to chemical vapor deposition to apply coatings to an electrosurgical instrument.
Response to Arguments
Applicant's arguments filed November 25, 2025 have been fully considered but they are not persuasive.
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Applicant asserts on page 5 of the November 25, 2025 response that “Neither Ichikawa nor Robinson discloses the specific location or placement of a siloxane coating on an electrosurgical instrument”. The examiner disagrees. Robinson expressly teaches that various components of an end effector may be advantageously coated with a non-stick layer to prevent tissue build up during use of the device during electrosurgery. That is, Robinson specifically teaches that one or multiple components of an end effector (e.g. electrode or insulation surface) may be coated with a non-stick layer to prevent tissue buildup on the one or more various surfaces. See again, column 5 lines 60-65 of Robinson. It is generally well-known in the art that tissue adherence on various components of an end effector may be detrimental to the operation and longevity of the end effector. Robinson clearly teaches that it is known to selectively coat any desired surface that may experience tissue adhesion with a non-stick coating to ensure proper operation and improve the longevity of the device. That Robinson does not specifically disclose an insulation element positioned between two electrodes does not change the base teaching of Robinson that non-stick layers may be placed on any component that may be susceptible to tissue adherence. Furthermore, it is noted that applicant’s own specification teaches that the non-stick coating may be located on more than just the insulation layer. That is, applicant’s specification specifically teaches that the electrode may also be coated with the non-stick layer. See, for example, paragraph [0108] of the printed publication and originally filed claim 14. Hence, applicant’s own specification supports the notion that the insulation coating may be provided on different parts of the electrosurgical instrument and does not specifically teach any criticality or unexpected result associate with coating only the insulation layer.
Ichikawa clearly provides an end effector having first and second electrodes separated by an insulation element as required by the claims. Such a device would clearly be prone to tissue adherence during use, as would any similar electrosurgical device. One of ordinary skill in the art would obviously glean from Robinson that it would be obvious to provide a coating of a non-stick material to prevent tissue adhesion that could cause the device to operate in a less desirable manner or cause the device to fail during use. Robinson provides the teaching that it is known to coat one or more portions (including an insulation) of an electrosurgical device with a non-stick coating. Again, Fairbourn is cited merely to demonstrate that it is generally known in the art to provide silane coatings on a variety of different end effectors, including J-hooks (as taught by Ichikawa) and forceps jaws (as taught by Robinson). That Fairbourn does not specify the location of the non-stick coating is irrelevant since Robinson expressly teaches that individual surfaces, such as an insulator, may be provided with a non-stick coating. Hence, the examiner maintains the combination of teachings continue to read on the claims as set forth in the rejections above.
Applicant’s arguments directed towards the remaining 103 rejections in view of various other prior art references are all predicated on the basis that the additional references fail to cure the deficiencies of the combination of the Ichikawa, Robinson and Fairbourn references. As addressed above, the examiner maintains the combination of Ichikawa, Robinson and Fairbourn remain a viable combination, and the further addition of references to treat specific claims are also deemed to remain viable.
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 MICHAEL PEFFLEY whose telephone number is (571)272-4770. The examiner can normally be reached Mon-Fri 8 am-5 pm.
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/MICHAEL F PEFFLEY/Primary Examiner, Art Unit 3794
/M.F.P/January 19, 2026