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 . 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.
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 1 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 1 has been amended to recite that a “distal end” of the tissue clamping assembly has ears. But according to the specification, it is the proximal ends of the tissue clamping assembly that has ears (e.g. 420, fig. 5C). Further, the claim has been amended to recite that the ears have slots that receive “the first and second movable fasteners” but the specification states that the ears each only have a single slot (424, fig. 5A) that engages a single fastener (470).
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.
Claim 1 is 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 1, the claim has been amended to recite the second engagement portion includes a pair of arms each having an opening and a slot “configured to receive and second a second movable fastener.” It is not clear if the second movable fastener is in the opening or the slot, or both. This is understood to be fundamentally an indefiniteness issue and so a rejection under 35 U.S.C. 112(a) is not made at this time.
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 1 is rejected under 35 U.S.C. 103 as being unpatentable over Kendrick (US 2013/0304058) in view of Parihar (US 2014/0243799) and Waaler (US 2013/0289561).
Regarding claim 1, Kendrick discloses an electrosurgical forceps (figs. 1 and 3) including a housing (20) with a handle (30) that moves an inner tube (132) with a yoke including a pair of arms (distal end of 132, fig. 2) each having an opening to secure a first fastener (139), the inner tube movable relative to an outer tube (12) with a yoke including a pair of arms (16a-b) each with an opening (17a,17b) and a slot (18) configured to receive a second fastener (95). These elements combine with a tissue clamping assembly (100, fig. 3) including first and second jaws (110, 120) each having an ear (113, 123) with slots (114b, 124b) that engages a fastener (139) to couple the clamping assembly to the engagement portions so that movement of the handle causes movement of the tissue clamping assembly by relative movement of the inner and outer tubes (see also holes 114a, 124b in the ears for holding the other fastener 95). Kendrick does not disclose the diameter of the clamping assembly or the use of ultrasound transducers. However, both of these elements are extremely common in the art. Parihar, for example, discloses a forceps with a diameter of less than 3 mm ([0006], [0016]) and Waaler discloses a forceps and teaches that any of several types of tissue treatment elements can be employed including ultrasound transducers ([0008]), which is a teaching of functional equivalence (MPEP 2144.06). Therefore, before the application was filed, it would have been obvious to modify the forceps of Kendrick to have any commonly known diameter including around 3 mm as taught by Parihar and to have any commonly known tissue treatment element including ultrasound transducers as taught by Waller, that would produce the predictable result of allowing a user to treat tissue in a desired manner.
Conclusion
prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Forceps devices which use inner and outer tubes each having yokes with pins for interacting with slots/holes on jaw ears are common in the art, as noted above, but see also fig. 7 of US 2015/0032150 to Ishida. Other very similar devices for actuating forceps are also very common, such as fig. 7 of US 2017/0119459 to Schechter, fig. 3 of US 2010/0076433 to Taylor and fig. 3 of US 2013/0082035 to Allen which are identical with the claimed forceps mechanism except for the fact that the inner movable element is a rod/bar and not a tube.
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 WAYNE FOWLER whose telephone number is (571)270-3201. The examiner can normally be reached Monday-Friday (9-5).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Stoklosa can be reached on 571-272-1213. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DANIEL W FOWLER/Primary Examiner, Art Unit 3794
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