DETAILED ACTION
Applicant's remarks in the pre-appeal conference request, filed 11/24/25, are fully acknowledged by the Examiner. Currently, claims 1-16 are pending. The following is a complete response to the 11/24/25 communication.
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 § 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) 1, 2, 7, 10, 12-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Brady (US 2020/0315685).
Regarding claim 1, Brady teaches an endoscopic surgical forceps, comprising: a housing (10)
including an elongated shaft having a distal portion extending therefrom and a proximal portion coupled to the housing (shaft 12 with a proximal portion coupled to 10 and a distal portion extending from 10 to the end effector), the elongated shaft having a longitudinal axis defined therethrough (shaft 12 with a longitudinal axis through the length of the shaft);
an end effector assembly operably coupled to a distal end of the elongated shaft (14), the end effector including first and second jaw members (16a, 16b), at least one of the jaw members movable relative to the other jaw member between an open position wherein the at least one jaw member is spaced relative to the other jaw member (as in par. [0043] with the jaws open) and a closed position wherein the first and second jaw members cooperate to grasp tissue therebetween ([0043] with the jaws closed via actuation);
a first handle pivotably coupled to the housing and movable relative to a second handle disposed on the housing (second handle 22, and first handle 20), the first handle operably coupled to the at least one jaw member and configured to actuate the at least one jaw member between the open and closed positions upon movement thereof relative to the second handle (20 to actuate the jaws to open and close relative to each other as in par. [0043]);
a trigger operably coupled to the housing and configured to deploy a knife between the first and second jaw members upon actuation thereof (24 to deploy a knife between the jaw members as in par. [0049]); and
an energy activation switch adapted to couple to an electrosurgical energy source such that activation thereof supplies energy to at least one of the first and second jaw members (26 to apply sealing energy to the end effector). Brady is not explicit regarding the energy activation switch disposed on the trigger, but shows in Fig. 1 26 on 24 from a planar perspective.Given Fig. 1 shows 26 and 24 in proximity, one of ordinary skill in the art would appreciate that through routine experimentation, Fig. 1 of Brady would depict having the switch and trigger side by side, or the switch on the trigger. It would have been obvious to one of ordinary skill in the art that the energy activation switch could be on the trigger, as a way of positioning 26 and 24 to allow the user to ergonomically use the device.
Regarding claim 2, Brady teaches wherein actuation of the trigger requires a first force and activation of the energy activation switch requires a second force, the first force being greater than the second force (Figs. 1-2, 26 on 24 would require different forces to actuate the trigger vs the energy activation switch, such that the trigger force requires more than the switch force).
Regarding claim 7, Brady teaches an auxiliary energy activation switch disposed on the second
handle, the auxiliary energy activation switch, upon activation, also configured to provide energy from the electrosurgical energy source according to an algorithm for sealing tissue between the first and second jaw members (44 as in par. [0066)).
Regarding claim 10, Brady teaches an endoscopic surgical forceps, comprising:
a housing (10) including an elongated shaft having a distal portion extending therefrom and a proximal portion coupled to the housing (shaft 12 with a proximal portion coupled to 10 and a distal portion extending from 10 to the end effector), the elongated shaft having a longitudinal axis defined therethrough (shaft 12 with a longitudinal axis through the length of the shaft);
an end effector assembly operably coupled to a distal end of the elongated shaft (14), the end effector including first and second jaw members (jaws 16a-b), at least one of the jaw members movable relative to the other jaw member between an open position wherein the at least one jaw member is spaced relative to the other jaw member (as in par. [0043] with the jaws open) and a closed position wherein the jaw members cooperate to grasp tissue therebetween ([0043] with the jaws closed via actuation);
a trigger operably coupled to the housing and configured to deploy a knife between the first and second jaw members upon actuation thereof (24 to deploy a knife between the jaw members as in par. [0049]);
and an energy activation switch adapted to couple to an electrosurgical energy source such that activation thereof supplies energy to at least one of the first and second jaw members (26 to apply sealing energy to the end effector). Brady is not explicit regarding the energy activation switch disposed on the trigger, but shows in Fig. 1 26 on 24 from a planar perspective.Given Fig. 1 shows 26 and 24 in proximity, one of ordinary skill in the art would appreciate that through routine experimentation, Fig. 1 of Brady would depict having the switch and trigger side by side, or the switch on the trigger. It would have been obvious to one of ordinary skill in the art that the energy activation switch could be on the trigger, as a way of positioning 26 and 24 to allow the user to ergonomically use the device.
Regarding claim 12, Brady teaches an endoscopic surgical forceps, comprising:
a housing (10) including an elongated shaft having a distal portion extending therefrom and a proximal portion coupled to the housing (shaft 12 with a proximal portion coupled to 10 and a distal portion extending from 10 to the end effector), the elongated shaft having a longitudinal axis defined therethrough (shaft 12 with a longitudinal axis through the length of the shaft);
an end effector assembly operably coupled to a distal end of the elongated shaft (14), the end effector including first and second jaw members (jaws 16a-b), at least one of the jaw members movable relative to the other jaw member between an open position wherein the at least one jaw member is spaced relative to the other jaw member (as in par. [0043] with the jaws open) and a closed position wherein the jaw members cooperate to grasp tissue therebetween ([0043] with the jaws closed via actuation);
a trigger operably coupled to the housing and configured to deploy a knife between the first and second jaw members upon actuation thereof (24 to deploy a knife between the jaw members as in par. [0049]);
an energy activation switch adapted to couple to an electrosurgical energy source such that activation thereof supplies energy to at least one of the first and second jaw members (Fig. 1 with 26 and 24, with 26 connected to an energy source); and a toggle disposed on the housing and configured to change an energy modality of the energy activation switch between at least two energy modalities (44 as in par. [0066)).Brady is not explicit regarding the energy activation switch disposed on the trigger, but shows in Fig. 1 26 on 24 from a planar perspective.Given Fig. 1 shows 26 and 24 in proximity, one of ordinary skill in the art would appreciate that through routine experimentation, Fig. 1 of Brady would depict having the switch and trigger side by side, or the switch on the trigger. It would have been obvious to one of ordinary skill in the art that the energy activation switch could be on the trigger, as a way of positioning 26 and 24 to allow the user to ergonomically use the device.
Regarding claim 13, Brady teaches wherein the toggle is moveable between a first position enabling the supply monopolar energy from the electrosurgical energy source to at least one of the jaw members upon activation of the energy activation switch (par. [0066] monopolar in one position) and a second position enabling the supply of bipolar energy from the electrosurgical energy source to the first and second jaw members upon activation of the energy activation switch (par. [0066] bipolar in a second position).
Regarding claim 14, Brady teaches an auxiliary energy activation switch disposed on the second handle, the auxiliary energy activation switch, upon activation, also configured to provide energy from the electrosurgical energy source according to an algorithm for sealing tissue between the first and second jaw members (par. [0070] actuator 218a-b for delivering energy).
Claim(s) 3-5 and 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Brady in view of Masuda (US 2010/0331742).
Regarding claim 3, Brady teaches wherein the energy activation switch is adapted to connect to an electrosurgical energy source capable of supplying multiple energy modalities to the jaw members upon activation thereof (monopolar and bipolar energy from generator 52 as in par. [0066]), but is not explicit wherein the energy modality of the energy activation switch is dependent on the position of the first handle relative to the second handle. However, Masuda teaches a forceps device with a switchable power delivery mode, switching in interlock with opening/closing of the jaw (par. [0010], par. [0170] with switching as in Fig. 52). It would have been obvious to one of ordinary skill in the art to modify Brady with the energy modality switching based on the handle position and jaw position, as in Masuda, allowing for treatment based on how the device is actuated.
Regarding claim 4, Brady teaches wherein when the first handle is disposed in an open position (20 in open position), the energy activation switch, when activated, provides monopolar energy from the electrosurgical energy source to at least one jaw member (par. [0056] monopolar energy applied via electrode from a jaw member to tissue).
Regarding claim 5, Brady is not explicit wherein when the first handle is disposed in a partially closed position, the energy activation switch, when activated, provides bipolar energy from the electrosurgical energy source to the first and second jaw members.
However, Masuda teaches a forceps device with a switchable power delivery mode, switching in interlock with opening/closing of the jaw (par. [0010], par. [0170] with switching as in Fig. 52 when jaw is not substantively closed or the handle is not fully closed).
It would have been obvious to one of ordinary skill in the art to modify Brady with the energy modality switching based on the handle position and jaw position, as in Masuda, allowing for treatment based on how the device is actuated.
Regarding claim 11, Brady teaches wherein the energy activation switch is adapted to connect to an electrosurgical energy source capable of supplying multiple energy modalities to the first and second jaw members upon activation of the energy activation switch (monopolar and bipolar energy from generator 52 as in par. [0066]), but is not explicit wherein the energy modality of the energy activation switch is dependent the actuation direction of the energy activation switch relative to the longitudinal axis.
However, Masuda teaches a forceps device with a switchable power delivery mode, switching in interlock in a longitudinal direction with opening/closing of the jaw (par. [0010], par. [0170] with switching as in Fig. 52).
It would have been obvious to one of ordinary skill in the art to modify Brady with the energy modality switching based on the handle position and jaw position, as in Masuda, allowing for treatment based on how the device is actuated.
Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Brady in view of Masuda, in further view of Dycus (US 2012/0226276).
Regarding claim 6, Brady is not explicit wherein when the first handle is disposed in a fully closed position and is generating a closure pressure within the range of about 3kg/cm2 to about 16 kg/cm2 between the first and second jaw members, the energy activation switch, when activated, provides energy from the electrosurgical energy source according to an algorithm for sealing tissue between the first and second jaw members.
However, Dycus teaches actuating an actuator to apply a pressure of 3-16 kg/cm2 to engage tissue, and energizing the jaws to treat tissue (par. [0057]).
It would have been obvious to one of ordinary skill in the art to modify Brady with the closure pressure of Dycus, as a known working pressure to engage tissue for treatment with grasped tissue.
Claim(s) 8 and 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Brady in
further view of Dycus.
Regarding claim 8, Brady is silent wherein the auxiliary energy activation switch is activatable by the first handle moving relative to the second handle from an open position to a fully closed position wherein the first handle generates a closure pressure within the range of about 3kg/cm^2 to about 16 kg/cm4^2 between the first and second jaw members.
However, Dycus teaches actuating an actuator to apply a pressure of 3-16 kg/cm^2 to engage tissue, and energizing the jaws to treat tissue (par. [0057]).
It would have been obvious to one of ordinary skill in the art to modify Brady with the closure pressure of Dycus, as a known working pressure to engage tissue for treatment with grasped tissue.
Regarding claim 15, Brady is silent wherein the auxiliary energy activation switch is activatable by the first handle moving relative to the second handle from an open position to a fully closed position wherein the first handle generates a closure pressure within the range of about 3kg/cm^2 to about 16 kg/cm^2 between the first and second jaw members.
However, Dycus teaches actuating an actuator to apply a pressure of 3-16 kg/cm2 to engage tissue, and energizing the jaws to treat tissue (par. [0057]).
It would have been obvious to one of ordinary skill in the art to modify Brady with the closure pressure of Dycus, as a known working pressure to engage tissue for treatment with grasped tissue.
Claim(s) 9 and 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Brady in further view of Dycus in view of Masuda.
Regarding claim 9, Brady teaches wherein the energy activation switch, when activated, provides monopolar or bipolar energy to the first and second jaw members depending upon the position of the first handle relative to the second handle.
However, Masuda teaches a forceps device with a switchable power delivery mode, switching in interlock in a longitudinal direction with opening/closing of the jaw (par. [0010], par. [0170] with switching as in Fig. 52).
It would have been obvious to one of ordinary skill in the art to modify Brady with the energy modality switching based on the handle position and jaw position, as in Masuda, allowing for treatment based on how the device is actuated.
Regarding claim 16, Brady is not explicit wherein the energy activation switch, when activated,
provides monopolar or bipolar energy to the first and second jaw members depending upon the position of the first handle relative to the second handle.
However, Masuda teaches a forceps device with a switchable power delivery mode, switching in interlock with opening/closing of the jaw (par. [0010], par. [0170] with switching as in Fig. 52).
It would have been obvious to one of ordinary skill in the art to modify Brady with the energy modality switching based on the handle position and jaw position, as in Masuda, allowing for treatment based on how the device is actuated.
Response to Arguments
Applicant’s arguments, see the pre-appeal brief conference request, filed 11/24/25, with respect to the rejection(s) of claim(s) 1-16 under 35 USC 102(a)(1) have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Brady as a 35 USC 103 rejection.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BO OUYANG whose telephone number is (571)272-8831. The examiner can normally be reached M-F 8-5 EST.
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/BO OUYANG/Examiner, Art Unit 3794
/JOANNE M RODDEN/Supervisory Patent Examiner, Art Unit 3794