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 .
Specification
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
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) 21-33 and 35-40 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Witt (US 6,454,781).
Regarding claim 21, Witt discloses a surgical instrument, comprising:(a) a shaft assembly (22); and (b) an end effector located distally relative to the shaft assembly (24), wherein the end effector is operable to cut and seal tissue, the end effector comprising: (i) an ultrasonic blade (20) configured to operatively couple with a transducer assembly such that the ultrasonic blade is configured to transmit ultrasonic energy for cutting tissue, (ii) a first electrode provided by the ultrasonic blade, and (iii) a second electrode provided by the ultrasonic blade (column 11, lines 22-67; also see electrodes 134 and 130 or 142), wherein the first electrode and the second electrode are configured to cooperatively apply bipolar RF energy for sealing tissue cut by the ultrasonic blade (column 3, lines 1-7 discusses the ability to switch between cutting and coagulating depending on the setting; column 12, lines 42-57 discusses autobipolar mode with the utilized generator).
Regarding claim 22, Witt discloses the end effector of claim 21, wherein the first electrode is configured to activate at an active polarity while the second electrode is configured to serve as a return electrode (column 11, lines 22-67).
Regarding claims 23 and 38, Witt discloses the end effector of claim 22, wherein the first electrode is placed at a distal tip of the ultrasonic blade (view figure 12; column 11, lines 22-67).
Regarding claim 24, Witt discloses the end effector of claim 23, wherein the second electrode is placed at the distal tip of the ultrasonic blade and spaced away from the first electrode(view figure 12; column 11, lines 22-67).
Regarding claim 25, Witt discloses the end effector of claim 23, wherein the second electrode is located proximally relative to the first electrode(view figure 12; column 11, lines 22-67).
Regarding claim 26, Witt discloses the end effector of claim 25, wherein the second electrode is located on a side portion of the ultrasonic blade (view figure 12; column 11, lines 22-67).
Regarding claim 27, Witt discloses the surgical instrument of claim 21, wherein the surgical instrument further comprises a first actuator configured to activate the ultrasonic blade to transmit ultrasonic energy for cutting tissue (column 2, line 60 – column 3 line 7 discusses the ability to switch between cutting and coagulating depending on the setting).
Regarding claim 28, Witt discloses the surgical instrument of claim 27, further comprising a handle assembly attached to a proximal end of the shaft assembly, wherein the first actuator is associated with the handle assembly (view figure 12 for overall view of device with handle assembly and actuators 70 and 72).
Regarding claim 29, Witt discloses the surgical instrument of claim 28, further comprising a second actuator associated with the handle assembly, wherein the second actuator is configured to active either the first electrode or the second electrode with bipolar RF energy (column 3, lines 1-7 discusses the ability to switch between cutting and coagulating depending on the setting; column 9, lines 20-65 discuss switching for cutting or coagulation; column 12, lines 42-57 discusses autobipolar mode with the utilized generator).
Regarding claim 30, Witt discloses the surgical instrument of claim 21, further comprising a generator configured to power the ultrasonic blade and the first electrode (generator 302; column 9, lines 20-65; column 8, line 47- column 12, line 57).
Regarding claim 31, Witt discloses the surgical instrument of claim 30, further comprising a controller (microprocessor) configured to regulate deliver of power from the generator to the ultrasonic blade and the first electrode (column 8, line 47- column 12, line 57).
Regarding claim 32, Witt discloses the surgical instrument of claim 31, wherein the controller is integrated within the generator (column 8, line 47- column 12, line 57).
Regarding claim 33, Witt discloses the surgical instrument of claim 31, wherein the controller and the generator are integral with the surgical instrument (column 8, line 47- column 12, line 57).
Regarding claim 35, Witt discloses the surgical instrument of claim 21, wherein the end effector further comprises a clamp arm (view clamp coagulator 12).
Regarding claim 36, Witt discloses the surgical instrument of claim 35, wherein the clamp arm is configured to pivot relative to the ultrasonic blade between an open position and a closed position (view figure 1C).
Regarding claim 37, Witt discloses a surgical instrument, comprising:(a) a shaft assembly; and (b) an end effector located distally relative to the shaft assembly, wherein the end effector is operable to cut and seal tissue, the end effector comprising: (i) an ultrasonic blade configured to transmit ultrasonic energy for cutting tissue, (ii) a clamp arm configured to actuate relative to the ultrasonic blade in order to grasp tissue, (iii) an active electrode attached to the ultrasonic blade, and (iv) a return electrode attached to the ultrasonic blade, wherein the active electrode and the return electrode are configured to cooperatively apply bipolar RF energy for sealing tissue cut by the ultrasonic blade (column 12, line 58 – column 13, line 64 discusses a similar device with a clamp arm to clamp tissue and seal using the elements provided in the earlier non clamping embodiment).
Regarding claim 39, Witt discloses the surgical instrument of claim 37, further comprising a proximal body attached to a proximal end of the shaft assembly (view figures 1a-1c).
Regarding claim 40, Witt discloses a surgical instrument, comprising:(a) a shaft assembly; and (b) an end effector located distally relative to the shaft assembly, wherein the end effector is operable to cut and seal tissue, the end effector comprising: (i) an ultrasonic blade configured to transmit ultrasonic energy for cutting tissue, (ii) a clamp arm configured to actuate relative to the ultrasonic blade in order to grasp tissue, (iii) a bipolar RF electrode assembly fixedly attached to the ultrasonic blade, wherein the bipolar RF electrode assembly configured to apply bipolar RF energy for sealing tissue cut by the ultrasonic blade (column 3, lines 1-7 discusses the ability to switch between cutting and coagulating depending on the setting; column 12, lines 42-57 discusses autobipolar mode with the utilized generator; (column 12, line 58 – column 13, line 64 discusses a similar device with a clamp arm to clamp tissue and seal using the elements provided in the earlier non clamping embodiment).
Claim Rejections - 35 USC § 103
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 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.
Claim(s) 34 is/are rejected under 35 U.S.C. 103 as being unpatentable over Witt(US 6,454,781) in view of Hastings (US 2012/0059286).
Regarding claim 34, Witt discloses the surgical instrument of claim 33, further comprising a handle assembly, but fails to disclose wherein the generator and the controller are housed within the handle assembly. However, Hastings discloses a self-powered ablation catheter with a handle unit with a generator and controller within the handle unit [Para 0112]. It would have been obvious to one having ordinary skill in the art at the time the invention was effectively filed to have the device of Witt self-contain its power supply as taught by Hastings as a disposable ablation device.
Response to Arguments
Applicant’s arguments with respect to claim(s) 21-40 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AMANDA L ZINK whose telephone number is (571)270-7103. The examiner can normally be reached Monday-Friday 7-12 EST.
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/A.L.Z/ Examiner, Art Unit 3794
/MICHAEL F PEFFLEY/ Primary Examiner, Art Unit 3794
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