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 .
Election/Restrictions
Claims 8-21 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected inventions II and II, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 08/13/2025.
Applicant's election with traverse of invention I in the reply filed on 10/14/2025 is acknowledged. The traversal is on the ground(s) that there is not a search and examination burden between the inventions because the claims share some claim elements. This is not found persuasive because while the claims share some claim elements they each have mutually exclusive characteristics and require different search queries and/or prior art. For example, claim 8 would require the additional search/prior art elements of an ultrasonic instrument, a display, and a memory with instructions executed by the processor. Claim 15 would require the additional search/prior art element of a non-transitory computer readable medium. Claim 1 requires the specific method steps claimed and not just a memory with instructions for the processor to perform a function.
The requirement is still deemed proper and is therefore made FINAL.
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 1-2 and 5-6 are rejected under 35 U.S.C. 103 as being unpatentable over Tanigami et al. (US 20170202604 A1) in view Lee et al. (US 20140371726 A1).
Regarding claim 1 Tanigami discloses (fig. 4-6) a method performed by a surgical system, the method comprising:
determining one or more characteristics (impedance Z(t)) of an end effector of an ultrasonic instrument (see [0049]);
determining that the end effector is at least partially submerged within a liquid based on the determined one or more characteristics (Z(t), see [0049] and [0050]);
in response, displaying a notification on a display of the surgical system is not submerged in liquid (see [0053]).
Tanigami is silent regarding in response, displaying a notification on a display of the surgical system indicating that the end effector is at least partially submerged within the liquid.
However Lee, in the same filed of endeavor, teaches displaying a notification on a display of a surgical system indicating the current operating conditions including impedance (see [0018]).
Therefore it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify Tanigami to display a notification on a display of the surgical system indicating the current operating conditions including impedance as taught by Lee, for the purpose of the user being able to know the state of the end effector during a procedure (see Lee [0018]).
Tanigami as modified teaches: in response, displaying a notification on a display of the surgical system indicating that the end effector is at least partially submerged within the liquid. Tanigami teaches determining that the end effector is at least partially submerged within the liquid and is modified to display the current operating condition of the device. Furthermore, Tanigami is modified to display the impedance which would indicate to the user that the end effector is submerged in liquid.
Regarding claim 2, Tanigami as modified discloses the claimed invention substantially as claimed, as set forth above for claim 1. Tanigami further discloses (fig. 4-6) the one or more characteristics comprises an impedance (Z(t)) of the end effector (see [0049]), wherein determining that the end effector is at least partially submerged comprises determining that the impedance is above an impedance threshold (Zth2, see [0049] [0051] and fig. 5).
Regarding claim 5, Tanigami as modified discloses the claimed invention substantially as claimed, as set forth above for claim 1. Tanigami further discloses (fig. 4-6) the one or more characteristics comprises an impedance (Z(t)) of the end effector (see [0049]), wherein determining that the end effector is at least partially submerged comprises determining that the impedance is above a first threshold (Zth2, see [0049] [0051] and fig. 5), wherein the method further comprises determining that the end effector is in contact with an object (tissue) while at least partially submerged inside the liquid in response to the impedance being above a second threshold (Zth1, see [0046]) that is greater than the first threshold (see [0049] and fig. 6).
Regarding claim 6, Tanigami as modified discloses the claimed invention substantially as claimed, as set forth above for claim 5. Tanigami as modified further teaches the notification indicates that the end effector is in contact with an object while submerged in liquid. Tanigami teaches determining that the end effector is at least partially submerged within the liquid and in contact with an object and is modified to display the current operating condition of the device. Furthermore, Tanigami is modified to display the impedance which would indicate to the user that the end effector is submerged in liquid and in contact with an object of the device.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Tanigami in view of Lee as applied to claim 2 above, and further in view of Shelton et al. (US 20190201043 A1) and Wiksell (US 4,886,060).
Regarding claim 3, Tanigami as modified discloses the claimed invention substantially as claimed, as set forth above for claim 2. Tanigami as modified is silent regarding the one or more characteristics comprises a resonance frequency of the end effector, wherein determining that the end effector is at least partially submerged further comprises determining that the resonance frequency is below a resonance frequency threshold.
However Shelton, in the same filed of endeavor, teaches determining one or more characteristics (frequency) of an end effector of an ultrasonic instrument (see [0873]); determining that the end effector is at least partially submerged within a liquid based on the determined one or more characteristics (see [0873]); the one or more characteristics comprises a frequency of the end effector, wherein determining that the end effector is at least partially submerged further comprises determining that the frequency is below a frequency threshold (see [0873]-[0874]).
Wiksell, in the same field of endeavor, teaches that a device being in liquid causes the resonance frequency to change (see col. 7 ln. 1-8).
Therefore, to provide the device of Tanigami as modified with the one or more characteristics comprises a resonance frequency of the end effector, wherein determining that the end effector is at least partially submerged further comprises determining that the resonance frequency is below a resonance frequency threshold would have been obvious to one of ordinary skill in the art, in view of the teachings of Shelton and Wiksell, since all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would have yielded nothing more than predictable results to one of ordinary skill in the art before the effective filing date of the claimed invention, i.e., one skilled in the art would have recognized that resonance frequency as the one or more characteristics used in Shelton and Wiksell would provide the device of Tanigami as modified with an additional parameter to determine if the end effector is in liquid as a failsafe. KSR International Co. v. Teleflex Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007).
Claim 4 are rejected under 35 U.S.C. 103 as being unpatentable over Tanigami in view of Lee as applied to claim 1 above, and further in view of Nebuya (US 20180195985 A1).
Regarding claim 4, Tanigami as modified discloses the claimed invention substantially as claimed, as set forth above for claim 1. Tanigami as modified is silent regarding determining a type of liquid in which the end effector is at least partially submerged based on the one or more characteristics, wherein the notification indicates the type of liquid.
However Nebuya, in the analogous art of determining devices in liquid, teaches determining a type of liquid in which an end is at least partially submerged based on one or more characteristics (see [0021] and [0262]), wherein the notification indicates the type of liquid (alarm, see [0260] and [0262]).
Therefore it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify Tanigami to determine a type of liquid in which the end effector is at least partially submerged based on the one or more characteristics, wherein the notification indicates the type of liquid as taught by Nebuya, for the purpose of the user being able to be alerted that blood is present to be able to success if there is an unwanted bleed (see Nebuya [0260] and [0262]).
Claims 1 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Shelton in view of Lee.
Regarding claim 1 Shelton discloses a method performed by a surgical system, the method comprising:
determining one or more characteristics (temperature) of an end effector of an ultrasonic instrument (see [0867]);
determining that the end effector is at least partially submerged within a liquid based on the determined one or more characteristics (see [0867]).
Shelton is silent regarding in response, displaying a notification on a display of the surgical system indicating that the end effector is at least partially submerged within the liquid.
Lee, in the same filed of endeavor, teaches displaying a notification on a display of a surgical system indicating the current operating conditions including temperature and impedance (see [0018]).
Therefore it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify Shelton to display a notification on a display of the surgical system indicating the current operating conditions including temperature and impedance as taught by Lee, for the purpose of the user being able to know the state of the end effector during a procedure (see [0018]).
Shelton as modified teaches in response, displaying a notification on a display of the surgical system indicating that the end effector is at least partially submerged within the liquid. Shelton teaches determining that the end effector is at least partially submerged within the liquid and is modified to display the current operating condition of the device. Furthermore, Shelton is modified to display the temperature and the impedance which would indicate to the user that the end effector is submerged in liquid.
Regarding claim 7 Shelton as modified discloses the claimed invention substantially as claimed, as set forth above for claim 1. Shelton further discloses while the end effector is in air, determining a temperature of the end effector (see [0747] and [0749]). Shelton as modified further teaches displaying the temperature on the display (Shelton is modified by Lee to display the condition of the device including the temperature); and in response to determining that the end effector is at least partially submerged, replacing the temperature with an estimated temperature of the liquid (since the temperature changes when the end effector is at least partially submerged and Shelton is modified to display the current conditions, the temperature would be replaced with the temperature of the liquid, which would be equal to the temperature of the blade after a period of time with the blade submerged therein).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KATHERINE H SCHWIKER whose telephone number is (571)272-9503. The examiner can normally be reached Monday - Friday 7:30 am-4:00 pm.
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/KATHERINE H SCHWIKER/Primary Examiner, Art Unit 3771