Prosecution Insights
Last updated: April 19, 2026
Application No. 17/862,479

ROTATION CONTROL SYSTEMS FOR SURGICAL INSTRUMENTS

Non-Final OA §102§103§112§DP
Filed
Jul 12, 2022
Examiner
DEDOULIS, CHRISTINE A
Art Unit
3794
Tech Center
3700 — Mechanical Engineering & Manufacturing
Assignee
Covidien LP
OA Round
1 (Non-Final)
65%
Grant Probability
Favorable
1-2
OA Rounds
3y 11m
To Grant
98%
With Interview

Examiner Intelligence

Grants 65% — above average
65%
Career Allow Rate
106 granted / 162 resolved
-4.6% vs TC avg
Strong +32% interview lift
Without
With
+32.2%
Interview Lift
resolved cases with interview
Typical timeline
3y 11m
Avg Prosecution
21 currently pending
Career history
183
Total Applications
across all art units

Statute-Specific Performance

§101
0.7%
-39.3% vs TC avg
§103
53.9%
+13.9% vs TC avg
§102
17.0%
-23.0% vs TC avg
§112
15.6%
-24.4% vs TC avg
Black line = Tech Center average estimate • Based on career data from 162 resolved cases

Office Action

§102 §103 §112 §DP
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. Double Patenting The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969). A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b). The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13. The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer. Claims 15-34 are rejected on the grounds of nonstatutory double patenting as being unpatentable over claims 1-7 of U.S. Patent No. 11,382,649. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of U.S. Patent No. 11,382,649 anticipate the claims of the application. Accordingly, the application claims are not patentably distinct from the patent claims. Here, the more specific patent claims encompass the broader application claims. Following the rationale in In re Goodman cited in the preceding paragraph, where applicant has once been granted a patent containing a claim for the specific narrow invention, applicant may not obtain a second patent with a claim for the generic or broader invention without first submitting an appropriate terminal disclaimer. Claims 15-34 are rejected on the grounds of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,553,938. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of U.S. Patent No. 11,553,938 anticipate the claims of the application. Accordingly, the application claims are not patentably distinct from the patent claims. Here, the more specific patent claims encompass the broader application claims. Following the rationale in In re Goodman cited in the preceding paragraph, where applicant has once been granted a patent containing a claim for the specific narrow invention, applicant may not obtain a second patent with a claim for the generic or broader invention without first submitting an appropriate terminal disclaimer. Claim Interpretation The following is a quotation of 35 U.S.C. 112(f): (f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof. The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph: An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof. The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked. As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph: (A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function; (B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and (C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function. Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function. Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function. Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: rotation control in claims 15, 18, 25, 27, and 28. Because this claim limitation is being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it is being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof. If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. For purposes of the rejection, “rotation control” is being interpreted to mean a potentiometer. Claim Rejections - 35 USC § 112 Claims 15-34 are 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. Claims 15, 18, 25, 27 and 28 recite the limitation “rotation control.” It is at most unclear to the Examiner what “rotation control” is referring to as there is no corresponding structure that would implement the “rotation control.” For purposes of the rejection, “rotation control” has been interpreted to mean a potentiometer. Claims 16-24 and 26-34 are also rejected due to their dependency on claims 15 and 25. Appropriate correction is required. Claim Rejections - 35 USC § 102 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. Claims 15, 18-21, 23-25, and 27-33 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Marczyk et al., (hereinafter ‘Marczyk,’ U.S. PGPub. No. 2013/0123783). Regarding claim 15, Marczyk (Fig. 1) discloses a surgical instrument (10) comprising: a handle assembly (housing 14, moveable handle 32, fixed handle 36, trigger 34, activation switch 30 and associated parts); an elongate member (16) extending from the handle assembly (Fig. 1) and defining a longitudinal axis of the surgical instrument (10); a rotation control disposed on the handle assembly; and a motor assembly (steering unit 22) disposed within the handle assembly and configured to affect rotation of the elongate member (16) about the longitudinal axis relative to the handle assembly in response to rotation of the rotation control ([0115], electric motor 514R includes rotation of the shaft 20 and end effector 12; [0124], “The user interface receives user commands from activation switch 30, which may be a directional button, a joystick such as a thumb operated joystick, a toggle, a pressure sensor, a switch, a trackball, a dial, a optical sensor, and any combination thereof. The processing unit responds to the user commands by sending control signals to the motors 514.”). Regarding claim 18, Marczyk (Fig. 1) discloses wherein the motor assembly (22) rotates the elongate member (16) about the longitudinal axis relative to the handle assembly at a radial speed in proportion to rotation of the rotation control about a control axis parallel to the longitudinal axis (see [0114]-[0115] and [0124], for in response to activation switch 30 of the handle assembly, the control unit 24 sends control signals to the motors 514, and electric motor 514R may include an optional gear box for increasing rotational speed of an attached spur gear 515 mounted on a shaft driven by the electric motor 514R). Regarding claim 19, Marczyk (Fig. 1) discloses further comprising an end effector (12) extending distally from the elongate member (16), the end effector including at least one jaw movable between an open condition and a clamping condition for clamping tissue ([0054], “The end effector includes a pair of jaws that can be actuated between a closed position and an open position.”). Regarding claim 20, Marczyk (Fig. 1) discloses wherein the handle assembly includes a clamp trigger (32) operably coupled to the at least one jaw and configured, in response to actuation of the clamp trigger, to move the at least one jaw from the open condition to the clamping condition ([0062], “Movable handle 32 is connected to a drive assembly which mechanically cooperates to impart movement of the jaw members 40 and 42 from an open position wherein the jaw members 40 and 42 are disposed in spaced relation relative to one another, to a clamping or closed position, wherein the jaw members 40 and 42 cooperate to grasp tissue there between, as depicted in FIG. 2.”). Regarding claim 21, Marczyk (Fig. 1) discloses wherein the clamp trigger (32) is operably coupled to the at least one jaw via a manual drive mechanism for manually moving the at least one jaw from the open condition to the clamping condition ([0058], “ Additional activation elements may also be incorporated such as clamping handle 32 which can control opening and closing of the end effector 12 in order to grasp tissue.” See [0062], “Movable handle 32 is connected to a drive assembly which mechanically cooperates to impart movement of the jaw members 40 and 42 from an open position wherein the jaw members 40 and 42 are disposed in spaced relation relative to one another, to a clamping or closed position, wherein the jaw members 40 and 42 cooperate to grasp tissue there between, as depicted in FIG. 2.” See also [0063]; as broadly claimed, user manually clamps handle 32). Regarding claim 23, Marczyk (Fig. 1) discloses further comprising a generator supported by the handle assembly, the generator configured to supply energy to the end effector to treat clamped tissue ([0057], “Power is supplied to the endoscopic device 10 from an external source, such as an electrosurgical generator, via cable 26 or alternatively may be derived from local batteries incorporated into the housing 14 (not shown).” See [0096] for energy selection wherein generator “automatically selects the appropriate amount of electrosurgical energy to effectively seal the particularly-sized tissue grasped between the jaw members 140 and 142”). Regarding claim 24, Marczyk (Fig. 1) discloses further comprising a battery assembly supported by the handle assembly, the battery assembly configured to power at least one of the motor or the generator ([0057], “Power is supplied to the endoscopic device 10 from an external source, such as an electrosurgical generator, via cable 26 or alternatively may be derived from local batteries incorporated into the housing 14 (not shown).”). Regarding claim 25, Marczyk (Fig. 1) discloses a surgical instrument (10) comprising: a handle assembly (housing 14, moveable handle 32, fixed handle 36, trigger 34, activation switch 30 and associated parts); an elongate member (16) extending from the handle assembly and defining a longitudinal axis (Fig.1); an end effector (12) extending distally from the elongate member (16), the end effector (12) configured to treat tissue ([0058]; [0096]); a rotation control disposed on the handle assembly; and a motor assembly (22) disposed within the handle assembly and configured to affect rotation of the end effector about the longitudinal axis relative to the handle assembly in response to actuation of the rotation control ([0115], electric motor 514R includes rotation of the shaft 20 and end effector 12; [0124], “The user interface receives user commands from activation switch 30, which may be a directional button, a joystick such as a thumb operated joystick, a toggle, a pressure sensor, a switch, a trackball, a dial, a optical sensor, and any combination thereof. The processing unit responds to the user commands by sending control signals to the motors 514.”). Regarding claim 27, Marczyk (Fig. 1) discloses wherein the motor assembly (22) is configured to rotate the end effector (12) about the longitudinal axis relative to the handle assembly at a radial speed proportional to an amount of actuation of the rotation control (see [0114]-[0115] and [0124], for in response to activation switch 30 of the handle assembly, the control unit 24 sends control signals to the motors 514, and electric motor 514R may include an optional gear box for increasing rotational speed of an attached spur gear 515 mounted on a shaft driven by the electric motor 514R). Regarding claim 28, Marczyk (Fig. 1) discloses wherein the rotation control is rotatable relative to the handle assembly to actuate the rotation control ([0115], electric motor 514R includes rotation of the shaft 20 and end effector 12; [0124], “The user interface receives user commands from activation switch 30, which may be a directional button, a joystick such as a thumb operated joystick, a toggle, a pressure sensor, a switch, a trackball, a dial, a optical sensor, and any combination thereof. The processing unit responds to the user commands by sending control signals to the motors 514.”). Regarding claim 29, Marczyk (Fig. 1) discloses wherein the end effector (12) includes at least one jaw movable between an open condition and a clamping condition for clamping tissue ([0054], “The end effector includes a pair of jaws that can be actuated between a closed position and an open position.”). Regarding claim 30, Marczyk (Fig. 1) discloses wherein the handle assembly includes a clamp trigger (32) operably coupled to the at least one jaw and configured, in response to actuation of the clamp trigger, to move the at least one jaw from the open condition to the clamping condition ([0062], “Movable handle 32 is connected to a drive assembly which mechanically cooperates to impart movement of the jaw members 40 and 42 from an open position wherein the jaw members 40 and 42 are disposed in spaced relation relative to one another, to a clamping or closed position, wherein the jaw members 40 and 42 cooperate to grasp tissue there between, as depicted in FIG. 2.”). Regarding claim 31, Marczyk (Fig. 1) discloses wherein the clamp trigger (32) is operably coupled to the at least one jaw via a manual drive mechanism for manually moving the at least one jaw from the open condition to the clamping condition ([0058], “ Additional activation elements may also be incorporated such as clamping handle 32 which can control opening and closing of the end effector 12 in order to grasp tissue.” See [0062], “Movable handle 32 is connected to a drive assembly which mechanically cooperates to impart movement of the jaw members 40 and 42 from an open position wherein the jaw members 40 and 42 are disposed in spaced relation relative to one another, to a clamping or closed position, wherein the jaw members 40 and 42 cooperate to grasp tissue there between, as depicted in FIG. 2.” See also [0063]; as broadly claimed, user manually clamps handle 32). Regarding claim 32, Marczyk (Fig. 1) discloses further comprising a generator supported by the handle assembly, the generator configured to supply energy to the end effector to treat tissue ([0057], “Power is supplied to the endoscopic device 10 from an external source, such as an electrosurgical generator, via cable 26 or alternatively may be derived from local batteries incorporated into the housing 14 (not shown).” See [0096] for energy selection wherein generator “automatically selects the appropriate amount of electrosurgical energy to effectively seal the particularly-sized tissue grasped between the jaw members 140 and 142”). Regarding claim 33, Marczyk (Fig. 1) discloses further comprising a battery assembly supported by the handle assembly, the battery assembly configured to power at least one of the motor or the generator ([0057], “Power is supplied to the endoscopic device 10 from an external source, such as an electrosurgical generator, via cable 26 or alternatively may be derived from local batteries incorporated into the housing 14 (not shown).”). 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. 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. Claims 16, 17 and 26 are rejected under 35 U.S.C. 103 as being unpatentable over Marczyk in view of Riestenberg et al., (hereinafter 'Riestenberg,' U.S. PGPub. No. 2017/0172606). Regarding claim 16 and 26, Marczyk discloses all of the limitations of the surgical instrument according to claims 15 and 25, but is silent regarding wherein the rotation control is a potentiometer. However, in the same field of endeavor, Riestenberg teaches a similar surgical instrument comprising a switch (428) “associated with a potentiometer that increases or decreases the power level linearly and continuously as switch (428) is rotated in the first or second directions, respectively.” ([0075]). Riestenberg teaches “rotation of switch (428) may result in step-wise increasing or decreasing among discrete power levels or operation modes. For example, rotation of switch (428) in the first direction may incrementally increase the power level from zero, to a power level associated with the ‘seal’ activation mode described above, to a power level associated with the ‘cut and seal’ activation mode described above, and any suitable number of modes between zero and ‘seal,’ between ‘seal’ and ‘cut and seal,’ and above ‘cut and seal.’” ([0075]). Therefore, it would have been obvious to one having ordinary skill in the art to have modified the surgical instrument as taught by Marczyk to include wherein the rotation control is a potentiometer, as taught by Riestenberg in order to incrementally increase (or decrease) the applied power level and provide various activation modes to the targeted tissue, thereby increasing control, accuracy and safety. Regarding claim 17, Marczyk in view of Riestenberg teach each and every limitation of the surgical instrument according to claim 16. Further, in an alternate embodiment, Riestenberg (Fig. 15) teaches a similar potentiometer configuration wherein the rotation control is a return-to-center potentiometer (1040). Riestenberg teaches a “button (1026) is pivotably coupled with potentiometer (1040) via a pin (1042) that passes through the center of potentiometer (1040). Pin (1042) is fixedly secured to button (1026) such that pin (1042) rotates as button (1026) pivots. Pin (1042) is also secured to the rotating contact in potentiometer (1040), such that the resistance value of potentiometer (1040) changes in direct proportion to the pivotal movement of button (1026).” ([0099]). Hence, when the button (1026) is released, it naturally follows that the potentiometer (1040) returns to the home or neutral position (thereby meeting the limitation of return-to-center potentiometer). This configuration provides for varied power applied to the targeted tissue “based on the pivotal position and/or rate of change in position of button (1026)” ([0099]), thereby improving user control and safety. Therefore, it would have been obvious to one having ordinary skill in the art to have modified the surgical instrument as taught by Marczyk in view of Riestenberg to include wherein the rotation control is a return-to-center potentiometer, as taught by Riestenberg in order to effect varied power, applied to the targeted tissue, in proportion to the position of the button, thereby improving user control and safety. Further, this modification would have merely comprised a simple substitution of one well known potentiometer configuration for another in order to obtain a predictable result. MPEP 2143(I)(b). Claim 22 is rejected under 35 U.S.C. 103 as being unpatentable over Marczyk in view of Haleem (hereinafter 'Haleem,' U.S. PGPub. No. 2017/0007270). Regarding claim 22, Marczyk teaches each and every limitation of the surgical instrument according to claim 20. Marczyk teaches wherein the clamp trigger (32) is operably coupled to the at least one jaw ([0062]), but is silent regarding via another motor for powered movement of the at least one jaw from the open condition to the clamping condition. However, in the same field of endeavor, Haleem teaches a similar surgical instrument wherein the jaws may be operated manually by a surgeon or “[a]lternatively, the instrument may be a powered instrument wherein the second jaw element is connected to a drive motor to effect movement of the second jaw element from its open configuration to its closed configuration. The motor in this embodiment may be an electric motor, a pneumatic motor or a hydraulic motor.” ([0018]-[0019]). It is well known in the art (as can be seen in Haleem) that the manual and motorized operation of jaws are widely considered well-known and interchangeable methods of actuation. Therefore, it would have been obvious to one having ordinary skill in the art to have modified the surgical instrument as taught by Marczyk to include another motor for powered movement of the at least one jaw from the open condition to the clamping condition, as taught by Haleem. This modification would have merely comprised a simple substitution of one well known actuation configuration for another in order to obtain a predictable result. MPEP 2143(I)(b). Claim 34 is rejected under 35 U.S.C. 103 as being unpatentable over Marczyk in view of Tanaka et al., (hereinafter 'Tanaka,' U.S. PGPub. No. 2005/0272976). Regarding claim 34, Marczyk (Fig. 1) discloses all of the limitations of the surgical instrument according to claim 25, but is silent regarding further comprising a torque limiter configured to limit a torque applied by the motor to rotate the end effector. However, in the same field of endeavor, Tanaka (Figs. 1 and 17) teaches a similar surgical instrument comprising a rotation driving device (60) including various gears attached to the elongate member (16) and connected to a motor (63) via a torque limiter (62) serving as rotation regulating means ([0349]). It is well known in the art (as can be seen in Tanka) to include a torque limiter in order to regulate rotation of the surgical instrument and prevent application of force outside the bounds of a predetermined value ([0349]; [0381]), thereby improving control and accuracy. Therefore, it would have been obvious to one having ordinary skill in the art to have modified the surgical instrument as taught by Marczyk to include a torque limiter configured to limit a torque applied by the motor to rotate the end effector, as taught by Tanka, in order to regulate rotation of the surgical instrument and prevent application of force outside the bounds of a predetermined value ([0349]; [0381]), thereby improving control and accuracy. Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTINE A DEDOULIS whose telephone number is (571)272-2459. The examiner can normally be reached M-F, 8am to 5pm. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Linda Dvorak can be reached at 571-272-4764. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /LINDA C DVORAK/Primary Examiner, Art Unit 3794 /C.A.D./Examiner, Art Unit 3794
Read full office action

Prosecution Timeline

Jul 12, 2022
Application Filed
Jul 20, 2022
Response after Non-Final Action
Feb 19, 2026
Non-Final Rejection — §102, §103, §112 (current)

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Prosecution Projections

1-2
Expected OA Rounds
65%
Grant Probability
98%
With Interview (+32.2%)
3y 11m
Median Time to Grant
Low
PTA Risk
Based on 162 resolved cases by this examiner. Grant probability derived from career allow rate.

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