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.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 20 November 2025 has been entered.
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 1-3, 10 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Reschke (US 2014/0194875) in view of Prabhu (US 2018/0092661), Lau (US 2006/0217706) and Edwards (US 2011/0028964).
Regarding claims 1 and 10, Reschke discloses an end effector with a pair of jaws each having an electrically conductive tissue engaging surface (212, 222, fig. 4) and a thermal cutting element with an upper exposed surface and disposed in one of the tissue engaging surfaces (228), located within a longitudinal slot and raised relative to an insulator (226). The thermal cutting element is independently activatable relative to the tissue engaging surfaces (in a second mode by switch 90, fig. 1) and extends along the length of the surfaces (fig. 3B). Whether or not the thermal cutting element is “for” heating to a temperature sufficient to cut tissue depends entirely on the amount of RF energy applied to the blade, the type of tissue being cut and the amount of force applied to tissue during heating. However, since using thermal energy to cut tissue is common in the art and in the interest of compact prosecution, the claims will be read narrower than the claim language requires. The prior art teaches that various energy types are useful for cutting tissue, including both RF and thermal energy such as taught by Prabhu ([0010], note “and/or,” see also [0050]-[0051]), which is understood to be a teaching of the functional equivalence of those cutting energy modalities (MPEP 2144.06). Therefore, before the application was filed, it would have been obvious to modify the thermal cutting element of Reschke to be any commonly known type of thermal cutting element, including a thermal energy cutting element as taught by Prabhu, in place of or in addition to the RF energy cutting element, to produce the predictable result of allowing a user to use the device to cut tissue. Reschke also does not disclose the cutting element extends past the distal end of the housing. However, this is a common configuration because it allows a user to treat tissue distal to the housing. Lau, for example, discloses embodiments of a forceps that include one with a cutting element that does not extend beyond the distal end of the jaws (fig. 10D, fig. 21D) and another with a cutting element that does extend beyond the distal end of the jaws (fig. 21C and figs. 34-36). This illustrates that a person of ordinary skill in the art would be able to choose either configuration depending on the desired functionality of the device. Therefore, before the application was filed, it would have been obvious to one of ordinary skill in the at to further modify the device of Reschke to include a cutting element that extends past the distal end of the housing, such as taught by Lau, that would produce the predictable result of allowing a user to interact with tissue distal to the device. Reschke also does not disclose that the cutting element extends through the housing such that there is also a lower exposed surface below at least a portion of the housing. However, just as treating tissue distal to a housing is known, treating tissue on the opposite side of the housing from the grasping side is also known. Edwards discloses a device with a cutting element exposed above a housing (41, fig. 4), exposed below the housing (19, fig. 4) and exposed along a side of the housing (fig. 9). Further, Edwards explicitly shows that the cutting element can extend through the housing such that the cutting element includes an upper exposed surface exposed above the housing and a lower exposed surface exposed under the housing (fig. 10). The various configurations of cutting element in different positions relative to the housing illustrate that a person of ordinary skill in the art would be able to choose any configuration depending on the desired functionality of the device. Therefore, before the application was filed, it would have been obvious to one of ordinary skill in the art to further modify the device of Reschke to include a cutting element that extends through the housing to define both and upper and lower exposed surfaces that extend above and below the housing (respectively), such as taught by Edwards, that would produce the predictable result of allowing a user to interact with tissue adjacent to those portions of the housing. The device of Reschke as modified is capable of performing the functional limitation recited in claim 10, where the part of the housing adjacent to the lower exposed surface of the cutting element can be considered a non-treatment side.
Regarding claims 2 and 3, while Reschke does show insulation on either side of the cutting element (226, fig. 4), it is arguable whether that insulation constitutes two insulative members. However, Edwards clearly shows two insulative members on either side of the cutting element located within a slot (fig. 10). Therefore, either Reschke as modified will have two insulation members on either side of the cutting element which entirely bisects the housing, or it would have been obvious to one of ordinary skill in the art at the time the application was filed to provide the device of Reschke with two insulative members on either side of the cutting element within the slot to prevent undesirable electrical and/or thermal interaction between the cutting element and other parts of the device. In both references, the cutting element is raised relative to the insulator (fig. 4 of Reschke, fig. 10 of Edwards).
Regarding claim 17, the end effector of Reschke does not specifically disclose that the insulator extends beyond the distal end of the jaw housing. However, this is a common feature where thermal cutting elements extend past the distal end of a jaw, such as taught by Lau (e.g. 424 in fig. 21A). It has been held that the combination of known elements according to known methods to yield predictable results is an obvious modification (MPEP 2141(III)). Therefore, before the application was filed, it would have been obvious to one or ordinary skill in the art to further modify the end effector of Reschke to have any commonly known insulator configuration, including an insulator extending past the distal end of the rest of the jaw such as taught by Lau, that would produce the predictable result of an end effector that can be used to interact with tissue in a desired manner.
Claims 4 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Reschke, Prabhu, Lau and Edwards, further in view of Reschke (US 2011/0046623), hereinafter Reschke2.
Regarding claims 4 and 5, the device of Reschke does not disclose the cutting element has opposing beveled edges. However, this is a common configuration for a cutting element. Reschke2, for example, discloses the cutting element can be dull or sharp (fig. 5b, [0049]). Therefore, before the application was filed, it would have been obvious to provide the cutting element of Reschke with any commonly known configuration, including two opposing beveled edges as taught by Reschke2, that would produce the predictable result of allowing a user to cut tissue.
Claims 11, 12 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Reschke in view of Prabhu, Lau and Hancock (US 2018/0280084).
Regarding claims 11, 12 and 18, Reschke discloses an end effector with a pair of jaws each having an electrically conductive tissue engaging surface (212, 222, fig. 4) and a thermal cutting element with an upper exposed surface and disposed in one of the tissue engaging surfaces (228), located within a longitudinal slot and raised relative to (and secured within) an insulator (226). The thermal cutting element is independently activatable relative to the tissue engaging surfaces (in a second mode by switch 90, fig. 1) and extends along the length of the surfaces (fig. 3B). Whether or not the thermal cutting element is “for” heating to a temperature sufficient to cut tissue depends entirely on the amount of RF energy applied to the blade, the type of tissue being cut and the amount of force applied to tissue during heating. However, since using thermal energy to cut tissue is common in the art and in the interest of compact prosecution, the claims will be read narrower than the claim language requires. The prior art teaches that various energy types are useful for cutting tissue, including both RF and thermal energy such as taught by Prabhu ([0010], note “and/or,” see also [0050]-[0051]), which is understood to be a teaching of the functional equivalence of those cutting energy modalities (MPEP 2144.06). Therefore, before the application was filed, it would have been obvious to modify the thermal cutting element of Reschke to be any commonly known type of thermal cutting element, including a thermal energy cutting element as taught by Prabhu, in place of or in addition to the RF energy cutting element, to produce the predictable result of allowing a user to use the device to cut tissue. Reschke also does not disclose the cutting element includes an inwardly angled edge that extends from an exposed tip to a distal end of the housing. However, angled blades that extend from housings are common in the art. Hancock, for example, discloses a forceps device that includes a housing with a cutting element that extends from a distal end of the housing, thus forming at least one inward angle between the tip of the cutting element and the housing (230, figs. 2-5). Further, Hancock teaches the cutting element can have numerous other locations on the distal end, including at an angle relative to that shown ([0088]), which would result in two or more inward angles (depending on how exactly “inward” is defined) and reinforces the position that a person of ordinary skill in the art would know how to use cutting elements in various configurations. Therefore, before the application was filed, it would have been obvious to one of ordinary skill in the art to further modify the device of Reschke to provide the cutting element edge that extends at an inward angled edge between a tip and the housing, such as taught by Hancock, that would produce the predictable result of allowing a user to cut tissue.
Claims 13, 14 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Reschke, Prabhu, Lau and Hancock, further in view of Reschke2.
Regarding claims 13, 14 and 15, the device of Reschke does not disclose the cutting element has opposing beveled edges. However, this is a common configuration for a cutting element. Reschke2, for example, discloses the cutting element can be dull or sharp (fig. 5b, [0049]). Therefore, before the application was filed, it would have been obvious to provide the cutting element of Reschke with any commonly known configuration, including two opposing beveled edges as taught by Reschke2, along any or all of the cutting edges, that would produce the predictable result of allowing a user to cut tissue.
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over Reschke, Prabhu, Lau and Hancock, further in view of Edwards.
Regarding claim 19, while Reschke does show insulation on either side of the cutting element (226, fig. 4), it is arguable whether that insulation constitutes two insulative members. However, Edwards clearly shows two insulative members on either side of the cutting element located within a slot (fig. 10). Therefore, it would have been obvious to one of ordinary skill in the art at the time the application was filed to provide the device of Reschke with two insulative members on either side of the cutting element within the slot to prevent undesirable electrical and/or thermal interaction between the cutting element and other parts of the device.
Response to Arguments
Applicant’s arguments with respect to the claims 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
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Regarding another forceps with a fixed blade having an inward angle relative to a housing, see figure 5 of US 8,968,305 to Dumbauld.
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/DANIEL W FOWLER/Primary Examiner, Art Unit 3794