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.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-4, 6-10, 12-16 and 18-20 are rejected under 35 U.S.C. 103 as being unpatentable over Couture (US 2008/0021450) in view of Latterell et al. (US 2004/0006340).
Regarding claim 1, Couture discloses an end effector assembly for an electrosurgical instrument (see Figs. 2A-5), comprising: a pair of jaw members each including a jaw housing (see housing of jaws 110 and 120) supporting an electrically conductive tissue engaging surface thereon (see electrically conductive sealing surfaces 112 and 122), the jaw members opposing one another on opposite sides of a longitudinal axis defined therethrough (as can be appreciated in Figs. 1A-1B), the electrically conductive tissue engaging surfaces disposed in opposition relative to one another (as can be appreciated in Figs. 1A-1B), at least one of the pair of jaw members movable relative to the other of the pair of jaw members to grasp tissue therebetween (see [0052] and [0055]), the electrically conductive tissue engaging surfaces adapted to connect to an electrosurgical energy source (see [0052] and [0057]); and a cutting element operatively associated with at least one of the electrically conductive tissue engaging surfaces (see blade 212 in Figs. 2A-3C and 7A-7B), the cutting element exposed along a length of the at least one electrically conductive tissue engaging surface, the cutting element selectively moveable in a first direction relative to the electrically conductive tissue engaging surface along a transverse axis perpendicular to the longitudinal axis and selectively moveable in a second direction along the longitudinal axis to extend relative to a distal end of the at least one of the pair of jaw members (see movement of blade 212 in transverse and longitudinal directions in Figs. 2A-3C). However, Couture fails to disclose the cutting element as a thermal cutting element independently activatable relative to the electrically conductive tissue engaging surfaces and adapted to connect to the electrosurgical energy source.
Latterell teaches an end effector assembly for an electrosurgical instrument (see Figs. 1-5) comprising electrically conductive surfaces on opposing jaw members (see inner conductive surfaces of the jaws 72 and 76, Fig. 5) and a thermal cutting element independently activatable relative to the electrically conductive tissue engaging surfaces and adapted to connect to the electrosurgical source (see conductive cut electrode 78, [0028]-[0029] and [0031]-[0032]). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the cutting element as disclosed by Couture to also be a thermal cutting element independently activatable relative to the electrically conductive tissue engaging surfaces and adapted to connect to the electrosurgical energy source in light of Latterell, the motivation being to provide the additional benefits of allowing the incision line to also be sealed while severing tissue, and allow for effective severing of the tissue without needing to fully close the jaws on tissue (see Latterell [0029]).
Regarding claims 2-4, Couture further discloses wherein the end effector assembly cooperates an actuator configured to move the thermal cutting element in the first and second directions (see [0053]).
Regarding claim 6, Couture in view of Latterell further teaches wherein the thermal cutting element cooperates with a switch configured to selectively energize the thermal cutting element upon activation thereof (see Latterell [0032]).
Regarding claims 7 and 8, Latterell further teaches providing an electrically insulative material between the jaw and the thermal cutting element (see insulating strip 80; [0028]-[0029], Figs. 1, 3, and 4-5). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have further modified the blade channel as disclosed by Couture such that the thermal cutting element is movably supported within an insulative material disposed in the electrically conductive tissue engaging surface (blade channel) of the at least one jaw member in light of Latterell, the motivation being to electrically insulate the conductive blade from the conductive surfaces to prevent an unintended electrical short.
Regarding claims 9-10, 12-16 and 18-20, Couture in view of Latterell further teaches a surgical instrument, comprising: a housing having a shaft extending from a distal end thereof (see Couture Fig. 1A), a distal end of the shaft supporting an end effector assembly thereon, the end effector assembly; or a pair of first and second shaft members each including a handle disposed at a proximal end thereof and a jaw member disposed at a distal end thereof, the shaft members selectively moveable relative to one another to move the jaw members about a pivot from a first spaced apart position to a second position for approximating tissue (see Fig. 1B); and further teaches the additional requirements of the claims under the same rationale and citations as those set forth in the rejections of claims 1-4 and 6-8 above.
Allowable Subject Matter
Claims 5, 11 and 17 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: The closest prior art of record, Couture (US 2008/0021450), Latterell et al. (US 2004/0006340), and Manzo et al. (US 20190216561), fails to reasonably teach or suggest wherein the actuator includes a T-channel actuator configured to move the thermal cutting element in either the first and second directions when considered in combination with the additional requirements of the claim. The closest prior art generally teaches electrosurgical end effectors comprising jaws, actuatable thermal cutting elements, and a T-shaped channel for a longitudinally advancing blade (see Manzo Fig. 4A-4B), however, modifying the Couture and Latterell references with a T-shaped channel would destroy the ability to move the cutting element in the two directions required by the claims since the T-shape would restrict and/or prevent movement in the transverse direction. Therefore, there would be no motivation to make such a modification to arrive at the claimed invention.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SEAN W COLLINS whose telephone number is (408)918-7607. The examiner can normally be reached M-F 9:00 AM-5:00 PM ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joanne Rodden can be reached at 303-297-4276. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SEAN W COLLINS/Primary Examiner, Art Unit 3794