DETAILED ACTION
Applicant's amendments and remarks, filed 8/14/25, are fully acknowledged by the Examiner. Currently, claims 1-18 are pending. The following is a complete response to the 8/14/25 communication.
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.
Claim(s) 1, 3-5, 9, and 11-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Stamm (US 2020/0222109) in further view of Batchelor (US 2016/0051314).
Regarding claim 1, Stamm teaches a surgical instrument, comprising: a housing including an elongated shaft having an end effector assembly disposed at a distal end thereof (housing 112 with elongated shaft 116 having an end effector 114 disposed at a distal end thereof), the end effector including first and second jaw members configured to treat tissue upon electrical activation thereof (jaws 130 and 132 to treat tissue grasped therebetween with electrosurgical energy as in at least par. [0002]),a first handle movable relative to the housing and configured to move at least one of the first or second jaw members relative to the other of the first or second jaw members to grasp tissue therebetween (122 to move relative to 112 to open and close the jaws to grasp tissue as in at least par. [0023]), the first handle including a switch activation element extending therefrom (switch 137);
a switch disposed on the housing and in the actuation path of the first handle (137 in the path of actuation of 122 as in Fig. 2), the switch configured for activation by the first handle when the first handle is fully actuated relative to the housing (138 as in par. [0028]); and
a slider disposed in a handle (136 as in Fig. 2) and movable between a first, in-line position configured to align the switch activation element with the switch to activate the jaw members upon full actuation of the first handle relative to the housing (par. [0027] pathway aligned such that stop member does not block movement of 122) and a second position wherein the switch activation element is misaligned with the switch such that full actuation of the first handle does not activate the jaw members (par. [0027] alignment such that stop member blocks full actuation of the handle).
Stamm is not explicit regarding the slider disposed on the first handle, but teaches the slider on the second handle (Fig. 2, 136 on 120).
Stamm discloses the claimed invention except for the slider is disposed on the second handle rather than the first handle (136 on 120 rather than 122). It would have been obvious to one having ordinary skill in the art at the time the invention was made to swap the locations of 136 and 134 and their associated elements, since it has been held that rearranging parts of an invention involves only routine skill in the art. In re Japikse, 86 USPQ 70. Furthermore, it appears that the invention would perform equally well with the slider and protuberance swapped, as the protuberance would still be blocked via the slider even on the second handle versus the first handle. This would misalign the switch activation element 138 with the switch 137, given that the full actuation of the handle would stop short of actuation.
Regarding claim 3, Stamm teaches wherein the slider is slidable within a channel defined within the first handle (13 within channel 140).
Regarding claim 4, Stamm teaches wherein the housing includes a second handle depending therefrom configured to support the switch therein (handle 120 supporting switch button 137).
Regarding claim 5, Stamm teaches wherein the second handle includes an aperture defined therein configured to receive the switch activation element of the first handle upon full actuation of the first handle when the slider is disposed in the second position (120 receives 138 in the aperture holding 136).
Regarding claim 9, Stamm teaches a surgical instrument, comprising:
a housing including an elongated shaft having an end effector assembly disposed at a distal end thereof (housing 112 with elongated shaft 116 having an end effector 114 disposed at a distal end thereof), the end effector including first and second jaw members configured to treat tissue upon electrical activation thereof (jaws 130 and 132 to treat tissue grasped therebetween with electrosurgical energy as in at least par. [0002]),
a first handle movable relative to the housing and configured to move at least one of the first or second jaw members relative to the other of the first or second jaw members to grasp tissue therebetween (122 to move relative to 112 to open and close the jaws to grasp tissue as in at least par. [0023]), the first handle including a switch activation element extending therefrom (switch activation element 138); a second handle depending from the housing and aligned in registration with the first handle (handle 120);
a switch disposed in the second handle and in the actuation path of the switch activation element of the first handle (switch 137), the switch configured for activation by the switch activation element of the first handle when the first handle is fully actuated relative to the second handle (138 to depress 137); and
a slider disposed in a handle (slider 137) and movable between a first, in-line position configured to align the switch activation element with the switch to activate the jaw members upon full actuation of the first handle relative to the second handle (par. [0027] pathway aligned such that stop member does not block movement of 122) and a second position wherein the switch activation element is misaligned with the switch such that full actuation of the first handle does not activate the jaw members (par. [0027] alignment such that stop member blocks full actuation of the handle).
Stamm is not explicit regarding the slider disposed on the first handle, but teaches it on the second handle (Fig. 2, 136 on 120).
Stamm discloses the claimed invention except for the slider is disposed on the second handle rather than the first handle (136 on 120 rather than 122). It would have been obvious to one having ordinary skill in the art at the time the invention was made to swap the locations of 136 and 134 and their associated elements, since it has been held that rearranging parts of an invention involves only routine skill in the art. In re Japikse, 86 USPQ 70. Furthermore, it appears that the invention would perform equally well with the slider and protuberance swapped, as the protuberance would still be blocked via the slider even on the second handle versus the first handle.
Regarding claim 11, Stamm teaches wherein the slider is slidable within a channel defined within a handle (136 within 140).
Stamm is silent regarding the channel within the first handle.
Stamm discloses the claimed invention except for the slider and channel is disposed on the second handle rather than the first handle (136 and 140 on 120 rather than 122). It would have been obvious to one having ordinary skill in the art at the time the invention was made to swap the locations of 136 and 134 and their associated elements including channel 140, since it has been held that rearranging parts of an invention involves only routine skill in the art. In re Japikse, 86 USPQ 70. Furthermore, it appears that the invention would perform equally well with the slider and protuberance swapped, as the protuberance would still be blocked via the slider even on the second handle versus the first handle.
Regarding claim 12, Stamm teaches wherein the second handle includes an aperture defined therein configured to receive the switch activation element of the first handle upon full actuation of the first handle when the slider is disposed in the second position (120 receives 138 in the aperture holding 136).
Claim(s) 2 and 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Stamm in view of Moua (US 9,456,863).
Regarding claim 2, Stamm teaches the switch configured to be selectively engaged by the switch activation element of the first handle when the slider is disposed in the first, in-line position (138 and 136 contact to actuate the switch), but teaches the switch and button as one element rather than separate parts of an element.
However, Moua teaches the switch (136) is operably coupled to a depressable button extending from the housing to be actuated (137 extending from housing and connected to 136 to be actuated by 138). It would have been obvious to one of ordinary skill in the art to modify Stamm such that the switch is split up into its constituent parts as a switch and depressible button, as taught by Moua, to give more detailed structure to the device and how it actuates.
Regarding claim 10, Stamm teaches the switch configured to be selectively engaged by the switch activation element of the first handle when the slider is disposed in the first, in-line position (138 and 136 contact to actuate the switch), but teaches the switch and button as one element rather than separate parts of an element.
However, Moua teaches the switch (136) is operably coupled to a depressable button extending from the housing to be actuated (137 extending from housing and connected to 136 to be actuated by 138). It would have been obvious to one of ordinary skill in the art to modify Stamm such that the switch is split up into its constituent parts as a switch and depressible button, as taught by Moua, to give more detailed structure to the device and how it actuates.
Claim(s) 6-8, and 13-18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Stamm in view of O’Neill (US 2014/0107685).
Regarding claim 6, Stamm is silent wherein the housing includes a latch assembly disposed therein configured to releasably lock the first handle relative to the housing when the slider is disposed in the second position.
However, O’Neill teaches a forceps device with a housing including a latch assembly disposed therein (122 with latch 122a) configured to releasably lock the first handle relative to the housing when the slider is disposed in the second position (122a locks handle 122 relative to the housing).
It would have been obvious to one of ordinary skill in the art to modify Stamm with the latch assembly of O’Neill, allowing for temporary locking capability.
Regarding claim 7, Stamm is silent regarding the latch assembly.
O’Neill teaches wherein the latch assembly is moveable between a first position wherein the latch assembly is aligned with a railway defined within the housing for selectively locking the first handle relative to the housing upon actuation thereof (par. [0068] latch 122a received on railway) and a second position wherein the latch assembly is misaligned with the railway and the first handle does not releasably lock relative to the housing (par. [0068] released from railway to unlock the handle).
It would have been obvious to one of ordinary skill in the art to modify Stamm with the latch assembly of O’Neill, allowing for temporary locking capability.
Regarding claim 8, Stamm is silent regarding the latch assembly.
O’Neill teaches wherein the slider includes a rod operably coupled to the latch assembly (t-shape 122a with rod as proximal end of 122a), the rod configured to move the latch assembly between the first position and the second position upon movement of the slider (proximal end of 122a moves distal t- shape latch portion of 122a).
It would have been obvious to one of ordinary skill in the art to modify Stamm with the latch assembly of O’Neill, allowing for temporary locking capability.
Regarding claim 13, Stamm does not teach wherein the housing includes a latch assembly disposed therein configured to releasably lock the first handle relative to the second handle when the slider is disposed in the second position.
However, O’Neill teaches a forceps device with a second handle including a latch assembly disposed therein (120 with latch 122a) configured to releasably lock the first handle relative to the second handle when the slider is disposed in the second position (122a locks handle 122 relative to second handle 120). It would have been obvious to one of ordinary skill in the art to modify Stamm with the latch assembly of O’Neill, allowing for temporary locking capability.
Regarding claim 14, Stammm does not teach the latch assembly.
However, O’Neill teaches wherein the latch assembly is moveable between a first position wherein the latch assembly is aligned with a railway defined within the housing for selectively locking the first handle relative to the second handle upon actuation thereof (par. [0068] latch 122a received on railway) and a second position wherein the latch assembly is misaligned with the railway and the first handle does not releasably lock relative to the second handle (par. [0068] released from railway to unlock the handle).
Regarding claim 15, Stamm is silent regarding the latch assembly.
O’Neill teaches wherein the slider includes a rod operably coupled to the latch assembly (t-shape 122a with rod as proximal end of 122a), the rod configured to move the latch assembly between the first position and the second position upon movement of the slider (proximal end of 122a moves distal t- shape latch portion of 122a).
It would have been obvious to one of ordinary skill in the art to modify Stamm with the latch assembly of O’Neill, allowing for temporary locking capability.
Regarding claim 16, Stamm is silent regarding the latch assembly. O’Neill teaches wherein the latch assembly is moveable about a pivot between the first and second positions (pivot as in par. [0068] to release the latch 122a). It would have been obvious to one of ordinary skill in the art to modify Stamm with the latch assembly of O’Neill, allowing for temporary locking capability.
Regarding claim 17, Stamm is silent regarding the latch assembly. O’Neill teaches wherein the latch assembly includes T-shape distal end configured to ride within the railway (par. [0068] t-shaped latch received in railway 120a). It would have been obvious to one of ordinary skill in the art to modify Stamm with the latch assembly of O’Neill, allowing for temporary locking capability.
Regarding claim 18, Stamm is silent regarding the latch assembly. O’Neill teaches wherein the latch assembly is configured to lock the first handle relative to the second handle upon full actuation of the first handle relative to the second handle and initial release thereof (when 122 is actuated, the latch and railway temporarily lock the movable handle as in par. [0068]) and configured to release the first handle from the railway upon and re-actuation of the first handle relative to the second handle and release thereof (when handle 122 is pivoted proximally the latch is released). It would have been obvious to one of ordinary skill in the art to modify Stamm with the latch assembly of O’Neill, allowing for temporary locking capability.
Response to Arguments
Applicant's arguments filed 8/14/25 have been fully considered but they are not persuasive. Applicant argues that the slider of Stamm would not allow for full actuation of the first handle relative to the housing. However, it is examiner’s position that full actuation would involve actuating the first handle as far back as it can go, which, while shorter than when the slide is not actuated, is a full squeeze of the handle.
Applicant further argues that 138 of Stamm would not be misaligned with the switch when the slider is in a second position. However, as the slider blocks the contact with the switch and the switch activation element, the switch activation element 138 is misaligned with 137 so as to not be able to activate the switch. Examiner suggests amending such that the slider moves the switch activation element in the first handle, given that 138 of Stamm is static relative to the first handle.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BO OUYANG whose telephone number is (571)272-8831. The examiner can normally be reached M-F 8-5 EST.
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/BO OUYANG/Examiner, Art Unit 3794
/MICHAEL F PEFFLEY/Primary Examiner, Art Unit 3794