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 § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1, 2, and 5-15 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.
Claim 1 is found to be indefinite because Examiner is unsure of the scope of the “electrosurgical instrument” limitation. More specifically, it does not appear as though this limitation has been positively recited (since the preamble recites “a reusable electronics unit for use in an electrosurgical instrument”), and therefore it is unclear if it (and its components – e.g., ‘a complementary electrical interface provided on the end effector unit’) are required by the claim language. In order to address this, Applicant could amend the preamble to recite ‘an electrosurgical instrument comprising an end effector unit and a reusable electronics unit’.
Claim 6 is found to be indefinite because Examiner is unsure of the scope of the “electrosurgical instrument” limitation. More specifically, it does not appear as though this limitation has been positively recited (since the preamble recites “an end effector unit for use in an electrosurgical instrument”), and therefore it is unclear if it (and its components – e.g., ‘a sealed reusable electronics unit’) are required by the claim language. In order to address this, Applicant could amend the preamble to recite ‘an electrosurgical instrument comprising an end effector unit and a sealed reusable electronics unit’.
Claim 6 is found to be indefinite because Examiner is unsure of what is meant by the limitation “end effector unit including… a user-releasable electrical interface configured to connect to a complementary electrical interface provided on the end effector unit”. More specifically, it is unclear how the ‘complementary electrical interface’ can be ‘provided on the end effector unit’ while also being configured to connect/interface with the ‘user-releasable electrical interface’ (which is also a part of the ‘end effector unit’). It appears as though this “complementary electrical interface” should be provided on the ‘reusable electronics unit’ (as previously claimed).
Claim 10 recites the limitation "the electrosurgical instrument" in line 1. There does not appear to be sufficient antecedent basis for this limitation in the claim, since it has not been linked to the “electrosurgical instrument” from claim 1. Furthermore, as seen above, it is unclear if the “electrosurgical instrument” in claim 1 is even positively recited. It should be noted that “the complementary electrical interface” (line 3) and “the end effector unit” (claim 11) appear to have the same antecedent basis issues (for the same reason). Appropriate correction is required.
Claim 12 is found to be indefinite because Examiner is unsure of what is meant by the limitation “associated mechanical actuation componentry including user-operable componentry to control the end effector via the associated mechanical actuation componentry”. The underlined language appears to be confusing and redundant. Appropriate correction is required.
It should be noted that all other cited claims have been rejected for being dependent upon a rejected base claim.
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, 2, and 5-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Deville, U.S. 2009/0138003 (hereinafter Deville) in view of Zemlok, U.S. 2009/0108048 (hereinafter Zemlok).
Regarding claims 1 and 2, Regarding claims 1 and 2, Deville discloses (note figs. 30-35; note paragraphs 144-147; as best understood by Examiner) a reusable electronics unit for use in an electrosurgical instrument, the electrosurgical instrument in use comprising: an end effector unit (3400) including an end effector (i.e., distal jaws); and the reusable electronics unit (3500) including: a radio frequency (RF) electrosurgical signal generator circuitry (3540) for supplying in use RF electrosurgical signals to the end effector; a user-releasable electrical interface (3512) configured to connect to a complementary electrical interface (3410) provided on the end effector unit through which RF electrosurgical signals are supplied when the electrosurgical instrument is in use; and a battery (3520), wherein: the reusable electronics unit is hermetically sealed (note paragraphs 146-147). However, Deville fails to explicitly disclose that the reusable electronics unit further comprises inductive charging circuitry for charging said battery. Zemlok teaches (note figs. 1 and 10) a similar apparatus comprising a reusable unit (110/140) with a rechargeable battery (400) and inductive charging circuitry for charging said battery (note paragraph 73). It is well known in the art that the use of a rechargeable battery would result in increased efficiency, and that batteries can be recharged in a variety of interchangeable configurations (as noted in Zemlok) including inductively. Therefore, it would have been obvious to a person having ordinary skill in the art at the time the invention was filed, to have modified the reusable electronics unit of Deville to comprise a rechargeable battery and inductive charging circuitry for charging said battery (as taught by Zemlok) in order to increase efficiency.
Regarding claim 5, Deville discloses (see above) a reusable electronics unit wherein there is no mechanical drive between the reusable electronics unit and the end effector unit (see figs. 34-35).
Regarding claim 6, Deville discloses (note figs. 30-35; note paragraphs 144-147; as best understood by Examiner) an end effector unit for use in an electrosurgical instrument, the electrosurgical instrument comprising: the end effector unit (3400) including: an end effector (i.e., distal jaws); a user-releasable electrical interface (3410) configured to connect to a complementary electrical interface (3512) provided on a sealed reusable electronics unit (3500) through which RF electrosurgical signals are supplied when the electrosurgical instrument is in use; and the reusable electronics unit including: a radio frequency (RF) electrosurgical signal generator circuitry (3540) for supplying in use RF electrosurgical signals to the end effector; and a battery (3520). However, Deville fails to explicitly disclose that the reusable electronics unit further comprises inductive charging circuitry for charging said battery. Zemlok teaches (note figs. 1 and 10) a similar apparatus comprising a reusable unit (110/140) with a rechargeable battery (400) and inductive charging circuitry for charging said battery (note paragraph 73). This design is utilized because it may “eliminate shorting of contacts” (note paragraph 73), thereby resulting in increased safety. It is also well known in the art that the use of a rechargeable battery would result in increased efficiency, and that batteries can be recharged in a variety of interchangeable configurations (as noted in Zemlok) including inductively. Therefore, it would have been obvious to a person having ordinary skill in the art at the time the invention was filed, to have modified the reusable electronics unit of Deville to comprise a rechargeable battery and inductive charging circuitry for charging said battery (as taught by Zemlok) in order to increase safety and efficiency.
Regarding claim 7, Deville discloses (see above) an end effector unit wherein the end effector unit further comprises a movable mechanism (3010) capable of receiving user input, such that an operation of the end effector is altered by movement of the movable mechanism.
Regarding claim 8, Deville discloses (see above) an end effector unit wherein the end effector unit is capable of being a ‘single-use’ unit. It should be noted that a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
Regarding claim 9, Deville discloses (see above) an end effector unit wherein there is no mechanical drive between the reusable electronics unit and the end effector unit (see figs. 34-35).
Regarding claim 10, Deville discloses (note figs. 30-35; note paragraphs 144-147; as best understood by Examiner) the electrosurgical instrument (see above), comprising: the reusable electronics unit according to claim 1 (see above), wherein the user-releasable electrical interface (3510) of the reusable electronics unit (3500) is connected to the complementary electrical interface (3410) of the end effector unit (3400).
Regarding claim 11, Deville discloses (see above, as best understood by Examiner) an electrosurgical instrument wherein all moving parts of the electrosurgical instrument are contained within the end effector unit (see figs. 34-35).
Regarding claims 12 and 15, Deville discloses (note figs. 30-35; note paragraphs 144-147; as best understood by Examiner) an electrosurgical instrument comprising: a first part (3400) and a second part (3500), the first part being permitted a ‘limited’ (necessarily) number of uses including: an end effector (i.e., distal jaws) including one or more electrosurgical electrodes (note abstract); associated ‘mechanical actuation componentry’ including user-operable componentry (3010) to control the end effector via the associated mechanical actuation componentry, an arrangement being such that the first part is not completely sealed such that the first part is capable of being contaminated internally by surgical debris when the end effector is in use; a second part being reusable and hermetically sealed (note paragraphs 146-147) to prevent the ingress of surgical debris when in use to prevent internal contamination by surgical debris, the second part including a RF electrosurgical signal generator circuitry (3540) for supplying in use RF electrosurgical signals to the electrosurgical electrodes of the end effector; and a battery (3520). However, Deville fails to explicitly disclose that the reusable second part further comprises inductive charging circuitry for charging said battery. Zemlok teaches (note figs. 1 and 10) a similar apparatus comprising a reusable unit (110/140) with a rechargeable battery (400) and inductive charging circuitry for charging said battery (note paragraph 73). This design is utilized because it may “eliminate shorting of contacts” (note paragraph 73), thereby resulting in increased safety. It is also well known in the art that the use of a rechargeable battery would result in increased efficiency, and that batteries can be recharged in a variety of interchangeable configurations (as noted in Zemlok) including inductively. Therefore, it would have been obvious to a person having ordinary skill in the art at the time the invention was filed, to have modified the reusable second part of Deville to comprise a rechargeable battery and inductive charging circuitry for charging said battery (as taught by Zemlok) in order to increase safety and efficiency.
Regarding claim 13, Deville discloses (see above) an electrosurgical instrument wherein the first part is capable of being ‘single-use’. It should be noted that a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
Regarding claim 14, Deville discloses (see above) an electrosurgical instrument wherein there is no mechanical drive between the first part and the second part (see figs. 34-35).
Response to Arguments
Applicant's arguments filed November 26, 2025 have been fully considered but they are not persuasive. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Examiner asserts that Deville discloses a system comprising a sealed reusable unit containing RF signal generator circuitry and a battery, and that Zemlok (which discloses a similar system having a reusable unit) is merely being relied upon for its teaching of a battery that is rechargeable via inductive circuitry. As above, Examiner maintains that it is well known in the art that these different battery-charging configurations are widely considered to be interchangeable, and that this modification would have resulted in increased safety and efficiency. Therefore, Examiner asserts that the claims are still met in view of the cited references, as they are currently written.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 THOMAS ANTHONY GIULIANI whose telephone number is (571)270-3202. The examiner can normally be reached Mon - Fri 9:00-5:00.
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/THOMAS A GIULIANI/Primary Examiner, Art Unit 3794