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 .
Response and Amendment Filed
Applicant’s response and amendment, filed December 3, 2025, have been entered and made of record. Accordingly, the status of the claims is as follows: Claims 1-17 are canceled; claims 18-20 are amended; claims 21-30 are newly added.
Previously Set Forth Objections and Rejections
The objection to the drawings under 37 CFR 1.83(a), as set forth in the previous Office action, is hereby withdrawn in view of the cancellation of claims 1, 11, 16 and 17 and the amendments to claim 18.
The objection to claims 18-20, as set forth in the previous Office action, has been overcome by amendments to claims 18-20.
The 35 USC 102(a)(2) rejection of claims 1-6 and 8-20 as being anticipated by McClurken et al. (U.S. Patent Application Publication No. 2003/0216733), as set forth in the previous Office action, is hereby withdrawn.
The 35 USC 103 rejection of claim 7 as being unpatentable over McClurken et al. (U.S. Patent Application Publication No. 2003/0216733) in view of Slater (U.S. Patent No. 6,417,709) is hereby withdrawn.
The following new grounds of rejection are set forth:
Claim Rejections - 35 USC § 103
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.
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.
Claim(s) 18-25, 27, 28 and 30 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bahls et al. (U.S. Patent Application Publication No. 2013/0116716).
In regard to claims 18-24, 27, 28 and 30, Bahls et al. teach a liquid-jet scalpel 10 comprised of a shaft 26 connected to an end effector 20 where the end effector 20 is comprised of two gripper arms 20a, 20b (jaws; see Fig. 2). A nozzle 14 is positioned adjacent a distal tip of gripper arm 20b and a suction device 22 is positioned adjacent a distal tip of gripper arm 20a (see Fig. 2 and para. 0037). Bahls et al. also teach that the nozzle 14 and the suction device 22 can be arranged at the same end effector arm (see para. 0017). Bahls et al. also teach that the invention allows cutting tissue with the liquid jet emanating from the nozzle as well as manipulating tissue at the surgical site with the functional end effector without the liquid-jet scalpel having to be extracted from the patient’s body (e.g., providing counter-traction to prevent tearing or displacing or tissue) (see para. 0012). Bahls et al. do not specifically disclose that the nozzle 14 communicates with a source of pressurized fluid. However, it would have been obvious to one of ordinary skill in the art at the effective filing date of the invention that the device of Bahls et al. operates with and requires a source of pressurized fluid as Bahls et al. disclose that the liquid jet emanating from the nozzle 14 cuts tissue (see para. 0012). Bahls et al. also do not specifically disclose that the liquid-jet scalpel 10 is introduced into the patient’s body with the gripper arms 20a, 20b in a closed position and the gripper arms 20a, 20b are then opened to manipulate and grasp tissue. However, it would have been obvious to one of ordinary skill in the art at the effective filing date of the invention that the device of Bahls et al. is introduced to the surgical site with the gripper arms 20a, 20b in a closed position as having them in an opened position would interfere with insertion and that the gripper arms 20a, 20b would subsequently be opened to perform the task of manipulating and grasping tissue. Figure 2 demonstrates that the tissue to be treated would be distal to the gripper arms 20a, 20b and that the hydrodissection force would be against tissue lateral to the tissue grasped by the gripper arms 20a, 20b. In regard to claim 25, Figure 2 shows that the gripper arms 20a, 20b have substantially blunt (curved or arced) exterior surfaces that would function to prevent damaging tissue.
Claim(s) 26 and 29 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bahls et al. (U.S. Patent Application Publication No. 2013/0116716) in view of McClurken et al. (U.S. Patent Application Publication No. 2003/0216733).
In regard to claim 26, Bahls et al. are silent as to shaft channels for delivering the pressurized fluid through the shaft 26. However, McClurken et al. teach a device 10 used to grasp, coagulate and cut tissue comprised of a hollow elongate shaft 12 with a tip portion 14 having two directly opposing, cooperating and moveable jaws 16a, 16b adjacent the distal end 18 of the shaft 12 (see Fig. 1 and paras. 0077-0078). An input fluid line 44 comprising a passage 46 extending from the end of the grip portion 26 through the shaft 12 is connected and configured to deliver fluid 128 to jaws 16ab 16b and is connectable to a fluid source 130 (see Figs. 1 and 3 and para. 0080). McClurken et al. thus demonstrate that channels within a shaft of an instrument for the delivery of fluid are well known in the art. Accordingly, it would have been obvious for one of ordinary skill in the art at the effective filing date of the invention to provide the device of Bahls et al. with the passage 46 of McClurken et al. in order to provide a channel for the passage of fluid through the shaft 26. In regard to claim 29, Bahls et al. are silent as to delivering energy to one or both gripper arms 20a, 20b to cauterize tissue adjacent the gripper arms. However, McClurken et al. teach jaws 16a, 16b where jaw 16a may include two electrodes 64a, 66a while jaw 16b may include two directly opposing electrodes 64b, 66b and each electrode is connectable to a generator 136 via wire conductors 40, 42 (see Figs. 3-4 and 6 and para. 0093). McClurken et al. thus demonstrate that devices capable of delivering energy to gripping jaws to cauterize tissue adjacent the jaws are well known in the art, particularly in conjunction with irrigation, to provide an additional means to cauterize or cut tissue. Accordingly, it would have been obvious for one of ordinary skill in the art at the effective filing date of the invention to provide the device of Bahls et al. with the electrodes 64a, 66a, 64b, 66b of McClurken et al. in order to equip the device with the additional ability to cauterize or cut tissue by delivering energy to the gripper arms 20a, 20b.
Response to Arguments
Applicant’s arguments with respect to claim(s) 18-30 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. Caruso (PCT Publication No. WO 2016/012936) teaches a dissector device with fluid channels and outlets (see Fig. 5).
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 BEVERLY MEINDL FLANAGAN whose telephone number is (571)272-4766. The examiner can normally be reached Mon-Fri 7:30AM to 5:00PM.
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/BEVERLY M FLANAGAN/Primary Examiner, Art Unit 3794