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 .
Response to Amendment
The amendments filed on 03/18/2026 have been entered. Claims 1-11 remain pending in the application.
Response to Arguments
Applicant’s arguments, see pages 5-7, filed 03/18/2026, with respect to the rejection(s) of claim(s) 1 under 35 USC 102(a)(1) in view of Lazzari have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of an alternative interpretation of Lazzari which addresses the newly added “interior” limitations.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1, 2, and 8-11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Lazzari et al. (US 2024/0268855).
Regarding claim 1, Lazzari et al. discloses a surgical tool (1, FIG 1A-1B, [0112]) comprising: an elongated shaft (7) having a longitudinal axis (X-X, FIGs 2-3), having a proximal end (End shown attached to the robotic manipulator, FIGs 1A-1B) and a distal end (8, [0113]); an end effector (9, particularly the embodiment of FIG 23-29) operably coupled to the elongated shaft at the distal end ([117]), the end effector comprising: an end effector axle (5, which is received through the openings along the dashed line shown in FIG 26), orthogonal to the longitudinal axis (FIGs 2-3); a first jaw (50, FIG 23-24) with an interior and an exterior relative to the longitudinal axis (See annotated FIG 23 below wherein any portion positioned closer to the axis is considered an interior and portions positioned away from the axis are considered the exterior) and a second jaw (20) with an interior and an exterior relative to the longitudinal axis (See annotated FIG 23 below wherein any portion positioned closer to the axis is considered an interior and portions positioned away from the axis are considered the exterior), the first and second jaw rotatably mounted to the end effector axle ([0215-0217]) so that the interior of the first jaw and second jaw move towards the longitudinal axis as the first and second jaw are rotated about the end effector axle from an open state to a closed state (FIG 23 shows the open state. In order to perform the cutting action between blades 34 and a counter-blade cutting edge on 40, [0259], the jaws are closed towards the longitudinal axis in the direction “G”); a first cutting body (30, having cutting blade 34) on the interior of the first jaw (FIG 23 and 26 show all of 30 is positioned against the interior surface of jaw 50), the interior of the first cutting body (The side of 30 closest to the annotated axis line) having a first flat portion (See annotated FIG 28 below), a first concave portion (See annotated FIG 28 below) and first convex portion (See annotated FIG 28 below) wherein the first flat portion is proximal to the first concave portion (As shown in FIG 28) and the first concave portion is proximal to the first convex portion (As shown in FIG 28. Examiner notes that due to the flat, plate-like structure of 30, the portions along the perimeter as annotated below are defined on both an interior and exterior surface of the cutting body); and a second cutting body (40, which forms a cutting body because it engages with 30 to cut a material therebetween) on the interior of the second jaw (FIG 23 and 26 show all of 40 is positioned against the interior surface of jaw 20), the interior of the second cutting body (the side of 40 closest to the annotated axis line) having a second flat portion (See annotated FIG 29 below), a second concave portion (See annotated FIG 29 below) and a second convex portion (See annotated FIG 29 below) wherein the second flat portion is proximal to the second concave portion (As shown in FIG 29) and the second concave portion is proximal to the second convex portion (As shown in FIG 29. Examiner notes that due to the flat, plate-like structure of 40, the portions along the perimeter as annotated below are defined on both an interior and exterior surface of the cutting body); wherein the interior of first cutting body and second cutting body (The sides which face each other instead of facing the respective jaws) are configured to trap and sever a suture therebetween when the first jaw and second jaw are transitioned from the open state to the closed state (See FIG 16 for example where suture 68 is cut by surfaces between the jaws as the jaws are closed, [0280, 0285-0286]).
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Regarding claim 2, Lazzari et al. discloses the first flat portion is adjacent the first concave portion (As shown in FIG 28), the first concave portion is adjacent to the first convex portion (As shown in FIG 28; examiner notes the claimed portions can be considered ‘adjacent’ to one another which does not necessarily require they are in contagious contact along the edge), the second flat portion is adjacent the second concave portion (As shown in FIG 29), and the second concave portion is adjacent the second convex portion (As shown in FIG 29; examiner notes the claimed portions can be considered ‘adjacent’ to one another which does not necessarily require they are in contagious contact along the edge).
Regarding claim 8-11, Lazzari et al. discloses the first jaw has a first recessed portion (16) adjacent to the first cutting body (FIG 23 and 26) and the second jaw has a second recessed portion (26) adjacent to the second cutting body (FIG 23 and 26) wherein the first recessed portion extends circumferentially through the end of the first jaw (16 is a through hole and has a radial channel 19, wherefore extending ‘circumferentially through the end’ of the first jaw) and the second recessed portion extends circumferentially through the end of the second jaw. (26 is a through hole and has a radial channel 29, wherefore extending ‘circumferentially through the end’ of the first jaw).
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.
Claim(s) 3-7 are rejected under 35 U.S.C. 103 as being unpatentable over Lazzari et al. (US 2024/0268855).
Regarding claims 3 and 6, Lazzari et al. discloses the invention substantially as claimed, as set forth above for claims 1 and 2.
Lazzari is silent regarding the length of the first and second flat portions in relation to the total length of the first and second cutting bodies, specifically that the first and second flat portions are more than 75% the total length of their respective cutting bodies.
However, applicant has not provided evidence of the criticality of the claimed relationship in the instant specification. In paragraph [0063-74] of the instant invention, Applicant lists desirable elements of the device and that each surgical tool may have one or more of said elements, including that of the claimed language. It is the Examiner's position that since there is a lack of criticality/reasoning for the specific relationship of more than 75%, it would have been prima facie obvious to one skilled in the art to modify the first and second flat portions to the claimed length of more than 75% the total cutting body length, since this is a mere obvious design choice that fails to patentably distinguish the invention of the claims from the prior art. In re Dailey, 149 USPQ47 (CCPA 1976). Furthermore, it would have been obvious to one of ordinary skill in the art at the time of the invention to cause the first and second flat portions to have the claimed length of more than 75% the total cutting body length since it has been held that "where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device" Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert denied, 469 U.S. 830, 225 SPQ 232 (1984). In the instant case, the device of Lazzari would not operate differently with the claimed lengths and since Lazzari is intended to have flat portions with length sufficiently long to act as levers for the cutting surfaces of the jaws, the device would function appropriately having the claimed lengths. Further, applicant places no criticality on the dimensions claimed, indicating simply that the tool "may" have the claimed dimensions (Paragraph [0062, 0064, 0067]).
Regarding claim 4, Lazzari et al. discloses the invention substantially as claimed, as set forth above for claim 2.
Lazzari is silent regarding the first convex and first concave portions having the same radius of curvature.
However, applicant has not provided evidence of the criticality of the claimed relationship in the instant specification. In paragraph [0057] of the instant invention, Applicant discloses the concaved section has a radius of curvature between 0.15mm and 0.35mm and the convex section has a radius of curvature between 0.15mm and 0.35mm, which includes values for each that could be the same, but does not further describe any criticality of the curvatures being the same. [0065] lists desirable elements of the device and that each surgical tool may have one or more of said elements, including that of the claimed language. It is the Examiner's position that since there is a lack of criticality/reasoning for the specific relationship of the first convex and first concave portions having the same radius of curvature it would have been prima facie obvious to one skilled in the art to modify the first convex and the first concave portions to have the same radius of curvature, since this is a mere obvious design choice that fails to patentably distinguish the invention of the claims from the prior art. In re Dailey, 149 USPQ47 (CCPA 1976).
Regarding claims 5 and 7, Lazzari et al. discloses the invention substantially as claimed, as set forth above for claims 3 and 6.
Lazzari does show the length of the convex portions being significantly more than the length of the concave portions but is silent regarding the first convex portion being more than three times the length of the first concave portion and the second convex portion being more than three times the length of the second concave portion.
However, applicant has not provided evidence of the criticality of the claimed relationship in the instant specification. In paragraph [0057] of the instant invention, Applicant discloses the concaved section makes up approximately one to nine percent of the total length of cutting region and the convex section makes up approximately five to thirty percent of the total length of cutting region, which includes values for each that could provide the first convex portion being more than three times the length of the first concave portion and the second convex portion being more than three times the length of the second concave portion, but does not further describe any criticality of relationship of the lengths. [0066 and 0068] list desirable elements of the device and that each surgical tool may have one or more of said elements, including that of the claimed language. It is the Examiner's position that since there is a lack of criticality/reasoning for the specific relationship of first convex portion being more than three times the length of the first concave portion and the second convex portion being more than three times the length of the second concave portion, it would have been prima facie obvious to one skilled in the art to modify the lengths the of the first and second convex and concave portions to mee the claim limitation, since this is a mere obvious design choice that fails to patentably distinguish the invention of the claims from the prior art. In re Dailey, 149 USPQ47 (CCPA 1976).
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 BROOKE N LABRANCHE whose telephone number is (571)272-9775. The examiner can normally be reached M-F 8-5.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Elizabeth Houston can be reached at 5712727134. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BROOKE LABRANCHE/Primary Examiner, Art Unit 3771
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