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 .
Election/Restrictions
Applicant’s election without traverse of Claims 4-20 in the reply filed on 1/28/2026 is acknowledged. Claims 1-3 have been withdrawn from further consideration and claims 4-20 are pending.
Response to Amendment
In response to the amendment filed on 1/28/2026, no claims have been added and Claims 4-20 are pending.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 4-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 of U.S. Patent No. US 11612736 (hereinafter Pat ‘736). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding instant claim 4, claim 1 of Pat ‘736 discloses a surgical instrument comprising:
a handle (col. 6 line 57-58);
a lever pivotably coupled to the handle, the lever being displaceable relative to the handle between a first position and a second position (col. 6 line 59-61);
a shaft extending from a proximal end to a distal end, wherein the proximal end of the shaft is coupled to the handle (col. 6 line 62-64); and
a clamp jaw assembly comprising:
a base member coupled to the distal end of the shaft (col. 6 line 65-66);
a first arm coupled to the base member (col. 6 line 67); and
a second arm pivotably coupled to the base member, the second arm being operatively coupled to the lever such that when the lever is in the first position, the second arm is in a first position relative to the first arm and when the lever is in the second position, the second arm is in a second position relative to the first arm (col. 7 line 7-13).
Regarding instant claims 5-6, claim 1 of Pat ‘736 discloses this.
Regarding instant claim 7, claim 1 of Pat ‘736 teaches this.
Regarding instant claim 8, claim 2 of Pat ‘736 discloses this.
Regarding instant claim 9, claim 3 of Pat ‘736 discloses this.
Regarding instant claim 10, claim 4 of Pat ‘736 discloses this.
Regarding instant claim 11, claim 5 of Pat ‘736 discloses this.
Regarding instant claim 12, claim 6 of Pat ‘736 discloses this.
Regarding instant claim 13, claim 7 of Pat ‘736 discloses this.
Regarding instant claim 14, claim 8 of Pat ‘736 discloses this.
Regarding instant claim 15, claim 9 of Pat’ 736 discloses this.
Regarding instant claim 16, claim 10 of Pat ‘736 discloses an assembly, configured to be
coupled to a distal end of a shaft of a surgical instrument (col. 8 line 13-14), the assembly comprising:
a clamp jaw assembly comprising:
a base member configured to be coupled to the distal end of the shaft (col. 8 line 15-17);
a first arm coupled to the base member (col. 8 line 18); and
a second arm pivotably coupled to the base member, the second arm configured to be operatively coupled to an actuation mechanism of the surgical instrument such that when the actuation mechanism is in a first position, the second arm is in a first position relative to the first arm and when the actuation mechanism is in a second position, the second arm is in a second position relative to the first arm (col. 8 line 25-32).
Regarding instant claims 17-18, claim 10 of Pat ‘736 discloses this.
Regarding instant claim 19, claim 11 of Pat ‘736 discloses this.
Regarding instant claim 20, claim 12 of Pat ‘736 discloses this.
Claim Rejections - 35 USC § 102
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.
Claims 4, 9, 12-16, 19-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 20090088792 A1 Hoell et al. (hereinafter Hoell).
Regarding claim 4, Hoell discloses a surgical instrument (10, Fig. 1) comprising:
a handle (12);
a lever (30) pivotably coupled to the handle, the lever being displaceable relative to the handle between a first position and a second position (paragraph 45, 52, 59);
a shaft (14) extending from a proximal end to a distal end, wherein the proximal end of the shaft is coupled to the handle (as seen in Fig. 1, paragraph 45); and
a clamp jaw assembly (20) comprising:
a base member (base of jaw member 230 as seen in annotated Fig. 16a below) coupled to the distal end of the shaft (as seen in Fig. 1);
a first arm (230) coupled to the base member (as seen in Fig. 16a, the first arm 230 is at the distal end of the base member); and
a second arm (232) pivotably coupled to the base member (as seen in Fig. 16b, paragraph 75), the second arm being operatively coupled to the lever such that when the lever is in the first position, the second arm is in a first position relative to the first arm and when the lever is in the second position, the second arm is in a second position relative to the first arm (paragraph 45, 75).
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Regarding claim 9, Hoell discloses the limitations of claim 4, and further discloses further comprising: an articulating joint (18, Fig. 1-3, 15-16d) disposed at or adjacent to the distal end of the shaft (as seen in Fig. 1-3, paragraph 45), wherein a distal end of the articulating joint is pivotably coupled to a proximal portion of the base member of the clamp jaw assembly (as seen in Fig. 16a-b) such that the base member is pivotable relative to the shaft (Fig. 1, 16a-b, paragraph 45, 75).
Regarding claim 12, Hoell discloses the limitations of claim 4, and further discloses wherein the first arm of the clamp jaw assembly is integrally formed with the base member (as seen in annotated Fig. 16a above, first arm 230 is integral with the base member).
Regarding claim 13, Hoell discloses the limitations of claim 4, and further discloses wherein the proximal end of the shaft is rotatably coupled to the handle such that the shaft is rotatable about a longitudinal axis of the shaft (paragraph 46, 76-77, rotation knob 32 (Fig. 1) rotates the shaft 14 as seen in Fig. 18a-b).
Regarding claim 14, Hoell discloses the limitations of claim 4, and further discloses further comprising:
a drive wire (154, Fig. 7, 16a-b) having a distal end and a proximal end, wherein at least a portion of the drive wire extends within the shaft, wherein the proximal end is coupled to a portion of the lever, and wherein the distal end is coupled to a portion of the clamp jaw assembly such that the second arm is operatively coupled to the lever by the drive wire (paragraph 59, 75, Fig. 5a-6, 16a-b, drive rod 126 is connected to a proximal end 152 of drive wire 154, drive rod 126 has ball end 128 that is positioned within a trigger receptacle 156 formed in a distal end 158 of trigger arm 92 of trigger 30, and as trigger 30 is actuated, drive rod 126 and drive wire 154 is moved longitudinally within the handle 12 and shaft 14 to actuate the clamp jaw assembly 20 at the distal end).
Regarding claim 15, Hoell discloses the limitations of claim 14, wherein the distal end of the drive wire is coupled to a portion of the second arm such that the second arm is operatively coupled to the lever by the drive wire (paragraph 59, 75, 16a-b, drive rod 126 is connected to a proximal end 152 of drive wire 154, drive rod 126 has ball end 128 that is positioned within a trigger receptacle 156 formed in a distal end 158 of trigger arm 92 of trigger 30, drive wire 154 is coupled to a clevis 248 at a distal end, clevis 248 is coupled to the second arm 232 via a drive pin 250, and as trigger 30 is actuated, drive wire 154 is moved longitudinally to move clevis 248 distally and proximally to open and close the second arm 232).
Regarding claim 16, Hoell discloses an assembly (end effector assembly 20, Fig. 1), configured to be coupled to a distal end of a shaft (14) of a surgical instrument (10), the assembly comprising:
a clamp jaw assembly (20) comprising:
a base member (base of jaw member 230 as seen in annotated Fig. 16a above) configured to be coupled to the distal end of the shaft (as seen in Fig. 1);
a first arm (230) coupled to the base member (as seen in Fig. 16a, the first arm 230 is at the distal end of the base member); and
a second arm (232) pivotably coupled to the base member (as seen in Fig. 16b, paragraph 75), the second arm configured to be operatively coupled to an actuation mechanism (30) of the surgical instrument such that when the actuation mechanism is in a first position, the second arm is in a first position relative to the first arm and when the actuation mechanism is in a second position, the second arm is in a second position relative to the first arm (paragraph 45, 75).
Regarding claim 19, Hoell discloses the limitations of claim 16, and further discloses further comprising an articulating joint (18, Fig. 1-3, 15-16d) configured to be disposed at the distal end of the shaft (as seen in Fig. 1-3, paragraph 45), wherein a distal end of the articulating joint is pivotably coupled to a proximal portion of the base member of the clamp jaw assembly (as seen in Fig. 16a-b) such that the base member is pivotable relative to the articulating joint (Fig. 1, 16a-b, paragraph 45, 75).
Regarding claim 20, of claim 16, wherein the first arm of the clamp jaw assembly is fixedly coupled to the base member (as seen in annotated Fig. 16a above, first arm 230 is fixedly coupled the base member).
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.
Claims 5-8, 10-11, 17-18 are rejected under 35 U.S.C. 103 as being unpatentable over Hoell in view of US 5047046 A Bodoia.
Regarding claim 5, Hoell discloses the limitations of claim 4.
Hoell is silent on further comprising a first jaw member rotatably coupled
to a portion of the first arm, the first jaw member being rotatable about an axis extending through the portion of the first arm.
However, Bodoia teaches a forceps (10, Fig. 1) comprising a first arm (12), a first jaw member (13) rotatably coupled to a portion of the first arm (col. 4 line 39-49, Fig. 2-3, first jaw member 13 is rotatably coupled to a portion of the first arm 12 through pivot pin 24), the first jaw member being rotatable about an axis extending through the portion of the first arm (as seen in Fig. 1-3, first jaw member 13 pivots through a pivot pin 24 having an axis that extends through a portion of the first arm 12).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Hoell with the teachings of Bodoia to have a first jaw member rotatably coupled to a portion of the first arm, the first jaw member being rotatable about an axis extending through the portion of the first arm, in order to provide optimal grip on an object and allow flexibility in hand orientation to securely grasp the object.
Regarding claim 6, the combination of Hoell and Bodoia teaches the limitations of claim 5, and Bodoia further discloses further comprising a second jaw member (18, Fig. 1) rotatably coupled to a portion of a second arm (17) (col. 4 line 39-52, second jaw member 18 is rotatably coupled to a portion of the second arm 17 through pivot pin 25), the second jaw member being rotatable about an axis extending through the portion of the second arm (as seen in Fig. 1, second jaw member 18 pivots through a pivot pin 25 having an axis that extends through a portion of the second arm 17).
Regarding claim 7, the combination of Hoell and Bodoia teaches the limitations of claim 6, and Bodoia further discloses wherein the first jaw member includes a first gripping surface (Fig. 1, tip 15 has a surface to grip an object) having a first shape that is configured to grasp a first portion of an object when the second arm is in the second position relative to the first arm (col. 4 line 26-28, 64 – col. 5 line 9) and the second jaw member includes a second gripping surface (Fig. 1, tip 20 has a surface to grip an object) having a second shape that is configured to grasp a second portion of the object when the second arm is in the second position relative to the first arm (col. 4 line 26-28, 64 – col. 5 line 9).
Regarding claim 8, the combination of Hoell and Bodoia teaches the limitations of claim 5, and the combination further teaches wherein the axis of the first jaw is not parallel to a longitudinal axis of the shaft (the modified device of Hoell with the teachings of Bodoia will place the axis of pivot pin 24 for the first jaw along the same plane of appositional motion of the first arm 230 and second arm 232 of Hoell which is not parallel to a longitudinal axis of the shaft 14 of Hoell).
Regarding claim 11, the combination of Hoell and Bodoia teaches the limitations of claim 5, and Hoell further discloses wherein the first arm of the clamp jaw assembly is fixedly coupled to the base member (as seen in annotated Fig. 16a above, first arm 230 is fixedly coupled the base member).
Regarding claim 10, the combination of Hoell and Bodoia teaches the limitations of claim 11, and Hoell further discloses further comprising:
an articulation knob (40, Fig. 1) rotatably coupled to the proximal end of the shaft (as seen in Fig. 1); and
an articulation wire (68/70, Fig. 2-3) having a distal end and a proximal end, wherein at least a portion of the articulation wire extends within the shaft, and wherein the proximal end is operatively coupled to the articulation knob and wherein the distal end is coupled to a portion of the base member of the clamp jaw assembly such that a displacement of the articulation wire by a rotation of the articulation knob pivots the base member of the clamp jaw assembly about the distal end of the articulating joint (paragraph 49).
Regarding claim 17, Hoell discloses the limitations of claim 16.
Hoell is silent on further comprising a first jaw member rotatably coupled to a portion of the first arm, the first jaw member being rotatable about an axis extending through the portion of the first arm.
However, Bodoia teaches a forceps (10, Fig. 1) comprising a first arm (12), a first jaw member (13) rotatably coupled to a portion of the first arm (col. 4 line 39-49, Fig. 2-3, first jaw member 13 is rotatably coupled to a portion of the first arm 12 through pivot pin 24), the first jaw member being rotatable about an axis extending through the portion of the first arm (as seen in Fig. 1-3, first jaw member 13 pivots through a pivot pin 24 having an axis that extends through a portion of the first arm 12).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Hoell with the teachings of Bodoia to have a first jaw member rotatably coupled to a portion of the first arm, the first jaw member being rotatable about an axis extending through the portion of the first arm, in order to provide optimal grip on an object and allow flexibility in hand orientation to securely grasp the object.
Regarding claim 18, the combination of Hoell and Bodoia teaches the limitations of claim 17, and Bodoia further discloses further comprising a second jaw member (18, Fig. 1) rotatably coupled to a portion of a second arm (17) (col. 4 line 39-52, second jaw member 18 is rotatably coupled to a portion of the second arm 17 through pivot pin 25), the second jaw member being rotatable about an axis extending through the portion of the second arm (as seen in Fig. 1, second jaw member 18 pivots through a pivot pin 25 having an axis that extends through a portion of the second arm 17).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KHOA TAN LE whose telephone number is (703)756-1252. The examiner can normally be reached Monday - Friday 8am - 4:30pm.
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/KHOA TAN LE/ Examiner, Art Unit 3771 /MOHAMED G GABR/Primary Examiner, Art Unit 3771
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