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 Arguments
The amendments to claims 3 and 4 are acknowledged and the claim objections are withdrawn.
Applicant’s arguments, see pages 1-4, filed 11/07/2025, with respect to the rejection(s) of claim(s) 1 under Taniguchi 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 Therefore, the rejection has been withdrawn.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 Berkelaar (US 20190216564).
Claim Objections
Claims 6-8 are objected to because of the following informalities:
Claim 6, line 2: “the shaft is positioned between the proximal end arm and the distal end arm” should recite “the shaft is positioned between the proximal end arm and the distal end arm of each arm of the plurality of arms”.
Claim 7, line 4: “according to forward and backward move” should recite “according to a forward and a backward move”.
Claim 8, line 1: “the jaws is” should recite “the jaws are”.
Appropriate correction is required.
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) 1-6, 8, and 11-14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Berkelaar (US 20190216564).
Regarding claim 1, Berkelaar discloses a treatment tool (Figs. 1A-B, para. 0058) comprising:
an insertion tube 40 that is tubular (see Fig. 14A, para. 0058-0059), the insertion tube being configured to be at least partly inserted into a body (para. 0001, 0054);
a pair of jaws 10, 70 that are provided at a distal end of the insertion tube 40 (see Fig. 15 for example, Fig. 1A, para. 0058) and that are flexible with respect to the insertion tube (Figs. 1A, 7A, para. 0058-0059), the pair of jaws 10, 70 being configured to grasp living tissue by opening and closing with respect to each other (para. 0054, 0058, 0091);
a pin 90 axially defining a rotation axis extending in a direction in which the jaws are configured for opening and closing with respect to each other and about which the jaws are caused to rotate with respect to a longitudinal direction of the insertion tube (Figs. 1A-1B, para. 0060-0061);
a shaft (interpreted as first jaw mount 20, Figs. 4A-B, para. 0060; The examiner notes that applicant’s “shaft” is a jaw mount, see shaft 83 in Figs. 8-10, para. 0051 of PGPUB US 2023/0181205)) that has an outer circumferential surface and in which a hole into which the pin 90 is inserted (Figs. 1A-B, 5, para. 0060), the outer circumferential surface being positioned on a circumference of a specific circle on the rotation axis when viewed from a direction along the rotation axis on which the jaws 10, 70 are caused to flex with respect to the insertion tube 40 (see annotated Fig. 1A below);
a rod 130 configured to be inserted into the insertion tube 40 and move forward and backward along a longitudinal axis of the insertion tube 40 (para. 0058, 0062-0063): and
a link mechanism (interpreted as mechanism comprising 30, 35, see Figs. 6-8B) that is linked to a distal end of the rod 130 (see Figs. 11A-B, para. 0062-0063, 0071-0072) and that includes a plurality of arms 30, 35 linked with each other movably within a specific plane (Figs. 1A-B, para. 0062-0063, the link mechanism 30, 35 and the shaft 20 are superimposed along the rotation axis (Figs. 5-6, para. 0065-0066), and wherein the specific plane intersects with the rotation axis (see annotated Fig. 1A below).
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Annotated Fig. 1A of Berkelaar
Regarding claim 2, Berkelaar discloses wherein the shaft 20 is provided in one of the jaws (Figs. 4A-B, para. 0060, 0079).
Regarding claim 3, Berkelaar discloses wherein the jaws 10, 70 are configured to open and close each other along the rotation axis (Figs. 11A-B, para. 0072-0073).
Regarding claim 4, Berkelaar discloses wherein the jaws 10. 70 are configured to open and close each other when a drive force is transmitted to the jaws 10, 70 via the link mechanism 30, 35 according to a forward move and a backward move of the rod 130 along the longitudinal axis of the insertion tube 40 (Figs. 11A-B, para. 0072-0073).
Regarding claim 5, Berkelaar discloses wherein each arm of the plurality of arms 30, 35 include:
a proximal end arm that is linked to the rod 130 (see annotated Fig. 5 below, Fig. 8A, para. 0069); and
a distal end arm to which the proximal end arm and one of the jaws are linked (see annotated Fig. 5 below, Fig. 6, para. 0060, 0065-0066).
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Annotated Fig. 5 of Berkelaar
Regarding claim 6, Berkelaar discloses wherein, when viewed from a direction along the rotation axis, the shaft 20 is positioned between the proximal end arm and the distal end arm (see Fig. 1B which illustrates the shaft positioned between the proximal end arm and the distal end arm of the first yoke arm 30 and the second yoke arm 25).
Regarding claim 8, Berkelaar discloses wherein the jaws is configured to apply a treatment energy to the living tissue to treat the living tissue (para. 0090).
Regarding claim 11, Berkelaar discloses wherein a connector 120 is provided in the insertion tube 40 and the pin 90 is mounted via the connector 120 (Figs. 5-6, para. 0065; The examiner notes that the pin 90 is mounted to the shaft via the connector 120).
Regarding claim 12, Berkelaar discloses wherein the link mechanism 30, 35 is movable within a plane orthogonal to the rotation axis (Figs. 11A-B, para. 0072-0073).
Regarding claim 13, Berkelaar discloses wherein an opening and closing direction in which the jaws 10, 70 open and close is different from a flex direction in which the jaws are rotated with respect to the insertion tube 40 (Figs. 1A-B, 11A-B, para. 0059-0060, 0072-0073).
Regarding claim 14, Berkelaar discloses wherein the link mechanism 30, 35 intersects with the rotation axis (see annotated Fig. 1A above).
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.
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) 7 is rejected under 35 U.S.C. 103 as being unpatentable over Berkelaar (US 20190216564) as applied to claim 1 above, and further in view of Yoon (US 5797958).
Regarding claim 7, Berkelaar discloses all of the limitations set forth above in claim 1. Berkelaar further discloses that the end effector is not limited to that having grasping jaws shown in FIGs. 1A-B, but any other end effector such as a cutting jaws (para. 0054, 0084). However, Berkelaar fails to disclose wherein a cutter is provided at a distal end of the link mechanism, and wherein the cutter is configured to incise the living tissue that is grasped between the jaws when a drive force is transmitted to the jaws via the link mechanism according to forward and backward move of the rod along the longitudinal axis of the insertion tube.
Yoon in the same field of endeavor of end effectors teaches an end effector comprising a cutter 186 on an upper jaw 118 of the end effector and a recess 102 to receive the cutter 186 on a lower jaw 120 (Figs. 6-7, col. 6 lines 37-41), and the cutter 186 is configured to incise living tissue that is grasped between the jaws 118, 120 (col. 6 lines 51-54).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the jaws in Berkelaar to include the blade and recess of Yoon in order to allow the jaws to cut tissue held between the jaws (col. 6 lines 51-54 of Yoon), thereby providing the jaws with an additional utility.
The combination of Berkelaar and Yoon would result in a product wherein the cutter 186 of Yoon is provided at a distal end of the link mechanism since the cutter is provided on the end effector which is located at the distal end of the link mechanism (Figs. 1A-B, para. 0058), and the cutter is configured to incise the living tissue that is grasped between the jaws as taught by Yoon (col. 6 lines 51-54 of Yoon) when a drive force is transmitted to the jaws via the link mechanism according to forward and backward move of the rod along the longitudinal axis of the insertion tube (Figs. 11A-B, para. 0072-0073 of Berkelaar).
Claim(s) 9-10 are rejected under 35 U.S.C. 103 as being unpatentable over Berkelaar (US 20190216564) as applied to claim 1 above, and further in view of Wang et al. (US 20170348043) [hereinafter Wang].
Regarding claims 9 and 10, Berkelaar discloses all of the limitations set forth above in claim 1. However, Berkelaar fails to disclose wherein an electrode configured to apply a high-frequency energy to the living tissue according to a supplied power is provided in each of the jaws, the high-frequency energy being the treatment energy (claim 9), wherein a heater configured to generate heat according to a supplied power to apply a thermal energy to the living tissue is provided in at least one of the jaws, the thermal energy being the treatment energy (claim 10).
Wang in the same field of endeavor of end effectors teaches a pair of jaws 92, 94 configured to apply a treatment energy to living tissue to treat the living tissue via. medial sections 108 and 110 and/or body portions 116 and 118 of the jaws (Figs. 6-7, para. 0047, 0054), wherein an electrode (described in para. 0054) configured to apply a high-frequency energy (interpreted as RF energy) to the living tissue according to a supplied power is provided in each of the jaws (para. 0054), the high-frequency energy being the treatment energy (para. 0054), wherein a heater (interpreted as the generator described in para. 0054) configured to generate heat according to a supplied power to apply a thermal energy to the living tissue is provided in at least one of the jaws, the thermal energy being the treatment energy (para. 0054).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the device in Berkelaar to be the electrode/heater of Wang in order to allow the jaws to coagulate blood, cauterize, and/or cut tissue held between the jaws (para. 0046 of Wang), thereby providing the jaws with an additional utility.
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 LAUREN DUBOSE whose telephone number is (571)272-8792. The examiner can normally be reached Monday-Friday 7:30am-5:30 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Elizabeth Houston can be reached at 571-272-7134. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LAUREN DUBOSE/Examiner, Art Unit 3771
/SARAH A LONG/Primary Examiner, Art Unit 3771