DETAILED ACTION
This action is in response to amendments received on 6/9/2026. Claims 12-18, 20 and 32-43 were previously pending. Claims 12, 15-16, 18, 34-35, 39-40 and 42-43 have been amended, claims 13, 33 and 36-38 have been canceled and new claims 44-46 added. A complete action on the merits of claims 12, 14-18, 20, 32, 34-35 and 39-46 follows below.
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
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 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.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 6/9/2026 has been entered.
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(4) because:
Reference characters "135" in Fig. 1 and "136" in Figs. 2, 4 have both been used to designate negative electrode; however, “drive unit” in [0058] is 135 while negative electrode is 136.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
In addition, the drawings are objected to as failing to comply with 37 CFR 1.84(p)(4) because:
Reference character “153” has been used to designate both "trigger" in Figs. 2-3 and [0052]-[0053] and "distal end" in Fig. 5 and [0061]-[0063], [0069].
Reference character “147” has been used to designate both "waveguide" in Fig. 1 and [0046]-[0056], [0069] and "switch" in Fig. 1 and [0060]-[0063].
Reference character “162” has been used to designate both "adapter" in Fig. 1 and [0050] and "housing segments" in Figs. 2-3 and [0052]-[0053].
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Moreover, the drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they include the following reference character(s) not mentioned in the description: “163” in Fig. 1, “148” in Fig. 3 (although it is noted that [0052] uses numeral character 155 for holes whereas the holes have reference character 148 and not 155), “140” in Fig. 4 and “138” in Fig. 5.
Corrected drawing sheets in compliance with 37 CFR 1.121(d), or amendment to the specification to add the reference character(s) in the description in compliance with 37 CFR 1.121(b) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
The disclosure is objected to because of the following informalities:
Footswitch in [0106] is numbered “144434” and in [0099] it is numbered “434” however, footswitch in the drawings is 144.
Holes in [0052] is numbered “155” however, 155 is used to designate clamp pad.
Appropriate correction is required.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of pre-AIA 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) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for a patent.
(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of application for patent in the United States.
Claims 12, 14-17, 20 and 32 are rejected under pre-AIA 35 U.S.C. 102(b) as being anticipated by Witt (US Patent No. 6,454,781).
Regarding Claim 12, Witt teaches an ultrasonic surgical instrument (Figs. 1a-8), comprising:
a shaft 22 (Figs.1a-c & 8);
a waveguide extending through the shaft (Figs. 1a-c and Col. 1, ll. 36-42); and
an end effector extending from the shaft and operable to manipulate tissue (Figs. 1a-1c and Figs. 6-7); wherein the end effector includes an ultrasonic blade 20 extending from the waveguide along a blade axis (Figs. 1a-8), wherein the ultrasonic blade comprises:
a proximal end configured to receive ultrasonic vibrations (Col. 1, ll. 36-42 and Col. 4, ll. 37-54);
a distal end movable along the blade axis in accordance with the ultrasonic vibrations applied to the proximal end (Col. 8, ll. 40-46); and
a widest portion exhibiting a first width (Figs. 6-7 showing the widest portion of the blade 20);
wherein the end effector further comprises a clamp arm 24 movable relative to the ultrasonic blade 20 from an open position to a closed position to capture tissue therebetween (Figs. 2-3, 8 and Col. 5, ll. 43-56), wherein the clamp arm includes:
a body portion (see the annotated figure below);
a first sidewall projecting from the body portion (one of the sidewalls in Figs. 6-7 projecting downwards from the body portion, also see the annotated figure below);
a second sidewall projecting from the body portion (the other of the sidewalls in Figs. 6-7, projecting downwards from the body portion, also see the annotated figure below), wherein the body portion comprises a second width greater than the first width and extending between the first and second sidewalls (see the annotated figure below).
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Regarding Claim 14, Witt teaches further comprising a closure actuator 72 configured to move the clamp arm toward the closed position, wherein the closure actuator 72 comprises a trigger 76 and a trigger hook 80 extending from the trigger, and wherein an aperture 81 is defined between the trigger 76 and the trigger hook 80 (Fig. 2 and Col. 5, ll. 43-56).
Regarding Claim 15, Witt teaches further comprising a power level indicator is configured to provide feedback indicative of the ultrasonic vibrations (feedback signal-power control signal “feedback signal may, for example, provide a visual audible or tactile signal to a user, and/or may provide instructions to a control unit to automatically alter the energy supply to the tissue” Col. 2, ll. 46-Col. 3, ll. 7 and Col. 9, ll. 21-29, in light of the teachings of Wiener (US Patent No. 6,679,899) stating “the amount of longitudinal movement will vary proportionately with the amount of driving power (current) applied, as adjustably selected by the user … cutting efficiency of the blade, as well as the degree of hemostasis, will vary with the level of driving power applied” in Col. 6, ll. 65-Col. 7, ll. 17; thereby the power level indicator is configured to provide feedback indicative of the ultrasonic vibrations).
Regarding Claim 16, Witt teaches further comprising a generator 302 configured to provide the ultrasonic vibrations to the ultrasonic blade (Figs. 8 and 12).
Regarding Claim 17, Witt teaches further comprising a switch, wherein the generator is configured to provide the ultrasonic vibrations to the ultrasonic blade based on actuation of the switch (“power controller may include at least one electrical switch for selectively controlling the energy supplied to the instrument to coagulate tissue, or to cut tissue, depending on the electrical switch setting” Col. 3, ll. 1-7 and Col. 9, ll. 21-29).
Regarding Claim 20, Witt teaches further comprising:
an input interface (switch) configured to receive an input from a user, wherein the input is indicative of a power level to apply to the ultrasonic blade (“power controller may include at least one electrical switch for selectively controlling the energy supplied to the instrument to coagulate tissue, or to cut tissue, depending on the electrical switch setting” Col. 3, ll. 1-7 and Col. 9, ll. 21-29).
Regarding Claim 32, Witt teaches further comprising a sensor to sense an impedance of the tissue, and a tissue state indicator operable to provide feedback indicative of a change in state of the tissue occurring based on the sensed impedance (Col. 11, ll. 46-Col. 13, ll. 10).
Claim Rejections - 35 USC § 103
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under pre-AIA 35 U.S.C. 103(a) 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.
Claim 18 is rejected under pre-AIA 35 U.S.C. 102(b) as being unpatentable over Witt (US Patent No. 6,454,781) in view of Manwaring (US Pub. No. 2010/0268205).
Regarding Claim 18, Witt teaches the invention as applied above, but does not teach wherein the power level indicator comprises a light emitting diode.
In the same field of invention, Manwaring teaches wherein the power level indicator comprises a light emitting diode (“for example, a series of lights 52 could be used to indicate power level” in [0085]).
It would have been obvious to one having ordinary skill in the art prior to the effective filing date of the current invention to add a series of lights indicative of the amount of power applied to the invention of Witt in order to allow a user to visually track the power level during use.
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 34-35, 39-41 and 45 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 9,764,164. Although the claims at issue are not identical, they are not patentably distinct from each other because they are both directed to an ultrasonic surgical system, comprising: a shaft, a waveguide extending through the shaft; and an end effector extending from the shaft and operable to manipulate tissue, wherein the end effector includes an ultrasonic blade extending from the waveguide and operable to receive ultrasonic vibrations; wherein the end effector further comprises a clamp arm movable relative to the ultrasonic blade from an open position to a closed position to capture the tissue therebetween, and wherein the clamp arm includes a first electrode and a second electrode that each longitudinally overlap the ultrasonic blade when the clamp arm is in the closed position.
Claims 42-43 and 46 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 10,688,321. Although the claims at issue are not identical, they are not patentably distinct from each other because they are both directed to an ultrasonic surgical system, comprising: a transducer, a waveguide extending from the transducer; an ultrasonic blade extending from the waveguide, wherein the ultrasonic blade is configured to receive ultrasonic vibrations from the transducer via the waveguide to apply energy to tissue; and a clamp arm, comprising: a distal abutment surface comprising an electrode; and an electrically non-conductive pad terminating at a distal end thereof, wherein the distal abutment surface is distal to the distal end of the electrically non- conductive pad.
Allowable Subject Matter
Claims 34-35, 39-46 would be allowable by receiving an acceptable Terminal Disclaimer to overcome the Double Patenting rejection, set forth in this Office action.
Response to Arguments
Applicant's arguments directed to claims 12, 14-18, 20, 32 and 44 filed 6/9/2026 have been fully considered but they are not persuasive.
Applicant argues that “Independent claim 12 requires an ultrasonic blade that requires "a widest portion exhibiting a first width" and an end effector that "further comprises a clamp arm movable relative to the ultrasonic blade from an open position to a closed position to capture the tissue therebetween," and that the clamp arm includes "a body portion", "a first sidewall projecting from the body portion", and "a second sidewall projecting from the body portion, wherein the body portion comprises a second width greater than the first width and extending between the first and second sidewalls". Applicant submits that Witt and Manwaring, whether taken alone or in combination, fail to disclose, teach, or suggest one or more of the foregoing limitations.” As shown on the annotated figure above with the body portion being the body of the clamp having a width W2 and the blade having a widest portion W1, Witt teaches that W2 is greater than W1 as claimed. Therefore, applicant’s arguments are not found persuasive.
Conclusion
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/KHADIJEH A VAHDAT/Primary Examiner, Art Unit 3794
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