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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 12/12/2025 has been entered.
Response to Amendment
The amendment filed 12/12/2025 has been entered. Claims 12 and 21 has been amended. Claims 1-11, 13-14, 31 and 37 are cancelled. Claim 38 is new. Claims 12, 15-30, 32-36 and 38 remain pending in this application.
Response to Arguments
Applicant's arguments filed 12/12/2025 have been fully considered but they are not persuasive.
Applicant argues that amended claim 12 includes features similar to the allowed parent application, namely, a module dock configured to releasably engage the controllable valve and a control console configured to control the controllable valve via the module dock. However, the parent recites the surgical instrument including the module dock arranged in the handpiece while the instant application recites the control console including the module dock.
Applicant argues that Links does not disclose the control console configured to control the controllable valve via the module dock. However, as discussed in the rejection below, Links discloses that the controllable valve (58) may be a resilient valve conduit (58a) on the valve and collection module (cassette 250) that is engaged by an actuator (58b) of the control console (¶ 0047). As seen in fig. 2B, the actuator is disposed on the control console at the position of the module dock. Thus, Links discloses that the control console is configured to control the controllable valve via the module dock.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 12, 15-30, 32-37 rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 12 recites “a surgical instrument including a valve and collection module configured to releasably mount to a control console via a module dock”. The specification fails to describe such limitations in a single embodiment. Figure 1 illustrates the only embodiment where the surgical instrument (110) includes a valve and collection module (182). The embodiment of fig. 1 fails to include that the valve and collection module is configured to releasably mount to a control console (130) via a module dock. Rather, in fig. 1, the module dock is included in the surgical instrument. The embodiments of fig. 2-6 illustrate the valve and collection module configured to releasably mount to a control console via a module dock. However, the embodiments of fig. 2-6 fail to illustrate the surgical instrument including the valve and collection module. For the purposes of compact prosecution, claim 1 will be interpreted as: A surgical system, comprising: a surgical instrument [[including]]; a valve and collection module configured to releasably mount to a control console via a module dock, the valve and collection module operably associated with the surgical instrument, and the valve and collection module including a controllable valve and a collection reservoir;”
Claims 15-30, 32-36 and 38 are rejected due to dependency on claim 12.
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.
Claim(s) 12, 15-16, 20-25, 29-30, 33-36 and 38 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Links (Pub. No.: US 2010/0249693 A1).
Regarding claim 12, Links discloses (fig. 1-2) a surgical system (10), comprising:
A surgical instrument (handpiece 110);
A valve and collection module (cassette 250) configured to releasably mount to a control console (115) (¶ 0048, fig. 2B) via a module dock (cassette receptacle 100) (fig. 2B, ¶ 0049), the valve and collection module operably associated with the surgical instrument (¶ 0029), the valve and collection module including a controllable valve (valve 58, ¶ 0047) and a collection reservoir (collector 206, ¶ 0043); and
Outflow tubing (flow path 52, conduit 54a, 58a, 60a) coupled between the surgical instrument and the collection reservoir of the valve and collection module to define an outflow path from the surgical instrument to the collection reservoir (fig. 2A, ¶ 0048), wherein the controllable valve is disposed within the outflow path to selectively control flow therealong (fig. 2A, ¶ 0047), wherein the module dock is configured to releasably engage at least the controllable valve (¶ 0046, ¶ 0049), and wherein the control console is configured to control the controllable valve via the module dock (¶ 0047).
Regarding claim 15, Links discloses wherein the valve and collection module further includes a communication device (cassette 250 comprises cassette receptacle 100 which may comprise one or more alignment switches 102, ¶ 0048, ¶ 0051) and wherein the module dock is configured to retrieve information from the communication device upon engagement of the valve and the collection module with the module dock (¶ 0051).
Regarding claim 16, Links discloses wherein the valve and collection module further includes a vacuum port configured to couple to a vacuums source (vacuum pump arrangement 207 including pump 208, ¶ 0041) of the control console (fig. 2A).
Regarding claim 20, Links discloses wherein the surgical instrument includes an end effector assembly (insertable probe tip, ¶ 0029) and a handpiece (110), and wherein an outflow fluid path of the surgical instrument to the outflow tubing extends through the end effector assembly and the handpiece (¶ 0045).
Regarding claim 21, Links discloses wherein the module dock is operably coupled to the control console (fig. 3, ¶ 0048) and is configured to releasably engage the valve and collection module (¶ 0048); and wherein the control console is configured to control the controllable valve (¶ 0047).
Regarding claim 22, Links discloses (fig. 2B) wherein a valve interface (actuator 58b) is operable coupled to the controllable valve (fig. 2B, ¶ 0047), the valve configured to electrically or mechanically control the controllable valve to selectively control the flow of fluid along the outflow path (¶ 0047).
Regarding claim 23, Links discloses (fig. 3) wherein the valve and collection module is configured to releasably engage the module dock in a friction-fit or mechanically latching manner (C-channels 86 of control console receive flanges 88 of valve and collection module, ¶ 0049)
Regarding claim 24, Links discloses (fig. 3) wherein the valve and collection module further includes a communication device (cassette 250 comprises cassette receptacle 100 which may comprise one or more alignment switches 102, ¶ 0048, ¶ 0051) and wherein the module dock is configured to retrieve information from the communication device upon engagement of the valve and the collection module with the module dock (¶ 0051).
Regarding claim 25, Links discloses wherein the valve and collection module further includes a vacuum port configured to couple to a vacuums source (vacuum pump arrangement 207 including pump 208, ¶ 0041) of the control console (fig. 2A).
Regarding claim 29, Links discloses wherein the surgical instrument includes an end effector assembly (insertable probe tip, ¶ 0029) and a handpiece (110), and wherein an outflow fluid path of the surgical instrument to the outflow tubing extends through the end effector assembly and the handpiece (¶ 0045).
Regarding claim 30, Links discloses (fig. 2B) wherein a valve interface (actuator 58b) is operable coupled to the controllable valve (fig. 2B, ¶ 0047), the valve configured to electrically or mechanically control the controllable valve to selectively control the flow of fluid along the outflow path (¶ 0047).
Regarding claim 33, Links discloses wherein the surgical instrument includes an end effector assembly (insertable probe tip, ¶ 0029) and a handpiece (110) and wherein the control console is configured to control operation of the end effector assembly, the handpiece and the controllable valve (¶ 0029, ¶ 0047).
Regarding claim 34, Links discloses wherein a cable connects the handpiece with the control console (an electrical conductor may supply energy from the control console to the handpiece ¶ 0030).
Regarding claim 35, Links discloses wherein the surgical instrument includes an end effector assembly (insertable probe tip, ¶ 0029) and a handpiece (110) and wherein the control console is configured to control operation of the end effector assembly, the handpiece and the controllable valve (¶ 0029, ¶ 0047).
Regarding claim 36, Links discloses wherein a cable connects the handpiece with the control console (an electrical conductor may supply energy from the control console to the handpiece ¶ 0030).
Regarding claim 38, Links discloses wherein the operable engagement of the module dock with the control console and the operable engagement of the module dock with the valve and collection module is configured to fully support the valve and collection module on the control console and maintain the valve and collection module in engagement therewith (¶ 0048-¶ 0049).
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.
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.
Claim(s) 17, 26 and 32 is/are rejected under 35 U.S.C. 103 as being unpatentable over Links, as applied to claims 16, 25 and 21 above, and further in view of Tout et al. (Pub. No.: US 2010/0030166 A1)
Regarding claim 17, Links fails to disclose wherein the valve and collection module further includes a barrier disposed between the vacuum port and the collection reservoir.
Tout teaches (fig. 1) a system (100) comprising a vacuum port (reduced-pressure port 154) and a collection reservoir (fluid collection member 126) and thus in the same field of endeavor, wherein a barrier is disposed between the vacuum port and the collection reservoir (¶ 0028) in order to prevent liquids from entering the vacuum source (¶ 0028).
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 valve and collection module of Links such that it includes a barrier disposed between the vacuum port and the collection reservoir, as taught by Tout, in order to prevent liquids from entering the vacuum source (Tout ¶ 0028).
Regarding claim 26, Links fails to disclose wherein the valve and collection module further includes a barrier disposed between the vacuum port and the collection reservoir.
Tout teaches (fig. 1) a system (100) comprising a vacuum port (reduced-pressure port 154) and a collection reservoir (fluid collection member 126) and thus in the same field of endeavor, wherein a barrier is disposed between the vacuum port and the collection reservoir (¶ 0028) in order to prevent liquids from entering the vacuum source (¶ 0028).
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 valve and collection module of Links such that it includes a barrier disposed between the vacuum port and the collection reservoir, as taught by Tout, in order to prevent liquids from entering the vacuum source (Tout ¶ 0028).
Regarding claim 32, Links fails to disclose wherein the valve and collection module further includes a barrier disposed between the vacuum port and the collection reservoir.
Tout teaches (fig. 1) a system (100) comprising a vacuum port (reduced-pressure port 154) and a collection reservoir (fluid collection member 126) and thus in the same field of endeavor, wherein a barrier is disposed between the vacuum port and the collection reservoir (¶ 0028) in order to prevent liquids from entering the vacuum source (¶ 0028).
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 valve and collection module of Links such that it includes a barrier disposed between the vacuum port and the collection reservoir, as taught by Tout, in order to prevent liquids from entering the vacuum source (Tout ¶ 0028).
Claim(s) 18 and 27 is/are rejected under 35 U.S.C. 103 as being unpatentable over Links, as applied to claim 12 and 21 above, and further in view of Robinson et al. (Pub. No.: 2017/0368238 A1).
Regarding claim 18, Links fails to disclose wherein the valve and collection module further includes a one-way valve disposed between the outflow tubing and the collection reservoir.
Robinson teaches (fig. 2) a surgical system (drain system 10, abstract) and thus in the same field of endeavor, comprising outflow tubing (collection tube 100) and a collection reservoir (102), and a one-way valve disposed between the outflow tubing and the collection reservoir (¶ 0032) in order to prevent reflux of fluid in the collection reservoir (¶ 0032).
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 valve and collection module of Links, such that it includes a one-way valve disposed between the outflow tubing and the collection reservoir, as taught by Robinson, in order to prevent reflux of fluid in the collection reservoir (Robinson ¶ 0032).
Regarding claim 27, Links fails to disclose wherein the valve and collection module further includes a one-way valve disposed between the outflow tubing and the collection reservoir.
Robinson teaches (fig. 2) a surgical system (drain system 10, abstract) and thus in the same field of endeavor, comprising outflow tubing (collection tube 100) and a collection reservoir (102), and a one-way valve disposed between the outflow tubing and the collection reservoir (¶ 0032) in order to prevent reflux of fluid in the collection reservoir (¶ 0032).
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 valve and collection module of Links, such that it includes a one-way valve disposed between the outflow tubing and the collection reservoir, as taught by Robinson, in order to prevent reflux of fluid in the collection reservoir (Robinson ¶ 0032).
Claim(s) 19 and 28 is/are rejected under 35 U.S.C. 103 as being unpatentable over Links, as applied to claims 12 and 21 above, and further in view of Hamer et al. (Pub. No.: US 2011/0065997 A1).
Regarding claim 19, Links discloses wherein the surgical instrument includes an end effector assembly (insertable probe tip, ¶ 0029) and a handpiece (1120), and wherein an outflow fluid path of the surgical instrument to the outflow tubing extends through the end effector assembly (¶ 0045).
Links fails to disclose wherein the outflow path of the surgical instrument to the outflow tubing is isolated from the handpiece.
Hamer teaches (fig. 1-4) a surgical instrument (¶ 0001) and thus in the same field of endeavor, the surgical instrument including an end effector assembly (surgical instrument 300) and a handpiece (100), and wherein an outflow fluid path of the surgical instrument to the outflow tubing (suction/aspiration passageway 230) extends through the end effector assembly and is isolated from the handpiece (fig. 1-4, ¶ 0023) in order to allow the handpiece to be cleaned and sterilized for reuse (¶ 0024).
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 handpiece of Links such that the outflow path of the surgical instrument to the outflow tubing is isolated from the handpiece, as taught by Hamer, in order to allow the handpiece to be cleaned and sterilized for reuse (Hamer ¶ 0024).
Regarding claim 28, Links discloses wherein the surgical instrument includes an end effector assembly (insertable probe tip, ¶ 0029) and a handpiece (1120), and wherein an outflow fluid path of the surgical instrument to the outflow tubing extends through the end effector assembly (¶ 0045).
Links fails to disclose wherein the outflow path of the surgical instrument to the outflow tubing is isolated from the handpiece.
Hamer teaches (fig. 1-4) a surgical instrument (¶ 0001) and thus in the same field of endeavor, the surgical instrument including an end effector assembly (surgical instrument 300) and a handpiece (100), and wherein an outflow fluid path of the surgical instrument to the outflow tubing (suction/aspiration passageway 230) extends through the end effector assembly and is isolated from the handpiece (fig. 1-4, ¶ 0023) in order to allow the handpiece to be cleaned and sterilized for reuse (¶ 0024).
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 handpiece of Links such that the outflow path of the surgical instrument to the outflow tubing is isolated from the handpiece, as taught by Hamer, in order to allow the handpiece to be cleaned and sterilized for reuse (Hamer ¶ 0024).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Raney et al. (Pub. No.: US 2010/0280435 A1) discloses a surgical system comprising a valve and collection module. Kato (Pub. No.: US 2017/0087012 A1) discloses a surgical system comprising a module dock.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MEAGAN NGO whose telephone number is (571)270-1586. The examiner can normally be reached M - TH 8:00 - 4:00 PT.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sarah Al-Hashimi can be reached at (571) 272-7159. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MEAGAN NGO/Examiner, Art Unit 3781
/PHILIP R WIEST/Primary Examiner, Art Unit 3781