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 .
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.
Claim 25 is 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 25 recites “wherein the controller is configured to provide a fourth signal to a motor output module to activate a motor configured to advance the knife between the first and second jaw members”, which is 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. The specification as originally filed teaches an automatic versus manual mode throughout the specification, however fails to teach a specific fourth signal which advances the knife compared to the previously recited second signal which supplies energy to the cutting mechanism. Stated differently the specification as originally filed fails to teach multiple signals for cutting the tissue.
Claim Rejections - 35 USC § 102
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 21, 24-27, 31, 34-37 and 41-46 are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Houser et al (2012/0116391).
Referring to claims 21 and 31, Houser et al teaches a surgical system and corresponding surgical controller, comprising: an end effector assembly (80) including first and second jaw members (406/408) and a cutting mechanism (410) (paragraph 0069; Figures 4-5B), at least one of the first or second jaw members movable relative to the other of the first or second jaw members between a spaced-apart position and an approximated position for grasping tissue between the first and second jaw members (paragraphs 0075-0076); an activation switch or a toggle member (604 or 609) configured to select a first mode or a second mode; and a controller (1000) in an electrosurgical generator or an onboard controller, wherein when the first mode is selected (via 604), the controller provides a first signal to supply energy to the first and second jaw members to seal tissue grasped between the first and second jaw members, and the controller provides a second signal to supply energy to the cutting mechanism to cut sealed tissue grasped between the first and second jaw members (paragraph 0109), and wherein when the second mode is selected (via 609), the controller provides a third signal to supply energy to the first and second jaw members to seal tissue grasped between the first and second jaw members, and the cutting mechanism is selectively controlled by a user-activated control to cut sealed tissue grasped between the first and second jaw members (paragraph 0104 and paragraphs 0095-0111; Figures 4-7).
Referring to claims 24, 25, 34 and 35, Houser et al teaches wherein the cutting mechanism includes a knife (410) selectively advanceable between the first and second jaw members to cut the sealed tissue grasped between the first and second jaw members (paragraphs 0069 and 0075-0076) wherein the controller is configured to provide a fourth signal to a motor output module to activate a motor configured to advance the knife between the first and second jaw members (paragraphs 0109 and paragraphs 0095-0111; Figures 4-7).
Referring to claims 26 and 27, Houser et al teaches wherein the cutting mechanism includes an energy based cutting member disposed one of the first and second jaw members and wherein the electrosurgical generator is electrically coupled to the energy-based cutting member, and wherein the controller is configured to provide the second signal to the electrosurgical generator to activate the energy-based cutting mechanism and one or more of the first and second jaw members (paragraphs 0069, 0758-0076 and 0095-0111; Figures 4-7). These recitations do not specify what type of energy is used to cut the tissue.
Referring to claim 41, Houser et al teaches a motor assembly (620) operably coupled to the at least one of the first or second jaw members, wherein the motor assembly is configured to move the first and second jaw members between the spaced-apart position and the approximated position (paragraph 0110).
Referring to claims 36 and 42, Houser et al teaches wherein, when the first mode is selected, the controller, based on an indication (via 606) that tissue is present and sufficiently positioned between the first and second jaw members, provides a signal to activate the motor assembly to move the at least one of the first or second jaw members from the spaced-apart position to the approximated position to grasp tissue between the first and second jaw members prior to providing the first signal to supply energy to the first and second jaw members to seal tissue grasped between the first and second jaw members (paragraphs 0095-0111; Figure 7).
Referring to claims 37 and 43, Houser et al teaches the controller is configured to provide a fourth signal to the motor assembly to move the at least one of the first or second jaw members from the approximated position to the spaced-apart position after at least one of: the sealing and cutting of tissue in the first mode or the sealing of tissue in the second mode (paragraphs 0107 and 0109)
Referring to claims 44 and 45, Houser et al teaches when the first mode is selected, the controller, once an effective tissue seal has been established, signals at least one of a power source to supply energy to the cutting mechanism to cut sealed tissue (paragraph 0109).
Referring to claim 46, Houser et al teaches wherein the processor is further coupled to a sensor module for receiving feedback signals from the sensor module to perform feedback-based control of the first and second jaw members (paragraphs 0112-0116).
Response to Arguments
Applicant’s amendments and arguments, see pages 7-8, filed February 23, 2026, with respect to the 112(a) rejection of December 29, 2025 have been fully considered and are persuasive. The 112(a) rejection of December 29, 2025 has been withdrawn. However, as substantial amendments were made to overcome the previous 112(a) rejection new rejections have been made.
Conclusion
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/SAMANTHA M GOOD/Examiner, Art Unit 3794
/MICHAEL F PEFFLEY/Primary Examiner, Art Unit 3794
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