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.
Claims 21-37 are 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. It is noted that claims 21-37 were filed on August 16, 2023 which is after the initial filing date of May 16, 2025.
Claim 21 recites “a controller configured to…determined whether a first mode or a second mode is selected, in response to receipt of the first activation input and a determination that the first mode is selected…in response to receipt of the first activation input and a determination that the second mode is selected…is received” in lines 7-19, which are 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 fails to provide support for a controller that is configured to determine whether a first mode or second mode is selected as those modes are specifically claimed. The specification teaches a controller 810 in paragraph 0058 which can provide energy to plates and/or cutting member to seal and/or electrically cut tissue, however there is no support for receiving a first activation input and determining whether a first mode or a second mode is selected in response to receipt of the first activation input. Furthermore, the specification fails to describe “a first activation input” and what is meant by this recitation.
Claim 21 recites “without providing instructions” in line 15 of the claim. These recitations are 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 31 recites “determine whether the first user input instruction corresponds to a first mode or to a second mode; in response to receipt of the first user input instruction and a determination that the first user input instruction corresponds to the first mode…and in response to receipt of the first user input instruction a determination that the first user input instruction corresponds to the second mode, provide…is received” in lines 1-16, which are 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 fails to provide support for a controller that is configured to determine whether the first user input instruction corresponds to a first mode or to a second mode; in response to receipt of the first user input instruction and a determination that the first user input instruction corresponds to the first mode and in response to receipt of the first user input instruction a determination that the first user input instruction corresponds to the second mode. The specification teaches a controller 810 in paragraph 0058 which can provide energy to plates and/or cutting member to seal and/or electrically cut tissue, however there is no support for receiving a first activation input and determining whether a first mode or a second mode is selected in response to receipt of the first activation input. Furthermore, the specification fails to describe “a first activation input” and what is meant by this recitation.
Claim 31 recites “without providing instructions” in line 12 of the claim. This recitation 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.
Response to Arguments
Applicant's arguments filed September 4, 2025 regarding the 112 (a) rejections have been fully considered but they are not persuasive. Applicant argues on page 10 that the specification provides support for this claimed limitation when the operations are separately controlled base on selective manual actuation and states that in the manual mode each stage can be individually (manually) controlled. However, claim 21 specifically claims that it is the controller that is configured to perform these recitations. Claim 21 specifically states that “a controller configured to… in response to receipt of the first activation input and a determination that the second mode is selected, provide instructions to supply energy to the first and second jaw members to seal tissue grasped between the first and second jaw members without providing instructions to activate the cutting mechanism unless further user input is received.” Therefore, the arguments are not persuasive.
Applicant’s arguments, see page 8, filed September 4, 2025, with respect to the double patenting rejection have been fully considered and are persuasive. The double patenting rejection of June 11, 2025 has been withdrawn.
Applicant’s arguments, see pages 12-13, filed September 4, 2025, with respect to the 102 rejections have been fully considered and are persuasive. The 102 rejection of June 11, 2025 has been withdrawn.
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 SAMANTHA M GOOD whose telephone number is (571)270-7480. The examiner can normally be reached Mon to Wed, 7am to 3pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Linda Dvorak can be reached at 571-272-4764. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/SAMANTHA M GOOD/Examiner, Art Unit 3794
/MICHAEL F PEFFLEY/Primary Examiner, Art Unit 3794
Prosecution Insights