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
This Office action is in response to the applicant’s communication filed on 3/31/2026. Each argument and/or amendment directed towards a maintained rejection is addressed below. Rejections/objections not repeated herein have been withdrawn.
Applicant’s arguments, see pages 12-13, with respect to Applicant’s argument and amendments to the drawings made in view of the previous objections to the drawings have been fully considered and are persuasive. The previous objections to the drawings have been withdrawn.
Applicant’s arguments, see page 13, with respect to Applicant’s claim amendments cancelling one of the two instances of duplicative claim 2 and amending the other of the two instances of duplicative claim 2 have been fully considered and are persuasive. The previous claim objections have been withdrawn.
Applicant’s arguments, see pages 13-14, with respect to Applicant’s claim amendments made in view of the previous 112 rejections have been fully considered and are persuasive. The previous 112 rejections have been withdrawn.
Applicant’s arguments, see pages 14-16, with respect to the deficiencies of the prior art of record in view of the present claim amendments have been fully considered and are persuasive. Therefore, the previous prior art rejections have been withdrawn. However, upon further consideration, a new ground(s) of rejection for independent claim 16 made under Gupta et al. (US 2019/0298401) is set forth below.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 16-20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 16 (and thereby dependent claims 17-20), the phrase "an overall concave contour" in lines 24-25 renders the claim indefinite because “an overall concave contour” was already introduced in line 9 of claim 16, thereby rendering the scope of the claims ambiguous and/or uncertain. It is unclear whether Applicant intended to refer back to the “overall concave contour” of line 9 or introduce a new, additional concave contour. To move prosecution forward, the Examiner assumed Applicant intended to refer back to the concave contour of line 9. Appropriate correction is required.
Regarding claim 17 (and thereby dependent claim 18), the phrase " the distance of the tissue-engaging surface from the outer surface of the first jaw increases from the proximal end to the distal end of the first jaw" thereby rendering the scope of the claims ambiguous and/or uncertain. Claim 16 requires the tissue-engaging surfaces of at least one jaw to define an overall concave contour, whereas claim 17 appears to require a linear configuration as the distance (i.e., vertical height of the teeth) increases in the distal direction (i.e., appears to be linear and not providing a concave contour). Appropriate correction and/or clarification is required.
Regarding claim 18, the phrase "an overall concave contour" in lines 6-7 renders the claim indefinite because “an overall concave contour” was already introduced in line 9 of claim 16, thereby rendering the scope of the claims ambiguous and/or uncertain. It is unclear whether Applicant intended to refer back to the “overall concave contour” of claim 16 (line 9) or introduce a new, additional concave contour. To move prosecution forward, the Examiner assumed Applicant intended to refer back to the concave contour of claim 16. Appropriate correction is required.
Claim Rejections - 35 USC § 102
Claims 16 and 19-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Gupta et al. (US 2019/0298401).
Gupta discloses (see Figs. 9A-11B) an end effector of a grasping system comprising the following claim limitations:
(claim 16) A method of forming an end effector (905, Figs. 10A-10B) having a first jaw (905a, Fig. 9B) and a second jaw (905b, Fig. 9B) movable with respect to each other (as shown between Figs. 10A-10B), said method comprising: forming a first jaw and a second jaw from a rod or wire formed of a shape-memory material (see claim 4; [0007]; [0068]; [0072]-[0074]; unitary piece of shape-memory material having jaws cut therefrom expressly disclosed), each of the first jaw and the second jaw having a proximal end and a distal end (as shown in Figs. 9A-10B); contouring a tissue-engaging surface (945, Fig. 9B) of at least the first jaw (905a) of the end effector (905) independently of an outer surface (950, Fig. 9B) of the first jaw (905a) of the end effector (905) (as shown in Figs. 9A-10B; inner and outer arm surfaces contoured independently/differently); contouring at least one of the said jaws to define a tissue-engaging surface (945) from the proximal end (at 930, Fig. 9B) to the distal end (935, Fig. 9B) with an overall concave contour extending between the proximal end and the distal end to capture tissue between the distal and proximal ends of the said jaws so that the tissue-engaging surface (945) at distal-most ends of the jaws are closer to each other than proximally adjacent tissue-engaging surfaces, and the tissue-engaging surfaces at the proximal-most ends of the jaws are closer together than distally adjacent tissue-engaging surfaces of the jaws (as expressly shown in annotated Fig. 10B below); and coupling the proximal end of the first jaw (905a) to the proximal end of the second jaw (905b) with the tissue-engaging surface of the first jaw facing a tissue-engaging surface of the second jaw (as shown in Figs 9A-10B), wherein so that the distal ends of the first jaw and the second jaw are movable between an open configuration in which the distal ends of the first jaw and the second jaw and the tissue-engaging surfaces of the first and second jaws are spaced apart to allow tissue (1105) to be positioned therebetween the first jaw and the second jaw (as expressly shown in Figs. 10A and 11A-11B), and a closed configuration in which the tissue-engaging surfaces engage capture tissue (1105) positioned therebetween between the distal ends and the proximal ends of the first and second jaws (as expressly shown in Figs. 10B-11B); wherein contouring of the tissue-engaging surface (945) comprises designing an overall concave contour from a distal-most end (935) of the at least one jaw proximally along tissue-engaging surfaces (945) which are increasingly further apart, in a distal to proximal direction, and to proximal-most ends (930) of the tissue-engaging surfaces (945) which are closer together than distally adjacent tissue-engaging surfaces to distribute forces evenly across tissue grasped between the first jaw (905a) and the second jaw (905b) as the distal proximal ends of the first and second jaws move from the open configuration (Fig. 10A) to the closed configuration (Fig. 10B) with tissue (1105) positioned between the first jaw and the second jaw (see annotated Fig. 10B below, and as expressly shown in Figs. 11A-11B; [0067]-[0068]; [0071]-[0072]; [0074]; concave contour of the inner surface of jaw for grasping tissue without damaging or perforating the tissue is expressly disclosed);
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(claim 19) further comprising contouring the tissue-engaging surfaces (945) of at least the first jaw (905a) to form a generally concave tissue engaging surface (i.e., arc 940 of the projections 955) from the distal end (935) to the proximal end (930) of the first jaw (905a), without contouring the outer surface (950) of the first jaw (905a) (as shown in Fig. 9B; concave contour of the tissue-contacting surface of projections/teeth 955 expressly shown on the inner surface 945, but outer surface 950 expressly shown lacking a concave contour of projections 955); and
(claim 20) further comprising forming the first jaw (905a) and the second jaw (905b) by cutting a rod from a distal end (935) thereof toward a proximal end (930) thereof, the cut defining the tissue-engaging surfaces (945) of the first jaw (905a) and the second jaw (905b) (see claim 4; [0007]; [0068]; [0072]-[0074]; unitary piece of shape-memory material having jaws cut therefrom expressly disclosed).
Allowable Subject Matter
Claims 1-15 are allowed.
The following is an examiner’s statement of reasons for allowance: the art of record does not teach or render obvious a end effector and a system for grasping tissue as claimed that includes, in combination with the claim(s) as a whole, wherein the distance between the tissue-engaging surface of said first jaw and the tissue-engaging surface of said second jaw increases from the distal-most ends of said jaws in a direction toward the proximal ends of said jaws to distribute forces evenly across tissue grasped between said jaws, and decreases at the proximal-most ends of said jaws, whereby the tissue-engaging surface of each of said jaws defines an overall concave contour; and the plurality of spaced apart projections on each of said first jaw and said second jaw are longer at the distal-most ends of said first jaw and said second jaw than between the distal-most and proximal-most ends of said first jaw and said second jaw to account for the increasing distance between the tissue-engaging surface of said jaws in a direction from the distal-most ends toward the proximal ends of said jaws to apply the forces evenly across the tissue. The closest prior art appears to be Gupta et al. (US 2019/0298401) disclosing a similar end effector system, but failing to disclose or teach tissue-contacting tooth surfaces forming a concave contour on each inner jaw by means of the length/height of each tooth creating the concave contour as opposed to each jaw alone providing the concave contour and having uniform teeth (as disclosed in Gupta).
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
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 Robert Lynch whose telephone number is (571)270-3952. The examiner can normally be reached on Monday-Friday (9:00AM-6:00PM, with alternate Fridays off).
If attempts to reach the examiner by telephone are unsuccessful, please contact the examiner’s supervisor, Elizabeth Houston, 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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/ROBERT A LYNCH/Primary Examiner, Art Unit 3771
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