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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 February 20, 2026 has been entered.
Response to Arguments
Applicant's arguments filed February 6, 2026 have been fully considered but they are not persuasive.
In response to applicant’s arguments that the amendment labels the biasing mechanisms to connect already existing text in the specification with the already existing depiction in the drawings, the drawings are not sufficiently clear as originally filed to show that the identified structure by the reference members are biasing members and that they would be located in this specific position. The amended drawings do not clearly show the structure in which the new reference numbers indicate. The newly added reference numbers point to a general space where the lines of the drawings do not clearly define a structure. Although the specification discloses the biasing mechanism separating the end effect element and its tine, the biasing mechanism could be further distal or further proximal from the indication shown or even between the driving elements and the end effector, since the driving elements are also between the end effectors and the corresponding tine. Therefore, the more specific arrangement shown in the newly amended drawings and specification than that which was originally filed introduces new matter into the claims since the specification and drawings were not described with sufficient specificity 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 invention specifically shown. It is noted that the claims are fully supported by the specification, however, claimed subject matter must be shown in the drawings.
In response to applicant’s arguments with respect to the claims, the arguments are not persuasive in view of the rejection set forth below addressing the amendments to the claims.
Drawings
The drawings and specification were received on July 8, 2025. These amendments are not entered. The examiner maintains that the drawings introduce new matter. Although the drawings identify a structure as a pair of biasing mechanisms using newly added reference numbers 254 and 448, this amendment adds new matter into the disclosure since the original drawings and specification did not disclose these particular structures as being the pair of biasing mechanisms. Nothing in in the original specification limits the pair of biasing mechanisms to this specific arrangement in the drawings. Therefore, the drawings contain subject matter which is more specific and was not described in the specification specific enough 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 this specific arrangement shown in the drawings.
Claim Rejections - 35 USC § 102
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 (i.e., changing from AIA to pre-AIA ) 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.
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.
Claims 1-3, 6-17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Simi et al (US 20180250085).
Regarding claim 1, Simi et al (hereafter Simi) discloses a robotic surgical instrument comprising: an end effector (70) with opposing first and second end effector elements (77, 73), each end effector element comprising a first portion (86) for enabling rotation of that end effector element about a respective joint and a second portion (blades) adjoining the first portion at a location, the second portion having an inner surface configured to interface with a corresponding surface of the opposing end effector element; and an exterior surface located on an opposite side of the end effector element to the inner surface of the end effector element, and an articulation comprising: a first joint (79, figure 25, see image below) permitting rotation of the first end effector element about a first axis, the first joint being drivable by a first pair of driving elements (90, 190, 191, 192); a second joint (79, figure 18, see image below) permitting rotation of the second end effector element about a second axis, the second joint being drivable independently from the first joint by a second pair of driving elements (paragraph 0198, 0434); and a supporting body (73, 78) comprising opposing first and second tines (see image below) within which the first portions of the first and second end effector elements are permitted to rotate; wherein the first portion of the first end effector element is closer to the first tine than the second tine, and at the location where the second portion of the first end effector element adjoins the first portion of the first end effector element, the second portion of the first end effector element is closer to the second tine than the first tine (figure 25, see image below) and the exterior surface of the second portion of the first end effector element faces a plane containing the second tine (See image below).
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Regarding claim 2, Simi discloses all of the limitations set forth in claim 1, wherein the first portion of the second end effector element is closer to the second tine than the first tine, and at a location where the second portion of the second end effector element adjoins the first portion of the first end effector element, the second portion of the first end effector element is closer to the first tine than the second tine (see image above).
Regarding claim 3, Simi discloses all of the limitations set forth in claim 1, wherein the first end effector element and the second end effector element are independently rotatable about the first and second axes (paragraph 0198, 0434).
Regarding claim 12, Simi discloses all of the limitations set forth in claim 1, further comprising a shaft (65), wherein the articulation connects the end effector to the shaft via the first and second joints (figures 25-27).
Regarding claim 13, Simi discloses all of the limitations set forth in claim 12, wherein the first tine and the second tine extend in a direction that is parallel to the longitudinal axis of the shaft (figures 25-27).
Regarding claim 14, Simi discloses all of the limitations set forth in claim 1, wherein the first axis and the second axis are the same axis (figure 15A, Y-Y).
Regarding claim 15, Simi discloses all of the limitations set forth in claim 1, wherein the first and second end effector elements are first and second jaws of an end effector (figure 25).
Regarding claim 16, Simi discloses all of the limitations set forth in claim 1, wherein the end effector element is a pair of scissors (paragraph 0235, figure 25).
Regarding claim 17, Simi discloses all of the limitations set forth in claim 1, wherein the robotic surgical instrument is configured to be connected to a surgical robot (100).
Claim Rejections - 35 USC § 103
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 (i.e., changing from AIA to pre-AIA ) 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.
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 4 is rejected under 35 U.S.C. 103 as being unpatentable over Simi et al (US 20180250085) as applied to claim 1 above, and further in view of Crew et al (US 20190105032).
Regarding claim 4, Simi discloses all of the limitations set forth in claim 1, but does not disclose the end effector further comprises a pair of biasing mechanisms, where each biasing mechanism acts as a spacer between the first or second end effector element and the first or second tine. However, Crew et al (hereafter Crew) teaches an end effector with first and second end effector elements, wherein it was known in the art at the time of the invention to include a pair of biasing mechanisms to act as a spacer between the first and second end effector elements and the first or second tine (paragraph 0063) in order to maintain the first portions in forcible engagement with one another. Therefore, it would have been within the level of one with ordinary skill in the art at the time of the invention to include a pair of biasing mechanisms as a spacer between the first or second end effector element and the first or second tine, as taught as known in the art by Crew, in order to maintain the first portions in forcible engagement with one another.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Simi et al (US 20180250085) as applied to claim 1 above.
Regarding claim 5, Simi discloses all of the limitations set forth in claim 1, wherein the first and second joints is a cylindrical pin (76), and wherein the first tine comprises a recess for housing the first joint and the second tine comprises a recess for housing the second joint (79, figure 18). It further would have been within the level of one with ordinary skill in the art at the time of the invention to make the cylindrical pin (76) of Simi comprise two separate cylindrical pins, since it has been held since it has been held that constructing a formerly integral structure in various elements involves only routine skill in the art. Nerwin v. Erlichman, 168 USPQ 177, 179.
Allowable Subject Matter
Claims 6-11 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: Although the prior art teaches a end effector with an exterior surface of the first portion of the first end effector element faces a plane comprising the first tine, and an exterior surface of the second portion of the first end effector element faces a plane containing the second tine; and an exterior surface of the first portion of the second end effector element faces a plane containing the second tine, and an exterior surface of the second portion of the second end effector element faces a plane containing the first tine (see previous office action), the prior art does not teach or suggest the combination of these limitations with those in claim 1, wherein each end effector element further has an inner surface configured to interface with a corresponding surface of the opposing end effector element; and an exterior surface located on an opposite side of the end effector element to the inner surface of the end effector element, wherein the exterior surface of the second portion of the first end effector element faces a plane containing the second tine. Therefore, the claims have not been rejected over the body of prior art because there is no suggestion, teaching, or motivation to produce the claimed invention.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANH TIEU DANG whose telephone number is (571)270-3221. The examiner can normally be reached Monday-Thursday (9am-4pm EST).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Darwin Erezo can be reached at (571) 272-4695. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANH T DANG/Primary Examiner, Art Unit 3771