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 .
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.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-5 and 8-12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Timm et al. (US 2013/0267975).
Regarding claim 1, Timm discloses a surgical instrument (see Figs. 16-16A and 104-109A) comprising: a housing (see handle housing segments 5004 and 5006, Figs. 104-105); a first assembly operably coupled to the housing (see switch assembly 5020 and a second switch arrangement 5060, [0546], Figs. 106-109) and including: a first function button pivotably coupled to the housing about a first pivot (see 5062 pivotably coupled to the housing about pivot axis RS-RS, Fig. 105 and 109) and including a first arm on a first side of the first pivot (see right switch 5062, Fig. 109) and a second arm on a second side of the first pivot (see left switch 5066, Fig. 109); and a first circuit supported by the housing and aligned with the first pivot between the first arm and the second arm (see right contact pad 5058 that comprises a portion of the circuit board 5052 and aligned with pivot axis RS-RS; [0548], Fig. 108), the first circuit including a first actuator on the first side of the first pivot (see right contact pad 5058, Fig. 108) and a second actuator on the second side of the first pivot (see left contact pad 5059, Fig. 108); and a second assembly operably coupled to the housing (see first switch arrangement 5030, Figs. 105-109) and including: a second function button pivotably coupled to the housing about a second pivot (see 5020 and 5032 pivotably coupled to the housing via pivot pin 5040; [0543]-[0544], Figs. 105-109); and a second circuit supported by the housing beneath the second function button (see first and second contact pads 5054 and 5056 supported by the housing beneath the buttons, [0544], Fig. 105-106).
Regarding claim 2, Timm further discloses wherein the first pivot defines a longitudinal axis that is parallel to a longitudinal axis of the housing such that the first function button is pivotable about the longitudinal axis of the housing (see pivot axis RS-RS being parallel to the longitudinal axis of the housing, Fig. 105 and 109) and wherein the second pivot defines a longitudinal axis that is perpendicular to the longitudinal axis of the housing (see pivot pin 5040 being perpendicular to the longitudinal axis of the housing; [0543]-[0544], Figs. 105-109).
Regarding claim 3, Timm further discloses wherein each of the first actuator and the second actuator of the first circuit is configured to control delivery of electrosurgical cutting energy (see [0545] and [0548]).
Regarding claim 4, Timm further discloses wherein the first pivot includes a longitudinally extending protrusion configured to fit within a corresponding recess defined by the housing (see protrusion of pivot 5007 into the recess shown in Fig. 109A).
Regarding claim 5, Timm further discloses wherein the second pivot includes a longitudinally extending protrusion configured to fit within a corresponding recess defined by the housing (see pivot pin 5040 configured to fit within a corresponding socket in the housing; [0543], Fig. 105).
Regarding claim 8, Timm discloses a surgical system (see Figs. 16-16A and 104-109A) comprising: an electrosurgical generator configured to generate electrosurgical energy (see generator 1002; [0254]-[0255], Fig. 16-17); and a surgical instrument configured to operably couple to the electrosurgical generator (see 1004 and/or 1006, Fig. 16) with Timm further disclosing the additional requirements of claim 8 under the same rationale as that applied to claim 1 above.
Regarding claims 9-12, the claims are rejected under the same rationale as that applied in the rejection of claims 2-5 above.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 6-7 and 13-20 are rejected under 35 U.S.C. 103 as being unpatentable over Timm in view of Bales et al. (US 5,354,291).
Regarding claim 6, Timm discloses the limitations of claim 1, however Timm fails to further disclose a suction and irrigation assembly operably coupled to the housing and including: a dual chamber poppet valve defining a longitudinal axis extending at an angle relative to the longitudinal axis of the housing; an irrigation button operably coupled to a first chamber of the dual chamber poppet valve and extending through an opening defined through a top surface of the housing; and a suction button operably coupled to a second chamber of the dual chamber poppet valve and extending through an opening defined through a top surface of the housing.
Bales teaches an electrosurgical instrument (see Figs. 1a-1b and 13a-13b) comprising a suction and irrigation assembly operably coupled to the housing (see suction and irrigation switches 104 and 106 using the valve arrangement of Figs. 13a-13b, Fig. 1a) and including: a dual chamber poppet valve defining a longitudinal axis extending at an angle relative to the longitudinal axis of the housing (see poppet valve chamber 1320 with a longitudinal axis extending at an angle relative to the longitudinal axis of the housing, see Figs. 1A and 13a-13b); an irrigation button (see 106, Fig. 1a) operably coupled to a first chamber of the dual chamber poppet valve (see col. 25, lines 28-35) and extending through an opening defined through a top surface of the housing (see opening in the surface of the housing for 106 and its stem 1316 considered a top surface since the top of device is a matter of orientation and perspective, Figs. 1b and 13a-13b); and a suction button (see 104, Fig. 1A) operably coupled to a second chamber of the dual chamber poppet valve (see col. 25, lines 28-35) and extending through an opening defined through a top surface of the housing (see opening in the surface of the housing for 104 and its stem 1312 considered a top surface since the top of device is a matter of orientation and perspective, Figs. 1b and 13a-13b). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the housing with a suction and irrigation assembly operably coupled to the housing and including: a dual chamber poppet valve defining a longitudinal axis extending at an angle relative to the longitudinal axis of the housing; an irrigation button operably coupled to a first chamber of the dual chamber poppet valve and extending through an opening defined through a top surface of the housing; and a suction button operably coupled to a second chamber of the dual chamber poppet valve and extending through an opening defined through a top surface of the housing in light of Bales, the motivation being to provide the additional advantage of allowing irrigation and suction to be applied to the surgical site to assist with the cutting and coagulation performed by the instrument in a manner that also prevents leakage out through the trigger mechanism (see Bales col. 25, lines 32-35).
Regarding claim 7, Timm in view of Bales further teaches wherein the irrigation button and the suction button are disposed abreast on the top surface of the housing (see Bales: suction and irrigation buttons 104 and 16 disposed abreast on the top surface of the housing as defined in the rejection of claim 6 above in Figs. 1a and 13a-13b of Bales).
Regarding claims 13-20, Timm in view of Bales further teaches the limitations of claims 13-20 under the same rationale as that applied in the rejections of claims 1-5 and 6-7 above.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: Sandock (US 5,609,573) discloses irrigation and suction buttons disposed on a top surface of an electrosurgical device (see Fig. 1-2).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SEAN W COLLINS whose telephone number is (408)918-7607. The examiner can normally be reached M-F 9:00 AM-5:00 PM ET.
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/SEAN W COLLINS/Primary Examiner, Art Unit 3794