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 and Amendment Filed
Applicant’s response and amendment, filed November 20, 2025, have been entered and made of record. Accordingly, the status of the claims is as follows: Claims 1 and 2 are amended; claims 3-7 remain as originally presented; claim 8 is canceled; claims 9-21 are newly presented.
Previously Set Forth Rejections
The 35 USC 112(b) rejection of claim 8 as set forth in the previous Office action has been overcome by the cancellation of claim 8.
The 35 USC 102(a)(2) rejection of claims 1-7 as being anticipated by Aldridge et al. (U.S. Patent No. 11,324,527) is hereby withdrawn.
The 35 USC 103 rejection of claim 8 as being unpatentable over Aldridge et al. (U.S. Patent No. 11,324,527) in view of Hood (U.S. Patent No. 6,254,622) is hereby withdrawn.
The following new objections and grounds of rejection are set forth:
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the linear surfaces recited in claims 20 and 21 and the symmetric about a plane that intersects a longitudinal axis x-x recited in claim 19 must be shown or the feature(s) canceled from the claim(s). No new matter should be entered. It is understood that Figures 7A and 7B appear to show the linear surfaces but they are neither labeled in the Figures nor described in the specification. The Figures do not show a longitudinal axis x-x nor does the specification describe that the hooked portion and the notch are symmetric about a plane.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required: The linear surfaces recited in claims 20 and 21 are not described in the specification (but are shown, unlabeled, in the Figures as noted above). Also, the hooked portion and notch being symmetric about a plane that intersects a longitudinal axis x-x recited in claim 19 is not described in the specification. This feature is not shown in the Figures. As such, Applicant is cautioned against the introduction of new matter not supported by the original disclosure.
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 19 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.
As noted above, the hooked portion and notch being symmetric about a plane that intersects a longitudinal axis x-x recited in claim 19 is not described in the specification. As such, these recitations in claim 19 constitute new matter.
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.
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 1-7 and 9-21 is/are rejected under 35 U.S.C. 103 as being obvious over Aldridge et al. (U.S. Patent No. 11,324,527) in view of Van Tol et al. (U.S. Patent No. 9,872,698).
The applied reference has a common assignee with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2).
This rejection under 35 U.S.C. 103 might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C.102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B); or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement. See generally MPEP § 717.02.
In regard to claims 1-3, 10, Aldridge et al. teach an ultrasonic surgical instrument 12 comprised of a handle assembly 12, an elongated shaft assembly 14, an ultrasonic transducer 16 and an end effector assembly 26 at the distal end of the elongated shaft assembly 14 (see Fig. 107). The ultrasonic transducer 16 is mechanically engaged to the elongated shaft assembly 14 and portions of the end effector assembly 25 and is electrically coupled to a generator 20 via cable 22 (see col. 14, lines 55-59). The generator 20 has an ultrasonic generator module 21 and an RF generator module 23 where the RF generator module 23 may be capable of supplying power to perform either bipolar or monopolar surgery (see col. 15, lines 4-51). The ultrasonic generator module 21 and the RF generator module 23 may be activated simultaneously where the ultrasonic blade cuts and coagulates tissue (see col. 16, lines 48-67). The end effector assembly 26 includes a clamp arm assembly 64 (jaw member) and an ultrasonic blade 66 where the blade 66 is acoustically coupled to the ultrasonic transducer 16 (see Figs. 108-110 and col. 21, lines 13-19). Squeezing a trigger 32 in direction 33A moves the clamp arm assembly 64 in direction 62A from an open position, where the clamp arm assembly 64 and the blade 66 are disposed in a spaced relationship, to a clamped or closed position, where the clamp arm assembly 64 and the blade 66 cooperate to grasp tissue therebetween (see col. 21, lines 23-28). The clamp arm assembly 64 includes a clamp pad 69 (jaw liner) to engage tissue between the blade 66 and the clamp arm 64 (see col. 21, lines 29-31 and Figs. 108-110). Aldridge et al. teach various shapes for the distal tip of the blade 66, including a rounded distal tip (see Fig. 110) and a pointed edge facing away from the longitudinal axis of the blade 66 (see Figs. 115A-115D). Aldridge et al. do not teach that the blade has a distal tip with a hooked portion defining a notch at a proximal side of the hooked portion wherein the proximal side of the distal tip includes a sharp edge facing an inner area of the notch. However, Van Tol et al. teach a similar ultrasonic surgical instrument 10 with an ultrasonic blade 90 having a distal portion 292 that is used to dissect and seal tissue (see Fig. 5C and col. 4, lines 3-27). Distal portion 292 includes a hooked portion defining a notch 296b at a proximal side of the hooked portion where the hooked portion and the notch are symmetric about a plane that intersects a longitudinal axis (see Figs. 5C and 6C). The bottom portion of the hook is linear and a vertical distal surface 296a facing an inner area of the notch 296b is sharpened (see Fig. 5C and col. 5, lines 13-33). Van Tol et al. thus demonstrate that ultrasonic blades having hooked portions with a notch are well known in the art for the purpose of enhancing the dissecting ability of the blade. Accordingly, it would have been obvious for one of ordinary skill in the art at the effective filing date of the invention to replace the blade 66 of Aldridge et al. with the blade 90 of Van Tol et al. in order to equip the device with the ability to more effective dissect tissue.
In regard to claims 4-7 and 12-17, Aldridge et al. teach coating of the ultrasonic blade 5100 with an electrically insulative material 5102 to provide thermal insulation at the tissue contact area and to minimize adhesion of tissue to the blade 5100 (non-stick) (see Figs. 80-83 and col. 47, lines 29-32). Aldridge et al. disclose a lubricious coating 5102 similar to Teflon (see col. 47, lines 54-56). Aldridge et al. also teach that the blades may be partially coated (see Figs. 84-93) with coated portions 5202 and non-coated portions 5204 with a portion of the distal tip of the blade exposed to properly direct RF energy (see col. 48, lines 3-24). In regard to claim 9, Figure 5A of Van Tol et al. shows that the distal portion 92 of blade 90 extends out from an envelope of the blade 90 (e.g., it has the same diameter). In regard to claim 11, see col. 4, lines 35-42 of Van Tol et al. In regard to claim 18, see col. 17, lines 19-23 of Aldridge et al. In regard to claim 20, Figure 5C of Van Tol et al. shows that the hooked portion has a proximal-facing surface and a distal-facing surface that are connected by a linear surface. In regard to claim 21, Figure 5C of Van Tol et al. shows that the notch 296b is defined by a proximal-facing surface of the hooked portion and that that surface is linear.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-7 and 9-21 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument. Specifically, Van Tol et al. is applied to teach the hooked portion and notch.
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 BEVERLY MEINDL FLANAGAN whose telephone number is (571)272-4766. The examiner can normally be reached Mon-Fri 7:30AM to 5:00PM.
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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.
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/BEVERLY M FLANAGAN/Primary Examiner, Art Unit 3794
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