DETAILED ACTION
Previous Action Withdrawn
The Office action mailed 03/12/2026 has been vacated/withdrawn.
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 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.
Claim 32 is 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.
Claim 32 recites the limitation “the first fully articulated position” in line 4 and “the second fully articulated position” in line 7. There is insufficient antecedent basis for these limitations in the claims. For examination purposes “the first fully articulated position” and “the second fully articulated position” have been interpreted as “a first fully articulated position” and “a second fully articulated position,” respectively.
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 18-24 and 26-37 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Shelton et al. (US 2021/0196266 A1).
Regarding claims 18, 33, and 36, Shelton discloses a surgical instrument (see Fig. 25-27), comprising: a shaft (2510) that defines a central longitudinal axis; an end effector (2520), comprising: a first jaw; a second jaw; and a longitudinal channel is configured to accommodate a staple cartridge (although the end effector is not shown in Fig. 25-27, Shelton discloses that the end effector can be comprised of a first jaw, second jaw, and a staple cartridge inserted into the first jaw, see [0531]); an articulation joint assembly (2530) extending between the shaft and the end effector, wherein the end effector extends along the central longitudinal axis in an unarticulated position (see Fig. 27), and wherein the end effector is articulatable about an articulation joint toward a fully articulated position on a first side of the unarticulated position (the end effector 2520 is movable about the joint at AA to the articulated positions shown in Fig. 25 and 26 on either side of the unarticulated position of Fig. 27); and a flex circuit (2540) to transmit at least one of data or power through the articulation joint (the flex circuit can transmit power or data, see [0633]), wherein the flex circuit is offset from the central longitudinal axis (see Fig. 25-27), and wherein the flex circuit comprises: a proximal flex-circuit portion positioned in the shaft (there is a proximal portion of the circuit positioned in the shaft 2510, see Fig. 25 and also [0584]); a distal flex-circuit portion positioned in the end effector (there is a distal portion of the circuit positioned in the end effector 2520, see Fig. 25 and also [0584]); and an intermediate flex-circuit portion (pre-bent section 2541) positioned in a cavity defined by the articulation joint assembly, wherein the intermediate flex-circuit portion maintains a relaxed curved state with an unchanged effective length as the end effector is articulated toward the fully articulated position (the pre-bent section permits slack in the flex circuit thereby preventing strain and allowing it to maintain a relaxed curved state with an unchanged effective length as the end effector moves between the articulated and unarticulated positions, see [0584]). Further regarding claims 33 and 36, Shelton discloses the intermediate flex-circuit portion remains folded and unstretched as the end effector is articulated toward the fully articulated position, without pulling on the proximal flex-circuit portion or the distal flex-circuit portion (pre-bent section 2541 remains folded through the various articulated positions and because it is folded, it permits slack, preventing any strain or the circuit proximal or distal of the bent section, see [0584]).
Regarding claims 19, 34, and 37, Shelton further discloses the intermediate flex-circuit portion comprises: a first curvature in the unarticulated position; and a second curvature in the fully articulated position, wherein the intermediate flex-circuit portion is to transition from the first curvature toward the second curvature as the end effector is articulated toward the fully articulated position (the pre-bent section 2541 is made of multiple bends, defining curvatures that shift as the end effector 2520 moves between the unarticulated position of Fig. 27 and the articulated positions of Fig. 25 and 26).
Regarding claim 20, Shelton discloses the surgical instrument of Claim 19, wherein the intermediate flex-circuit portion is to transition toward the first curvature as the end effector is articulated toward the unarticulated position (the various curvatures of the pre-bent section return to their original positions as the end effector moves from the articulated positions to the unarticulated position, see [0585] and Fig. 25-27).
Regarding claim 21, Shelton discloses the surgical instrument of Claim 18, wherein the longitudinal channel comprises a side wall, and wherein the distal flex-circuit portion is fixed to the side wall (flex circuit 2540 can have a fixed attachment point within the end effector 2520, see [0584]).
Regarding claims 22 and 35, Shelton discloses the surgical instrument of Claim 18, wherein the flex circuit defines a thickness; and a width greater than the thickness (although the width of the flex circuit 2540 is not shown in Fig. 25-27, it is understood from the disclosure that the width of the circuit is greater than thickness as shown in Fig. 19-23), wherein the intermediate flex-circuit portion is formed by folding the flex circuit about an axis extending along the width (the flex circuit is folded about an axis going into an out of the page of Fig. 25-27 which would extend along the width direction of the circuit).
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Regarding claim 23, Shelton discloses the surgical instrument of Claim 18, wherein the flex circuit defines: a thickness; and a width greater than the thickness, wherein the intermediate flex-circuit portion defines a first radius of curvature in the unarticulated position, and wherein the intermediate flex-circuit portion defines a second radius of curvature, different than the first radius of curvature, in the fully articulated position (the pre-bent section 2541 is made of multiple bends, defining curvatures that shift as the end effector 2520 moves between the unarticulated position of Fig. 27 and the articulated positions of Fig. 25 and 26; for example, the radius of curvature of the bend shown in annotated Fig. 25 above, is different in each of the positions shown in Fig. 25-27).
Regarding claim 24, Shelton discloses the surgical instrument of Claim 23, wherein the first radius of curvature and the second radius of curvature extend along the thickness (each of the bends in the pre-bent section 2541 extend in the thickness direction, see Fig. 25).
Regarding claim 26, Shelton discloses the surgical instrument of Claim 18, wherein the intermediate flex-circuit portion moves deeper into the cavity as the end effector is articulated from the unarticulated position toward the fully articulated position (the pre-bent section 2541 moves further into the space proximal of the articulation joint at AA when the end effector moves from the unarticulated position shown in Fig. 27 to the articulated position shown in Fig. 25).
Regarding claim 27, Shelton discloses the surgical instrument of Claim 18, wherein the articulation joint assembly comprises the articulation joint (articulation joint at AA, see Fig. 25), and wherein the cavity is proximal to the articulation joint (there is a cavity proximal of the joint at AA in which the pre-bent section 2541 is accommodated, see Fig. 25-27).
Regarding claim 28, Shelton discloses the surgical instrument of Claim 18, further comprising a drive shaft (2531), wherein the cavity extends laterally across the drive shaft (the drive shaft is partially accommodated in the cavity and therefore the cavity extends laterally across the drive shaft, see Fig. 25-27).
Regarding claim 29, Shelton discloses the surgical instrument of Claim 18, wherein the intermediate flex-circuit portion moves toward a drive shaft as the end effector is articulated from the unarticulated position toward the fully articulated position (pre-bent section 2541 moves closer to the drive shaft 2531 as the end effector moves from the unarticulated position of Fig. 27 and the articulated position of Fig. 25).
Regarding claim 30, Shelton discloses the surgical instrument of Claim 18, wherein the fully articulated position is a first fully articulated position (the position of Fig. 25 can be considered a first articulated position), and wherein the end effector is articulatable about the articulation joint toward a second fully articulated position on a second side of the unarticulated position opposite the first side (the position of Fig. 26 can be considered a second articulated position which is positioned on a second side of the unarticulated position of Fig. 27 which is opposite the first side).
Regarding claim 31, Shelton discloses the surgical instrument of Claim 30, wherein the intermediate flex-circuit portion extends through a predefined passageway defined in the articulation joint assembly, and wherein the intermediate flex-circuit portion is longer than the predefined passageway (pre-bent section 2541 is bent such that its overall length is greater than the passageway through which it extends, see Fig. 27).
Regarding claim 32, Shelton discloses the surgical instrument of Claim 18, wherein the intermediate flex-circuit portion defines: a first curvature in the unarticulated position; a second curvature in the first fully articulated position, wherein the intermediate flex- circuit portion is to transition from the first curvature toward the second curvature as the end effector is articulated toward a first fully articulated position; and a third curvature in a second fully articulated position, wherein the first curvature and the second curvature are different than the third curvature (the pre-bent section 2541 is made of multiple bends, defining curvatures that shift as the end effector 2520 moves between the unarticulated position of Fig. 27 and the articulated positions of Fig. 25 and 26; the radius of curvature of the bend shown in annotated Fig. 25 above, is different in each of the positions shown in Fig. 25-27).
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.
Claim 25 is rejected under 35 U.S.C. 103 as being unpatentable over Shelton et al. (US 2021/0196266 A1).
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Regarding claim 25, Shelton discloses the surgical instrument of Claim 24, wherein the first radius of curvature is less than the second radius of curvature (the bend shown in annotated Fig. 25 and 27 above has a first radius of curvature in the unarticulated position of Fig. 27 and a second radius of curvature in the articulated position of Fig. 25, which is greater than the first radius of curvature).
Shelton fails to expressly teach the second radius of curvature is greater than or equal to double the thickness.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to cause the second radius of curvature of Shelton to be greater than or equal to double the thickness since it has been held that “where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device” Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 SPQ 232 (1984). In the instant case, the device of Shelton would not operate differently with the claimed diameter and would function appropriately having the dimensions. Further, applicant places no criticality on the range claimed, indicating simply that the second radius of curvature is within the claimed range (see Specification [0043] and [0060]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SERENITY MILLER whose telephone number is (571)272-1155. The examiner can normally be reached Monday-Friday 8:00am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Elizabeth Houston can be reached 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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/SERENITY A MILLER/Examiner, Art Unit 3771
/ELIZABETH HOUSTON/Supervisory Patent Examiner, Art Unit 3771
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