DETAILED ACTION
The following Office Action is in response to the Amendment filed on May 6, 2026. Claims 1-20 are currently pending.
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 Amendment
Concerning the “Claim Rejections – 35 USC § 112” section on page 11 of the Applicant’s Response filed on May 6, 2026, the amendment to claims 1, 10, and 11 have obviated the necessity of the rejections of the claims under 35 U.S.C. §112(b). Therefore, the rejections are withdrawn.
Response to Arguments
Concerning the “Claim Rejections – 35 USC § 102” section on pages 11-13 of the Applicant’s Response filed on May 6, 2026, the applicant’s arguments have been fully considered, but they are not persuasive. The applicant argues that the Prestel reference does not teach the added limitations of “when the first blade part and the second blade part are operated in the opening direction, a plurality of rotational moments respectively apply a plurality of forces to the first blade part and the second blade part in directions away from each other and orthogonal to the opening direction” or “when the first blade part and the second blade part are operated in the closing direction, a plurality of rotational moments respectively apply a plurality of forces to the first blade part and the second blade part in directions to contact with each other and orthogonal to the closing direction”, arguing that the Prestel only teaches tension applied to the wires to generate torque. However, the examiner asserts that the Specification of the Instant Application discloses that the plurality of rotational moments applying the orthogonal movements as claimed are created due the first opening pulley being positioned closer to a first blade part side than the second blade part side with respect to the first closing pulley in a direction orthogonal to the opening and closing direction and the second opening pulley is positioned closer to a second blade part side than the first blade part with respect to the second closing pulley in the direction orthogonal to the opening and closing direction, wherein given this specific positioning of the first and second opening and closing pulleys relative to the first and second blade part sides is also taught in the Prestel reference, the surgical instrument of the Prestel reference will inherently operate in the same manner.
It has been held that a rejection under 35 U.S.C. §102 can be made when the prior art product seems to be identical except that the prior art is silent as to an inherent characteristic [MPEP 2112 (III)]. In the instant case, the Prestel reference has the identical structure as that of the claimed invention with regards to the positionings of the first and second opening and closing pulleys relative to the first and second blade part sides, but is silent as to the plurality of rotational moments applying the claimed forces. However, if rotational moments apply forces to the first and second blade parts in directions away from each other and orthogonal to the opening and closing directions as a result of said claimed positioning, then the same structure disclosed in the Prestel reference will include the same forces in the same direction given they operate in the same manner. As stated in MPEP 2112(V), the burden of production shifts to the applicant to show that this is not an inherent characteristic of the operation of the claimed jaw structure. Therefore, the rejections of the claims under 35 U.S.C. §102 and §103 stand.
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.
Claim(s) 1-2, 5-9, 12-17, and 20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Prestel (US 2015/0127045).
Concerning claim 1, the Prestel prior art reference teaches a surgical instrument (Figure 1-12; 1) comprising: a base body detachable form a surgical robot arm ([¶ 0039], base body = shank 2, which is connected to a detachable robotic connection as disclosed in US 6,312,435); a support body connected to the base body (Figure 11; support body = intermediate piece 11 which is connected to shank 2); a first jaw that is rotatably supported on the support body (Figure 1; 11) with a rotating shaft as a fulcrum (Figure 1; 13) and that includes a first opening pulley (Figure 5; 37) to which a first opening wire is connected (Figure 5; 6), a first closing pulley (Figure 5; 36) to which a first closing wire is connected (Figure 5; 7), and a first blade part operated in an opening and closing direction (Figure 5; jaw part 11 may be interpreted as a blade given a ‘blade’ may be defined as ‘an arm of a rotating mechanism’ <thefreedictionary.com/blade>); and a second jaw that is rotatably supported by the support body (Figure 1; 12) with a rotating shaft as a fulcrum (Figure 1; 13) and that includes a second opening pulley (Figure 6; 37) to which a second opening wire is connected (Figure 6; 8), a second closing pulley (Figure 6; 36) to which a second closing wire is connected (Figure 6; 5), and a second blade part operated in the opening and closing direction (Figure 6; 12), wherein the first opening pulley and the first closing pulley are supported by the rotating shaft in a state of being separated from each other in an axial direction of the rotating shaft (Figure 5; 13), the second opening pulley and the second closing pulley are supported by the rotating shaft in a state of being separated from each other in the axial direction of the rotating shaft (Figure 6; 13), the first blade part and the second blade part are operated in opening directions to separate from each other by the first opening wire and the second opening wire, respectively, and are operated in closing directions to approach each other by the first closing wire and the second closing wire, respectively ([¶ 0048]), the first opening pulley is positioned closer to a first blade part side than the second blade part with respect to the first pulley in a direction orthogonal to the opening and closing direction (Figure 5; first blade part side = portion connecting 11 to 37), and the second opening pulley is positioned closer to a second blade part side than the first blade part with respect to the second closing pulley in the direction orthogonal to the opening and closing direction (Figure 6; second blade part side = portion connecting 12 to 37).
Although, the Prestel reference does not specifically teach when the first blade part and the second blade part are operated in the opening direction, a plurality of rotational moments respectively apply a plurality of forces to the first blade part and the second blade part in directions away from each other and orthogonal to the opening direction and when the first blade part and the second blade part are operated in the closing direction, a plurality of rotational moments respectively apply a plurality of forces to the first blade part and the second blade part in directions to contact with each other and orthogonal to the closing direction, it has been held that a rejection under 35 U.S.C. §102 can be made when the prior art product seems to be identical except that the prior is silent as to an inherent characteristic [MPEP 2112 (III)]. In the instant case, the Prestel reference has the identical structure as that of the claimed invention with regards to the positionings of the first and second opening and closing pulleys relative to the first and second blade part sides, but is silent as to the plurality of rotational moments applying the claimed forces. However, if rotational moments apply forces to the first and second blade parts in directions away from each other and orthogonal to the opening and closing directions as a result of said claimed positioning, then the same structure disclosed in the Prestel reference will include the same forces in the same direction given they operate in the same manner. As stated in MPEP 2112(V), the burden of production shifts to the applicant to show that this is not an inherent characteristic of the operation of the claimed jaw structure.
Concerning claim 2, the Prestel reference teaches the surgical instrument according to claim 1, wherein the second opening pulley (Figure 3; 36 right side) is positioned between the first opening pulley (Figure 3; 36 left side) and the first closing pulley (Figure 3; 37 right side), and the first opening pulley (Figure 3; 36 left side) is positioned between the second opening pulley (Figure 3; 36 right side) and the second closing pulley (Figure 3; 37 left side).
Concerning claim 5, the Prestel reference teaches the surgical instrument according to claim 2, wherein the first jaw includes a first base portion (Figure 5; base portion = portion connecting the jaw 11 to both pulleys 36 and 37), and the first opening pulley and the first closing pulley protrude in a same direction from the first base portion (Figure 5; 36, 37), and the second jaw includes a second base portion (Figure 6; base portion = portion connecting the jaw 12 to both pulleys 36 and 37), and the second opening pulley and the second closing pulley protrude in a same direction from the first base portion (Figure 6; 36, 37).
Concerning claim 6, the Prestel reference teaches the surgical instrument according to claim 5, wherein the first base portion, the first blade part, the first opening pulley, and the first closing pulley are integrally formed (Figure 5; 11, 36, 37), and the second base portion, the second blade part, the second opening pulley, and the second closing pulley are integrally formed (Figure 6; 12, 36, 37).
Concerning claim 7, the Prestel reference teaches the surgical instrument according to claim 1, wherein the support body is rotatably connected to the base body on a fulcrum shaft (Figure 1; 21), and the axial direction of the rotating shaft and the axial direction of the fulcrum shaft are orthogonal to each other.
Concerning claim 8, the Prestel prior art reference teaches a surgical instrument (Figure 1-12; 1) comprising: a base body detachable form a surgical robot arm ([¶ 0039], base body = shank 2, which is connected to a detachable robotic connection as disclosed in US 6,312,435); a support body connected to the base body (Figure 11; support body = intermediate piece 11 which is connected to shank 2); a first jaw that is rotatably supported on a first shaft supported by the support part (Figure 1; 13) and including a first opening pulley (Figure 5; 37) to which a first opening wire is connected (Figure 5; 6), a first closing pulley (Figure 5; 36) to which a first closing wire is connected (Figure 5; 7), and a first blade part (Figure 5; jaw part 11 may be interpreted as a blade given a ‘blade’ may be defined as ‘an arm of a rotating mechanism’ <thefreedictionary.com/blade>); and a second jaw that is rotatably supported on a second shaft supported by the support part (Figure 1; 13) and including a second opening pulley (Figure 6; 37) to which a second opening wire is connected (Figure 6; 8), a second closing pulley (Figure 6; 36) to which a second closing wire is connected (Figure 6; 5), and a second blade part (Figure 6; 12), wherein the first opening pulley is axially separated from the first closing pulley on the first shaft (Figure 5; 36, 37), the second opening pulley is axially separated from the second closing pulley on the first shaft (Figure 6; 36, 37), and wherein an axial direction of the first shaft is orthogonal to an opening and closing direction of the first blade part and the second blade part (Figure 1; 13).
Although, the Prestel reference does not specifically teach an operation of the first jaw and the second jaw in the opening direction or the closing direction generating a plurality of rotational moments that respectively apply a plurality of forces to the first blade part and the second blade part in an axial direction of the first shaft, it has been held that a rejection under 35 U.S.C. §102 can be made when the prior art product seems to be identical except that the prior is silent as to an inherent characteristic [MPEP 2112 (III)]. In the instant case, the Prestel reference has the identical structure as that of the claimed invention with regards to the positionings of the first and second opening and closing pulleys relative to the first and second blade part sides, but is silent as to the plurality of rotational moments applying the claimed forces. However, if rotational moments apply forces to the first and second blade parts in an axial direction of the first shaft as a result of said claimed positioning, then the same structure disclosed in the Prestel reference will include the same forces in the same direction given they operate in the same manner. As stated in MPEP 2112(V), the burden of production shifts to the applicant to show that this is not an inherent characteristic of the operation of the claimed jaw structure.
Concerning claim 9, the Prestel reference teaches the surgical instrument according to claim 8, wherein the second opening pulley (Figure 3; 36 right side) is positioned between the first opening pulley (Figure 3; 36 left side) and the first closing pulley (Figure 3; 37 right side), and the first opening pulley (Figure 3; 36 left side) is positioned between the second opening pulley (Figure 3; 36 right side) and the second closing pulley (Figure 3; 37 left side).
Concerning claims 12-14, the Prestel reference teaches the surgical instrument according to claims 9-11, wherein the first jaw includes a first base portion (Figure 5; base portion = portion connecting the jaw 11 to both pulleys 36 and 37), and the first opening pulley and the first closing pulley protrude in a same direction from the first base portion (Figure 5; 36, 37), and the second jaw includes a second base portion (Figure 6; base portion = portion connecting the jaw 12 to both pulleys 36 and 37), and the second opening pulley and the second closing pulley protrude in a same direction from the first base portion (Figure 6; 36, 37).
Concerning claim 15, the Prestel reference teaches the surgical instrument according to claim 14, wherein the first base portion, the first blade part, the first opening pulley, and the first closing pulley are integrally formed (Figure 5; 11, 36, 37), and the second base portion, the second blade part, the second opening pulley, and the second closing pulley are integrally formed (Figure 6; 12, 36, 37).
Concerning claim 16, the Prestel reference teaches the surgical instrument according to claim 8, wherein the support body is rotatably connected to the base body on a second shaft (Figure 1; 21), and the first shaft is orthogonal to the second shaft.
Concerning claim 17, the Prestel prior art reference teaches a surgical instrument (Figure 1-12; 1) comprising: a base body detachable form a surgical robot arm ([¶ 0039], base body = shank 2, which is connected to a detachable robotic connection as disclosed in US 6,312,435); a support body connected to the base body (Figure 11; support body = intermediate piece 11 which is connected to shank 2) and comprising a first shaft (Figure 1; 13); a first jaw that rotates on the first shaft (Figure 1; 11) and includes two first pulleys for moving the first jaw in an opening direction and a closing direction, respectively (Figure 5; 37, 36) and a second jaw that rotates on the first shaft (Figure 1; 12) and includes two second pulleys for moving the second jaw in an opening direction and a closing direction, respectively (Figure 6; 37, 36), wherein the two first pulleys are axially separated on the first shaft (Figure 5; 36, 37), the two second pulleys are axially separated on the first shaft (Figure; 36, 37), the two first pulley are interleaved with the two second pulleys (Figure 3; 36, 37), and the first shaft is orthogonal to the opening direction and the closing direction (Figure 1; 13).
Although, the Prestel reference does not specifically teach an operation of the first jaw and the second jaw in the opening direction or the closing direction generating a plurality of rotational moments that respectively apply a plurality of forces to the first blade part and the second blade part in an axial direction of the first shaft, it has been held that a rejection under 35 U.S.C. §102 can be made when the prior art product seems to be identical except that the prior is silent as to an inherent characteristic [MPEP 2112 (III)]. In the instant case, the Prestel reference has the identical structure as that of the claimed invention with regards to the positionings of the first and second opening and closing pulleys relative to the first and second blade part sides, but is silent as to the plurality of rotational moments applying the claimed forces. However, if rotational moments apply forces to the first and second blade parts in an axial direction of the first shaft as a result of said claimed positioning, then the same structure disclosed in the Prestel reference will include the same forces in the same direction given they operate in the same manner. As stated in MPEP 2112(V), the burden of production shifts to the applicant to show that this is not an inherent characteristic of the operation of the claimed jaw structure.
Concerning claim 20, the Prestel reference teaches the surgical instrument according to claim 17, wherein the support body is rotatably connected to the base body on a second shaft (Figure 1; 21), and the first shaft is orthogonal to the second shaft.
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(s) 3-4, 10-11, and 18-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Prestel (US 2015/0127045).
Concerning claims 3 and 4, the Prestel reference teaches the surgical instrument according to claim 2, wherein the first opening pulley (Figure 3; 37 right side), the second closing pulley (Figure 3; 36 right side), the first closing pulley (Figure 3; 36 left side), and the second opening pulley (Figure 3; 36 left side) are positioned in order in the axial direction of the rotating shaft; and in a direction in which the first blade part and the second blade part are arranged, the second closing pulley is positioned on the first blade part side, and the first closing pulley is positioned on the second blade part side.
Although the Prestel reference does not specifically teach the second closing pulley, the first opening pulley, the second opening pulley, and the first closing pulley being positioned in order in the axial direction of the rotating shaft; and in the direction orthogonal to the opening and closing direction, the first opening pulley is positioned on the first blade part side, and the second opening pulley is positioned on the second blade part side, the Specification of the Instant Application is completely silent as to any criticality of the particular ordering of the opening and closing pulley and presents them as obvious alternatives to one another.
Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have the first opening pulley, the second closing pulley, the first closing pulley, and the second opening pulley be positioned in order in the axial direction of the rotating shaft, and in the direction orthogonal to the opening and closing direction, the first opening pulley is positioned on the first blade part side, and the second opening pulley is positioned on the second blade part side as a matter of obvious design choice which would yield the predictable result of performing in effectively the same exact manner.
Concerning claims 10 and 11, the Prestel reference teaches the surgical instrument according to claim 8, wherein the first opening pulley (Figure 3; 37 right side), the second closing pulley (Figure 3; 36 right side), the first closing pulley (Figure 3; 36 left side), and the second opening pulley (Figure 3; 36 left side) are positioned in order in the axial direction of the rotating shaft; and in a direction in which the first blade part and the second blade part are arranged, the second closing pulley is positioned on the first blade part side, and the first closing pulley is positioned on the second blade part side.
Although the Prestel reference does not specifically teach the second closing pulley, the first opening pulley, the second opening pulley, and the first closing pulley being positioned in order in the axial direction of the rotating shaft; and in the direction orthogonal to the opening and closing direction, the first opening pulley is positioned on the first blade part side, and the second opening pulley is positioned on the second blade part side, the Specification of the Instant Application is completely silent as to any criticality of the particular ordering of the opening and closing pulley and presents them as obvious alternatives to one another.
Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have the first opening pulley, the second closing pulley, the first closing pulley, and the second opening pulley be positioned in order in the axial direction of the rotating shaft, and in the direction orthogonal to the opening and closing direction, the first opening pulley is positioned on the first blade part side, and the second opening pulley is positioned on the second blade part side as a matter of obvious design choice which would yield the predictable result of performing in effectively the same exact manner.
Concerning claims 18 and 19, the Prestel reference teaches the surgical instrument according to claim 17, wherein the two first pulleys comprise a first opening pulley (Figure 5; 37) and a first closing pulley (Figure 5; 36), and the two second pulleys comprise a second opening pulley (Figure 6; 37) and a second closing pulley (Figure 6; 36), wherein the first opening pulley (Figure 3; 37 right side), the second closing pulley (Figure 3; 36 right side), the first closing pulley (Figure 3; 36 left side), and the second opening pulley (Figure 3; 36 left side) are positioned in order on the first shaft.
Although the Prestel reference does not specifically teach the second closing pulley, the first opening pulley, the second opening pulley, and the first closing pulley being positioned in order on the first shaft, the Specification of the Instant Application is completely silent as to any criticality of the particular ordering of the opening and closing pulley and presents them as obvious alternatives to one another.
Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have the first opening pulley, the second closing pulley, the first closing pulley, and the second opening pulley be positioned in order on the first shaft, as a matter of obvious design choice which would yield the predictable result of performing in effectively the same exact manner.
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 MARTIN TRUYEN TON whose telephone number is (571)270-5122. The examiner can normally be reached Monday - Friday; EST 10:00 AM - 6:30 PM.
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/MARTIN T TON/Examiner, Art Unit 3771 7/2/2026
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