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 .
Claim Objections
Claims 6 and 13 are objected to because of the following informalities:
In claim 6, the preamble appears to be missing a space between “claim” and “1”.
In claim 13, the phrase “cauterizes” should read “cauterize” for readability purposes.
Appropriate correction is required.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “latching mechanism” in claim 21.
Para. [0009] of the instant spec. describes the latching mechanism as a releasable lock. “Latching mechanism” uses the generic placeholder “mechanism” coupled with the term “latching”, which is functional in that the limitation alternatively recites a mechanism for latching, and the term “mechanism” is not preceded by a structural modifier since the term “latching” does not imply any structure.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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.
Claims 3, 11, 18 and 20 are 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.
Regarding claim 3, the claim recites “the jaw” in line 2. It is unclear whether the phrase is referring to the first jaw, the second jaw, at least one of the first and second jaws, or both the first jaw and the second jaw. Therefore, the scope of the claim is indefinite. For examination purposes, the phrase is interpreted to refer to at least one of the first and second jaws.
Regarding claim 11, the claim recites “wherein a plurality of the joins the transmission systems joints are separatable”. The claim does not make grammatical sense, therefore the scope of the claim is indefinite. For examination purposes, the phrase is interpreted to refer to joints of the transmission system being separatable.
Regarding claim 18, the claim recites “an input assembly output coupled to the proximal end of the elongate transmission cable” in line 2. It is unclear whether the phrase “elongate transmission cable” is referring to the elongate transmission guide or the transmission cable previously introduced. Therefore, the scope of the claim is indefinite. For examination purposes, the phrase is interpreted to refer to either the elongate transmission guide or the transmission cable previously introduced.
Regarding claim 20, the claim recites “the jaw input”. There is insufficient antecedent basis for this limitation in the claim, since a jaw input has not specifically been previously introduced. Therefore, the scope of the claim is indefinite. For examination purposes, the phrase is interpreted to refer to the jaw input joint previously introduced.
Further, the claim recites “the jaw mechanism”. There is insufficient antecedent basis for this limitation in the claim, since a jaw mechanism has not been previously introduced. Therefore, the scope of the claim is indefinite. For examination purposes, the phrase is interpreted to refer to a jaw mechanism.
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.
Claim(s) 1-9, 11, 13-15, 17 and 19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Strokosz (US 2011/0093005 A1).
Regarding claim 1, Strokosz discloses (abstract; paras. [0024]-[0035] and [0044]-[0045]; figs. 1-4 and 8-9d) a device having a jaw assembly (16) actuated by a transmission cable (includes actuation shaft 26 and spring 60 of linkage mechanism, para. [0044]; figs. 3-4 and 8), the device comprising:
an elongate transmission guide (shaft 14, para. [0024]), wherein the transmission cable is routed through the elongate transmission guide (para. [0033]; figs. 3-4 and 8);
an input assembly (handle assembly 12 including rotatable knob 17) at a proximal end of the elongate transmission guide (fig. 8), the input assembly comprising an input body (22, para. [0029]; fig. 3) and an input member (trigger 20), the input member coupled to a proximal end of the transmission cable (para. [0032]; fig. 3), wherein the input member has an open configuration (position of trigger 20 in open position of linkage mechanism, paras. [0034]-[0035]) and a closed configuration (position of trigger 20 in toggle position of linkage mechanism, paras. [0034]-[0035]), further wherein the input member is configured to provide an input member input stroke (movement of trigger 20, paras. [0029] and [0034]-[0035]) in the closed configuration (stroke considered to be provided via position of trigger 20 in toggle position as discussed above);
wherein the jaw assembly is distal to the elongate transmission guide (fig. 1), the jaw assembly having a first jaw coupled to a second jaw (jaws 18, figs. 2a-b), wherein the jaw assembly has an open configuration and a closed configuration (para. [0034]); and
a jaw input joint (24, para. [0032]) coupling a distal end of the transmission cable to the first jaw, the second jaw, or the first and second jaws (paras. [0032] and [0034]), wherein the jaw input joint has a jaw input stroke (stroke of link 24, depicted in figs. 3-4) that is less than the input member input stroke (depicted in figs. 3-4), so that the jaw assembly is in the closed configuration before the input member achieves the closed configuration (end effector assembly closes on tissue prior to additional pressure on trigger or trigger movement, end effector 16 considered to reach a closed configuration prior to trigger 20 reaching the toggle position, paras. [0035] and [0044]) and further so that the transmission cable is stretched in the jaw assembly closed configuration relative to the jaw assembly open configuration (spring 60 stretches upon any additional linkage and trigger movement to facilitate toggle position creation, para. [0044]; fig. 8).
Regarding claim 2, Strokosz discloses the device of claim 1. Strokosz further discloses wherein the relationship between the input member input stroke and displacement at the proximal end of the transmission cable is non-linear (see figs. 3-4, depicting the stroke of trigger 20 and actuation shaft 26/spring 60 having a non-linear relationship, because the structures extend non-linearly relative to each other).
Regarding claim 3, Strokosz discloses the device of claim 1. Strokosz further discloses wherein the relationship between the jaw input stroke and opening and/or closing displacement of the jaw is non-linear (see figs. 3-4 depicting stroke of link 24 being non-linear relative to opening/closing of jaws, which are depicted in figs. 2a-b, i.e. the displacement of the jaws does not extend linearly relative to the stroke of link 24).
Regarding claim 4, Strokosz discloses the device of claim 1. Strokosz further discloses wherein a mechanical advantage of the input member in the open configuration is less than the mechanical advantage of the input member in the closed configuration (considered to be greater than initial force applied, because spring 60 stretches/compresses due to added force, therefore considered to absorb the additional/greater force to maintain constant force applied to tissue, paras. [0044]-[0045]).
Regarding claim 5, Strokosz discloses the device of claim 1. Strokosz further discloses wherein movement of the first jaw, second jaw, or the first and second jaws are driven by the transmission cable (paras. [0032] and [0044]).
Regarding claim 6, Strokosz discloses the device of claim 1. Strokosz further discloses wherein the first jaw and second jaw are arranged as scissoring jaws (para. [0024]).
Regarding claim 7, Strokosz discloses the device of claim 1. Strokosz further discloses wherein the jaw assembly is configured to produce a cutting force, a clamping force, or a grasping force (para. [0024]).
Regarding claim 8, Strokosz discloses the device of claim 1. Strokosz further discloses wherein the transmission cable and elongate transmission guide are part of a self-limiting transmission sub-system configured so that it does not exceed a target clamp force between the first jaw and the second jaw (force limited to predetermined amount, para. [0044]).
Regarding claim 9, Strokosz discloses the device of claim 1. Strokosz further discloses wherein the jaw assembly comprises a jaw mechanism that is present at the distal end of the transmission cable (pivot joint of end effector assembly 16, considered to be distal of actuation shaft 26, see fig. 2b).
Regarding claim 11, Strokosz discloses the device of claim 1. Strokosz further discloses wherein the transmission cable and elongate transmission guide are part of a transmission sub-system (considered to be part of a sub-system) and wherein a plurality of the joins the transmission system joints are separatable (actuation shaft 26 pivotably coupled to actuation link 24, pivot considered to be a joint of a plurality of pivots of the device, which are separatable because the pivots are distinct from each other and other structures within the device, para. [0032]).
Regarding claim 13, Strokosz discloses the device of claim 1. Strokosz further discloses further wherein the jaw assembly is configured to cauterizes tissue (end effector assembly may include electrosurgical tool, considered to encompass the capability to cauterize tissue, paras. [0024] and [0053]).
Regarding claim 14, Strokosz discloses the device of claim 1. Strokosz further discloses wherein the input assembly comprises a linkage or a cam (para. [0032]).
Regarding claim 15, Strokosz discloses the device of claim 1. Strokosz further discloses wherein the input assembly comprises a handle assembly (12, para. [0024]; fig. 1) and further wherein the input member comprises an input lever (trigger 20 considered to function as a lever, figs. 3-4).
Regarding claim 17, Strokosz discloses the device of claim 1. Strokosz further discloses wherein the elongate transmission guide is stiff in compression at least along a region through which the transmission cable is routed (shaft 14 considered to have a degree of stiffness adequate to pass through an access port, paras. [0024]-[0025]; fig. 1).
Regarding claim 19, Strokosz discloses the device of claim 1. Strokosz further discloses further comprising a jaw base to which either or both the first and second jaws are pivotally coupled (annotated fig. 2b).
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Annotated Figure 2B of Strokosz
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.
Claim(s) 10, 18 and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Strokosz.
Regarding claim 10, Strokosz discloses the device of claim 1.
However, with respect to the cited embodiment, Strokosz fails to disclose further comprising a plurality of latching locations to retain the input member in place throughout the input member stroke.
However, in a separate embodiment, Strokosz teaches (paras. [0045]-[0049]; figs. 3-4, 9a and 9d), in the same field of endeavor, a device comprising a plurality of latching locations (incremental latched positions, para. [0045]) to retain an input member in place throughout the input member stroke (prevents shuttle from moving towards open position), for the purpose of allowing incremental latched positions between a fully opened and fully closed end effector assembly (para. [0045]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the device of Strokosz to further comprise ratchet mechanism 70 providing a plurality of latching locations, in order to allow incremental latched positions between a fully opened and fully closed end effector assembly, based on the teachings of a separate embodiment of Strokosz (para. [0045]).
Regarding claim 18, Strokosz discloses the device of claim 1.
However, with respect to the cited embodiment, Strokosz fails to disclose wherein the input assembly further comprises an input assembly output coupled to the proximal end of the elongate transmission cable, further wherein the input assembly output comprises one or more of: a shuttle, a push rod, or a pull rod.
However, in a separate embodiment, Strokosz teaches (paras. [0045]-[0049]; figs. 9a and 9d), in the same field of endeavor, a device comprising an elongate transmission cable (26) and an input assembly (12’), the input assembly further comprising an input assembly output (shuttle trigger ratchet mechanism 70) coupled to the proximal end of the elongate transmission cable (fig. 9a), further wherein the input assembly output comprises a shuttle (70 connected to shuttle trigger 20 and therefore considered to function as a shuttle, para. [0045]), for the purpose of providing at least one latched position that can prevent the shuttle trigger 20 from moving towards an open position with respect to the handle assembly 12, preventing movement of the actuation shaft 26 and locking the jaws (para. [0045]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the input assembly of Strokosz to include the ratchet mechanism 70 functioning as the input assembly output, in order to provide at least one latched position that can prevent the shuttle trigger 20 from moving towards an open position with respect to the handle assembly 12, preventing movement of the actuation shaft 26 and locking the jaws, based upon the teachings of a separate embodiment of Strokosz (para. [0045]).
Regarding claim 21, Strokosz discloses the device of claim 1.
However, with respect to the cited embodiment, Strokosz fails to disclose further comprising a releasable latching mechanism configured to hold the input member locked in a closed position at the end of the input stroke.
However, in a separate embodiment, Strokosz teaches (paras. [0045]-[0049]; figs. 3-4, 9a and 9d), in the same field of endeavor, a device comprising a releasable latching mechanism (ratchet mechanism 70, para. [0045]) configured to hold an input member locked in a closed position at the end of the input stroke (prevents shuttle from moving towards open position, considered to lock trigger 20 in a closed position, para. [0045]), for the purpose of allowing incremental latched positions between a fully opened and fully closed end effector assembly (para. [0045]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the device of Strokosz to further comprise ratchet mechanism 70, in order to lock trigger 20 in a specific position and allow incremental latched positions between a fully opened and fully closed end effector assembly, based on the teachings of a separate embodiment of Strokosz (para. [0045]).
Claim(s) 16 is rejected under 35 U.S.C. 103 as being unpatentable over Strokosz in view of Clark (US 5465894).
Regarding claim 16, Strokosz discloses the device of claim 1.
However, Strokosz fails to disclose wherein the elongate transmission guide comprises a region of conduit that is flexible in bending.
Clark teaches (col. 8 line 64-col. 9 line 7; figs. 1-3), in the same field of endeavor, a device having a jaw assembly (60, fig. 1) and an elongate transmission guide (70), wherein the elongate transmission guide comprises a first region of conduit that is flexible in bending (76, flexible and capable of bending), for the purpose of providing the capability of bending the assembly in any radial direction into a surgical site where access is restricted (col. 4 lines 13-22).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the shaft of Strokosz to include a region flexible in bending, in order to provide the capability of bending the shaft in any radial direction into a surgical site where access is restricted, based upon the teachings of Clark (col. 4 lines 13-22).
Claim(s) 20 is rejected under 35 U.S.C. 103 as being unpatentable over Strokosz in view of Nishizawa (US 2006/0190034 A1).
Regarding claim 20, Strokosz discloses the device of claim 1.
However, Strokosz fails to disclose wherein the jaw input comprises a jaw pulley, and the jaw mechanism comprises a cam surface between the jaw pulley and the second jaw.
Nishizawa teaches (paras. [0033]-[0042]; figs. 1-3B), in the same field of endeavor, a device (fig. 1) having a jaw assembly (gripper 14), wherein the jaw assembly includes first jaw, a second jaw (1a, 1b) and a jaw input (2a, 2b), the jaw input comprising a jaw pulley (2a and 2b are pulleys, para. [0033]), and the jaw assembly comprises a cam surface (rolling member 4b, considered to be a cam surface because it includes a surface of a rotating or sliding piece, para. [0034]; fig. 2) between the jaw pulley and the second jaw (figs. 1-2), for the purpose of providing the capability of a swing action of the gripper joint without any interference, providing an increased range in which the blades can swing to treat a hidden affected part (paras. [0042] and [0050]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the jaw assembly of Strokosz to include a jaw pulley and a cam surface between the jaw pulley and the second jaw, in order to provide the capability of a swing action of the gripper joint without any interference, providing an increased range in which the blades can swing to treat a hidden affected part, based upon the suggestions and teachings of Nishizawa (paras. [0042] and [0050]).
Claim(s) 22 is rejected under 35 U.S.C. 103 as being unpatentable over Strokosz in view of Awtar (US 2012/0041450 A1).
Regarding claim 22, Strokosz discloses the device of claim 1.
However, Strokosz fails to disclose wherein one or both of the jaw assembly and the input assembly are modularly connected to the elongate transmission guide and the transmission cable of the device.
Awtar teaches (para. [0043]; fig. 1), in the same field of endeavor, a device including a jaw assembly (12) modularly connected to an elongate transmission guide (detachable relative to tool shaft 22, para. [0043]), for the purpose of replacing the end effector with a different end effector having a different functionality during an operation, allowing the tool shaft 22 to remain in place (para. [0043]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the jaw assembly in Strokosz to be detachable from the elongate transmission guide and transmission cable such that they are modularly connected, in order to replace the end effector with a different end effector having a different functionality during an operation, allowing the elongate transmission guide and transmission cable to remain in place, based upon the teachings of Awtar (para. [0043]).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 4-5 and 14-23 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 5-14 and 16 of U.S. Patent No. 11,896,255 B2 to Zimmerman. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-2, 5-14 and 16 would anticipate current claims 1, 4-5 and 14-23.
18/416,658 claims
US 11,896,255 corresponding claims
1
1, 14; first and second part of input stroke considered to be open and closed configuration; jaw input considered to be jaw input joint
4
2
5
1, 14
14
5, 16
15
6
16
7
17
8
18
9
19
10
20
11
21
12
22
13
23
1, 14; first and second part of input stroke considered to be open and closed configuration; jaw input considered to be jaw input joint
Claims 2-3, 6-11 and 13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 14 of U.S. Patent No. 11,896,255 B2 to Zimmerman in view of Strokosz.
Regarding claim 2, Zimmerman claims the device of claim 2 (claim 1), but fails to claim wherein the relationship between the input member input stroke and displacement at the proximal end of the transmission cable is non-linear.
Strokosz teaches wherein the relationship between the input member input stroke and displacement at the proximal end of the transmission cable is non-linear (see figs. 3-4, depicting the stroke of trigger 20 and actuation shaft 26/spring 60 having a non-linear relationship, because the structures extend non-linearly relative to each other), for the purpose of providing first and second actuation surfaces for easy pressing of the trigger (paras. [0029] and [0035]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to claim wherein the relationship between the input member input stroke and displacement at the proximal end of the transmission cable is non-linear, in order to provide first and second actuation surfaces for easy pressing of the input member, based on the teachings of Strokosz (paras. [0029] and [0035]).
Regarding claim 3, Zimmerman claims the device of claim 3 (claim 1), but fails to claim wherein the relationship between the jaw input stroke and opening and/or closing displacement of the jaw is non-linear.
Strokosz teaches wherein the relationship between the jaw input stroke and opening and/or closing displacement of the jaw is non-linear (see figs. 3-4 depicting stroke of link 24 being non-linear relative to opening/closing of jaws, which are depicted in figs. 2a-b, i.e. the displacement of the jaws does not extend linearly relative to the stroke of link 24), for the purpose of pivoting the actuation structure along the longitudinal axis of the device, allowing the end effector assembly to be locked in the closed position (paras. [0032] and [0034]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to claim wherein the relationship between the jaw input stroke and opening and/or closing displacement of the jaw is non-linear, in order to pivot the actuation structure along the longitudinal axis of the device, allowing the end effector assembly to be locked in the closed position, based on the teachings of Strokosz (paras. [0032] and [0034]).
Regarding claim 6, Zimmerman claims the device of claim 6 (claim 1), but fails to claim wherein the first jaw and second jaw are arranged as scissoring jaws.
Strokosz teaches wherein the first jaw and second jaw are arranged as scissoring jaws (para. [0024]), for the purpose of effectively cutting tissue (para. [0024]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to claim wherein the first jaw and second jaw are arranged as scissoring jaws, in order to provide a structure that effectively cuts tissue, based on the teachings of Strokosz (para. [0024]).
Regarding claim 7, Zimmerman claims the device of claim 7 (claim 1), but fails to claim wherein the jaw assembly is configured to produce a cutting force, a clamping force, or a grasping force.
Strokosz teaches wherein the jaw assembly is configured to produce a cutting force, a clamping force, or a grasping force (para. [0024]), for the purpose of effectively cutting tissue (para. [0024]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to claim wherein the jaw assembly is configured to produce a cutting force, a clamping force, or a grasping force, in order to provide a structure that effectively cuts tissue, based on the teachings of Strokosz (para. [0024]).
Regarding claim 8, Zimmerman claims the device of claim 8 (claim 1), but fails to claim wherein the transmission cable and elongate transmission guide are part of a self-limiting transmission sub-system configured so that it does not exceed a target clamp force between the first jaw and the second jaw.
Strokosz teaches wherein the transmission cable and elongate transmission guide are part of a self-limiting transmission sub-system configured so that it does not exceed a target clamp force between the first jaw and the second jaw (force limited to predetermined amount, para. [0044]), for the purpose of applying a predetermined constant force to tissue (para. [0044]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to claim wherein the transmission cable and elongate transmission guide are part of a self-limiting transmission sub-system configured so that it does not exceed a target clamp force between the first jaw and the second jaw, in order to apply a predetermined constant force to tissue, based on the teachings of Strokosz (para. [0044]).
Regarding claim 9, Zimmerman claims the device of claim 9 (claim 1), but fails to claim wherein the jaw assembly comprises a jaw mechanism that is present at the distal end of the transmission cable.
Strokosz teaches wherein the jaw assembly comprises a jaw mechanism that is present at the distal end of the transmission cable (pivot joint of end effector assembly 16, considered to be distal of actuation shaft 26, see fig. 2b), for the purpose of providing a pivot for the jaws to open and close (para. [0024]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to claim wherein the jaw assembly comprises a jaw mechanism that is present at the distal end of the transmission cable, for the purpose of providing a pivot for the jaws to open and close, based on the teachings of Strokosz (para. [0024]).
Regarding claim 10, Zimmerman claims the device of claim 10 (claim 1), but fails to claim further comprising a plurality of latching locations to retain the input member in place throughout the input member stroke.
Strokosz teaches (paras. [0045]-[0049]; figs. 3-4, 9a and 9d), in the same field of endeavor, a device comprising a plurality of latching locations (incremental latched positions, para. [0045]) to retain an input member in place throughout the input member stroke (prevents shuttle from moving towards open position), for the purpose of allowing incremental latched positions between a fully opened and fully closed end effector assembly (para. [0045]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to claim further comprising a plurality of latching locations to retain the input member in place throughout the input member stroke, in order to allow incremental latched positions between a fully opened and fully closed end effector assembly, based on the teachings of Strokosz (para. [0045]).
Regarding claim 11, Zimmerman claims the device of claim 11 (claim 1), but fails to claim wherein the transmission cable and elongate transmission guide are part of a transmission sub-system and wherein a plurality of the joins the transmission system joints are separatable.
Strokosz teaches wherein the transmission cable and elongate transmission guide are part of a transmission sub-system (considered to be part of a sub-system) and wherein a plurality of the joins the transmission system joints are separatable (actuation shaft 26 pivotably coupled to actuation link 24, pivot considered to be a joint of a plurality of pivots of the device, which are separatable because the pivots are distinct from each other and other structures within the device, para. [0032]), for the purpose of providing distinct structures of the device (para. [0032]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to claim wherein the transmission cable and elongate transmission guide are part of a transmission sub-system and wherein a plurality of the joins the transmission system joints are separatable, in order to provide distinct structures of the device, based on the teachings of Strokosz (para. [0032]).
Regarding claim 13, Zimmerman claims the device of claim 13 (claim 1), but fails to claim further wherein the jaw assembly is configured to cauterize tissue.
Strokosz teaches further wherein the jaw assembly is configured to cauterize tissue (end effector assembly may include electrosurgical tool, considered to encompass the capability to cauterize tissue, paras. [0024] and [0053]), for the purpose of providing an electrosurgical tool that prevents future bleeding during treatment of tissue (paras. [0024] and [0053]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to claim further wherein the jaw assembly is configured to cauterize tissue, in order to provide an electrosurgical tool that prevents future bleeding during treatment of tissue, based on the teachings of Strokosz (paras. [0024] and [0053]).
Claims 1, 4-5, 9, 14-16 and 18-21 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-2, 4 and 6-11 of U.S. Patent No. 9,869,339 B2 to Zimmerman. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-2, 4 and 6-11 would anticipate current claims 1, 4-5, 9, 14-16 and 18-21.
18/416,658 claims
U.S. 9,869,339 B2 corresponding claims
1
1, 11
4
6
5
1, 11
9
1
14
2
15
1
16
4
18
7
19
8
20
9
21
10
Prior Art
Note claim 23 is currently free from prior art.
Allowable Subject Matter
Claim 12 is 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:
Regarding claim 12, Strokosz discloses a joint coupling the input member to the transmission cable (pivot of trigger 20, para. [0032]), but fails to disclose the joint having an infinite roll degree of freedom. It would not be obvious to modify the pivot to have an infinite roll degree of freedom, because doing so would destroy the function of the pivot joint, which is structured such that the trigger 20 only extends a certain distance (figs. 3-4).
Conclusion
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/BRIGID K BYRD/Examiner, Art Unit 3771