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 April 28, 2026, has been entered and made of record. Accordingly, the status of the claims is as follows: Claims 1, 5, 8, 10, 15, 18 and 19 are amended; claims 2-4, 7, 9, 11-13, 16 and 20 remain as originally presented; claims 6, 14 and 17 are canceled; claims 21-23 are newly added.
Previously Set Forth Objections and Rejections
The status of the objections and rejections set forth in the previous Office action (mailed February 5, 2026) is as follows:
The objection to the specification has been overcome by amendments to the specification filed with the 4/28/2026 response.
The 35 USC 112(b) rejection of claims 19 and 20 has been overcome by amendments to claims 19 and 20 filed with the 4/28/2026 response.
The 35 USC 102(a)(2) rejection of claims 1-4, 6, 7, 9-14, 16, 17 and 19 as being anticipated by Arshonsky et al. (U.S. Patent Application Publication No. 2016/0175050) is hereby withdrawn.
The 35 USC 103 rejection of claims 5, 8, 15, 18 and 20 as being unpatentable over Arshonsky et al. (U.S. Patent Application Publication No. 2016/0175050) in view of Patani et al. (U.S. Patent Application Publication No. 2014/0107697) is hereby withdrawn.
The following new grounds of rejection are set forth:
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.
Claim(s) 1-4, 7, 9-13, 16, 19 and 21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Arshonsky et al. (U.S. Patent Application Publication No. 2016/0175050) in view of Ichikawa et al. (U.S. Patent Application Publication No. 2013/0172885).
In regard to claims 1, 3, 10, 12, 13, 16, 19 and 21, Arshonsky et al. teaches an electrosurgical instrument 10 operable to cut and seal or weld tissue (see para. 0032) comprised of an end effector 40 having a first jaw 42 and a second jaw 44 where second jaw 44 pivots relative to shaft 30 toward and away from first jaw 42 (see Figs. 2-4 and para. 0039). Thus, as shown in Figures 2-4, the second jaw 44 is movably coupled to the first jaw 42 such that the first jaw 42 and the second jaw 44 are moveable between an open position and a closed position (see also para. 0044). Figures 2-4 also show that the first jaw 42 has a first face and the second jaw 44 has a second face where the second face is substantially adjacent the first face when the jaws are in a closed position. Arshonsky et al. also teach a firing beam 60 (base) that includes a distal blade 64 that extends through slots 46, 48 in jaws 42, 44 (see Figs. 2-5 and para. 0048). Thus, as broadly as claimed, Figures 2-5 show that the firing beam 60 extends from the second jaw 44 towards the first jaw 42. Arshonsky et al. teach that either jaw 42, 44 may include at least one port, passageway, conduit and/or other feature that is operable to draw steam, smoke and/or other gases/vapors/etc. from the surgical site and such as feature may be in communication with a source of suction (see para. 0045). Arshonsky et al. are silent as to the suction channel having an inlet at or adjacent to the blade 64. However, Ichikawa et al. teach a similar surgical device 20 having a first suction hole 528 in a first holding member 120 and a second suction hole 538 in a second holding member 130 (see Figs. 14 and 15 and para. 0107). Figures 14 and 15 show that the suction holes 528, 538 are inlets that are adjacent to precut blade 252 in order to draw in tissue (see para. 0108). Ichikawa et al. thus demonstrate that placing inlets for suction near a cutting blade in a surgical instrument having end effectors is well known in the art. Accordingly, it would have been obvious for one of ordinary skill in the art at the effective filing date of the invention to provide the device of Arshonsky et al. with suction holes in the first and second jaws 42, 44, in the manner disclosed by Ichikawa et al., in order to drawn in tissue. As such, the suction feature of Arshonsky et al. in view of Ichikawa et al. would be capable of drawing tissue toward the second jaw 44 and add tension to the tissue and improve cutting capabilities. It should be noted that it has been held that a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations. Ex parte Masham, 2 USPQ2d 1647 (1987). Also, the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). In In re Crish, 393 F.3d 1253, 1258, 73 USPQ2d 1364, 1368 (Fed. Cir. 2004). In regard to claims 2 and 11, Arshonsky et al. teach that the distal blade 64 is grounded to provide a return path for RF energy or can serve as an active electrode (see para. 0049). In regard to claims 4 and 7, Arshonsky et al. teach that the top side of first jaw 42 presents a first electrode 50 (first electrode seal plate) and the bottom side of second jaw 44 presented a second electrode 52 (second electrode seal plate) (see Figs. 2-4 and paras. 0039 and 0041). Arshonsky et al. also teach that the heat generated by electrodes 50, 52 can denature the collagen within the tissue layer portions and in cooperation with clamping pressure provided by jaws 42, 44, the denatured collagen can form a seal within the tissue layer portions (see para. 0056). In regard to claim 9, Arshonsky et al. teach that firing beam 60 has an upper flange 62 and a lower flange 66 both of which provide a compressible element opposite the cutting blade 64 to compress tissue and increase tension while cutting (see Fig. 5 and para. 0050). With further respect to claim 19, see paras. 0054-0056 of Arshonsky et al.
Claim(s) 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Arshonsky et al. (U.S. Patent Application Publication No. 2016/0175050) in view of Ichikawa et al. (U.S. Patent Application Publication No. 2013/0172885) and further in view of Patani et al. (U.S. Patent Application Publication No. 2014/0107697).
In regard to claim 20, Arshonsky et al. are silent as to a deformable seal on the suction outlet (see the above rejections). However, Patani et al. teach a similar clamping forceps 600 having a suction gasket 608 that facilitates a right seal of the clamping forceps 600 onto the surface of the tissue and it comprised of a malleable, biocompatible polymeric material (see Fig. 27A and para. 0159). Delivery of a negative pressure flow to the suction gasket 608 is effective to draw tissue 602 into suction gasket 608 (see para. 0160). Patani et al. thus demonstrate that the use of a deformable seal to draw tissue in is well known in the art. Accordingly, it would have been obvious for one of ordinary skill in the art at the effective filing date of the invention to provide the device of Arshonsky et al. with a suction gasket at the suction port, in the manner disclosed by Patani et al., in order to provide the device with a deformable seal on the second jaw 44 that is capable of drawing in tissue.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-5, 7-13, 15, 16 and 18-23 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, as noted above, Ichikawa et al. teach a suction inlet adjacent to a cutting blade.
Allowable Subject Matter
Claims 5, 8, 15, 18, 22 and 23 are 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.
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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/BEVERLY M FLANAGAN/Primary Examiner, Art Unit 3794
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