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 .
Information Disclosure Statement
The information disclosure statement filed January 26, 2024 has been entered and the references cited therein have been considered by the examiner.
Specification
The disclosure is objected to because of the following informalities:
At para. 0023, it states that the electrode cutting blade 119 is shown in Fig. 2. Figure 2 does not show the electrode cutting blade 119 so it is believed applicant intended to refer to Figure 5.
In the specification, elements 109 and 111 are called both the electrode seal plate (see, e.g., para. 0023) and the grip plate (see, e.g., para. 0034). Since the claims recite “electrode seal plate” it is suggested that the specification be amended to use this terminology throughout.
In order to align with the drawings, it is suggested that applicant term the flanges 220, 222 as inner flanges (222) and outer flanges (220).
Appropriate correction is required.
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 19 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.
Independent claim 19 recites a method comprising: “providing, obtaining or manufacturing a surgical instrument.” This recitation is vague and ambiguous as it is unclear what type of method step applicant intends to recite. As the remainder of the claim recites method of use steps, it is suggested that applicant limit claim 19 to “providing” a surgical instrument.
As claim 20 depends from claim 19, it is likewise rejected.
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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-4, 6, 7, 9-14, 16, 17 and 19 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Arshonsky et al. (U.S. Patent Application Publication No. 2016/0175050).
In regard to claims 1, 3, 10, 12, 13, 16 and 19, 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). As such, the suction feature 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, 6 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, 7, 14 and 17, 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 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) 5, 8, 15, 18 and 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 Patani et al. (U.S. Patent Application Publication No. 2014/0107697).
In regard to claims 5, 8, 15, 18 and 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.
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