Prosecution Insights
Last updated: April 18, 2026
Application No. 18/425,627

ELECTROSURGICAL FORCEPS INCLUDING TISSUE INDICATION

Final Rejection §103§DP
Filed
Jan 29, 2024
Examiner
CLARK, RYAN T
Art Unit
3794
Tech Center
3700 — Mechanical Engineering & Manufacturing
Assignee
Covidien LP
OA Round
4 (Final)
50%
Grant Probability
Moderate
5-6
OA Rounds
4y 1m
To Grant
69%
With Interview

Examiner Intelligence

Grants 50% of resolved cases
50%
Career Allow Rate
131 granted / 263 resolved
-20.2% vs TC avg
Strong +20% interview lift
Without
With
+19.5%
Interview Lift
resolved cases with interview
Typical timeline
4y 1m
Avg Prosecution
36 currently pending
Career history
299
Total Applications
across all art units

Statute-Specific Performance

§101
0.7%
-39.3% vs TC avg
§103
51.7%
+11.7% vs TC avg
§102
25.2%
-14.8% vs TC avg
§112
13.8%
-26.2% vs TC avg
Black line = Tech Center average estimate • Based on career data from 263 resolved cases

Office Action

§103 §DP
DETAILED ACTION A complete action on the merits of pending claims 19-37 appears below. 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 . The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action. Double Patenting Claims 19-34 are rejected on the grounds of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11903635. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of patent anticipate the claims of the application. Accordingly, the application claims are not patentably distinct from the patent claims. Here, the more specific patent claims encompass the broader application claims. Following the rationale in In re Goodman cited in the preceding paragraph, where applicant has once been granted a patent containing a claim for the specific narrow invention, applicant may not obtain a second patent with a claim for the generic or broader invention without first submitting an appropriate terminal disclaimer. Claim Rejections - 35 USC § 103 Claims 19-22 and 25-37 are rejected under 35 U.S.C. 103 as being unpatentable over Chernov US 20120296205 in view of Robinson US 20120209288. Par. [0038] of Chernov incorporates US Application 12757310 by reverence. Haorau US 20110251605 is used for the incorporated reference. Regarding claim 19, Chernov teaches a display (Fig. 1 display 118); a sensor (par. [0061] optical sensor); one or more processors; and a memory coupled to the one or more processors, the memory having instructions stored thereon which, when executed by the one or more processors, cause the one or more processors to: receive sensor data from the sensor (par. [0032]); generate a tissue indication based upon the sensor data; and output the tissue indication to the display as an overlay of the tissue indication onto the end effector assembly in the video image (par. [0035] microprocessor transfers sensor data to the display), wherein the tissue indication indicates a location along the first jaw member at which the grasped tissue is grasped between the first and second jaw members (pars. [0058] and [0061] images sent to display showing the tissue and vessel position within a translucent jaw). Chernov does not explicitly teach a signal to the display, the signal causing the display to display a video image of a surgical site including first and second jaw members of an end effector assembly grasping tissue at the surgical site. Robinson, in an analogous device, teaches displaying the tissue being clamped in the jaws and superimposing a knife position within the jaws (par. [0059]). It would have been obvious to one of ordinary skill in the art at the time the invention was effectively filed to modify Chernov to display the jaw, as in Robinson. The tracking of Robinson allows for portions not visible in the surgical area to be superimposed onto the display (Abstract). Regarding claim 28, Chernov teaches a display (Fig. 1 display 118) ; a sensor (par. [0061] optical sensor); one or more processors; and a memory coupled to the one or more processors, the memory having instructions stored thereon which, when executed by the one or more processors (par. [0032]), cause the one or more processors to: receive sensor data from the sensor, the sensor data associated with tissue grasped between first and second jaw members of an end effector assembly; determine at least one of a type of the grasped tissue, a state of the grasped tissue, or the presence of a foreign object or a critical tissue within the grasped tissue based upon the sensor data (par. [0035] microprocessor transfers sensor data to the display); generate a tissue indication based upon the determined at least one of the type of the grasped tissue, the state of the grasped tissue, or the presence of a foreign object or a critical tissue within the grasped tissue (par. [0036] identifying tissue type); and output the tissue indication to the display as an overlay of the tissue indication onto the end effector assembly in the video image (pars. [0058] and [0061] images sent to display showing the tissue and vessel position within a translucent jaw). Chernov does not explicitly teach a signal to the display, the signal causing the display to display a video image of a surgical site including first and second jaw members of an end effector assembly grasping tissue at the surgical site. Robinson, in an analogous device, teaches displaying the tissue being clamped in the jaws and superimposing a knife position within the jaws (par. [0059]). It would have been obvious to one of ordinary skill in the art at the time the invention was effectively filed to modify Chernov to display the jaw, as in Robinson. The tracking of Robinson allows for portions not visible in the surgical area to be superimposed onto the display (Abstract). Regarding claims 20 and 29, Chernov teaches wherein the overlay is displayed over an exterior-facing surface of the first jaw member of the end effector assembly in the video image (pars. [0058] and [0061] the jaw is translucent so the tissue can be seen by the user looking at the device or on the display). Regarding claims 21 and 30, Chernov teaches wherein the tissue indication includes at least one of a visual effect, a contrast pattern, a color highlight, or a banner (pars. [0058] and [0061] the jaw is translucent so the tissue can be seen through it). Regarding claims 22 and 31, Chernov teaches wherein the sensor is disposed on the end effector assembly (par. [0061] optical sensor. Regarding claims 25 and 32, Chernov teaches further comprising a surgical instrument including the end effector assembly (Fig. 1). Regarding claims 26 and 33, Chernov teaches wherein the surgical instrument includes a housing (par. [0028] handpiece 104) and a shaft extending distally from the housing (Fig. 1 and Fig. 2 shaft that 115 is in), wherein the end effector assembly is disposed at a distal end portion of the shaft (Fig. 2), wherein the housing includes at least one actuator configured to manipulate the end effector assembly (Hoarau Fig. 14 440). Regarding claims 27 and 34, Chernov teaches further comprising a robotic arm, wherein the surgical instrument is configured to releasably connect to the robotic arm (Haurau Fig. 14). Regarding claim 35, Chernov teaches wherein the sensor detects a position of the grasped tissue with respect to the first jaw member (par. [0013] determining the position based on light). Regarding claim 36, Chernov teaches wherein the instructions further cause the one or more processors to: determine, based on the sensor data, a position of the grasped tissue with respect to the first jaw member (par. [0013] determining the position based on light). Regarding claim 37, Chernov teaches wherein the tissue indication indicates a position of grasped tissue as seen through the first jaw member (par. [0013] determining the position based on light). Claim Rejections - 35 USC § 103 Claims 23 and 24 are rejected under 35 U.S.C. 103 as being unpatentable over Chernov and Robinson as applied to claim 22, and further in view of Worrell US 20170238991. Regarding claims 23 and 24, Chernov and Robinson do not explicitly teach wherein the sensor includes at least one pressure-sensitive resistive panel and wherein the sensor includes an elastomeric contact sensor. Worrell, in an analogous device, teaches where the light measuring device has an elastomer strip embedded in it (par. [0161]). It would have been obvious to one of ordinary skill in the art at the time the invention was effectively filed to modify the sensing of Chernov and Robinson to have an elastomeric sensor, as in Worrell. The elastomeric sensor is able to determine micro force changes (Worrell par. [0535]). Response to Arguments Applicant's arguments filed 12/16/25 have been fully considered but they are not persuasive. Applicant's arguments fail to comply with 37 CFR 1.111(b) because the applicant has conceded their right to file timely arguments regarding newly added claims without specifically pointing out how the language of the claims patentably distinguishes them from the references. Therefore, new claims 35-37 are read on by the current art of record as seen in the rejection above. The applicant argues, regarding the double patenting rejection, that U.S. Patent No. 11903635 doe not specifically state that the jaws are shown in the display. The rejection relies on In re Goodman and the applicant has not stated how the current set of claims are more specific and would not fall under this kind of double patenting. The applicant argues that Chernov does not teach the image of the vessels on display 118 indicates a location along the first jaw member. The applicant underlines and italicized that par. [0058] states a surgeon can continually direct her eyes toward a surgical site within a surgical field of view without needing to redirect her eyes to a separate monitor or display. First, that is just one embodiment and the display can be the image that is projected on the eyes of the surgeon. The passage states a separate display or monitor not that there is not one at all. Further, that paragraph states that the surgeon based on the image is able to see if the vessel is properly placed within the jaws. Thus, the tissue location related to the jaws is known. The applicant further states that Robinson does not teach the tissue and end effector shown together. However, Fig. 10 shoes the image of an end effector with the tissue between the jaws and the cutter relative to the tissue. Therefore, the arguments presented by the applicant are not persuasive. Conclusion THIS ACTION IS MADE FINAL. 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 RYAN T. CLARK whose telephone number is (408)918-7606. The examiner can normally be reached on Monday-Friday 7AM-3PM MT. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Linda Dvorak can be reached on (571)272-4764. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /R.T.C./Examiner, Art Unit 3794 /LINDA C DVORAK/Primary Examiner, Art Unit 3794
Read full office action

Prosecution Timeline

Jan 29, 2024
Application Filed
Feb 14, 2024
Response after Non-Final Action
Sep 28, 2024
Non-Final Rejection — §103, §DP
Dec 20, 2024
Response Filed
Apr 24, 2025
Final Rejection — §103, §DP
Jun 24, 2025
Response after Non-Final Action
Jul 15, 2025
Request for Continued Examination
Jul 18, 2025
Response after Non-Final Action
Sep 20, 2025
Non-Final Rejection — §103, §DP
Dec 16, 2025
Response Filed
Apr 04, 2026
Final Rejection — §103, §DP (current)

Precedent Cases

Applications granted by this same examiner with similar technology

Patent 12558158
ELECTROSURGICAL INSTRUMENT WITH NON-LIQUID THERMAL TRANSFER
2y 5m to grant Granted Feb 24, 2026
Patent 12558141
ENERGIZABLE INSTRUMENT ASSEMBLY
2y 5m to grant Granted Feb 24, 2026
Patent 12551266
ENDOSCOPIC DEVICE
2y 5m to grant Granted Feb 17, 2026
Patent 12551226
ENDOSCOPIC SURGICAL DEVICE
2y 5m to grant Granted Feb 17, 2026
Patent 12551267
Cutting Instrument
2y 5m to grant Granted Feb 17, 2026
Study what changed to get past this examiner. Based on 5 most recent grants.

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Prosecution Projections

5-6
Expected OA Rounds
50%
Grant Probability
69%
With Interview (+19.5%)
4y 1m
Median Time to Grant
High
PTA Risk
Based on 263 resolved cases by this examiner. Grant probability derived from career allow rate.

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