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 .
Election/Restrictions
Applicant’s election of Invention I (claims 1-10) in the reply filed on December 23, 2025 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)). Accordingly, claims 11-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
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) 1-9 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Boudreaux et al. (U.S. Patent Application Publication No. 2015/0272659).
In regard to claims 1, 3, 7 and 9, Boudreaux et al. teach a surgical instrument 2 for clamping and treating tissue (see para. 0001) such as clamping and cutting vessels (see title). The surgical instrument 2 includes an end effector 10 coupled to the distal end of a shaft assembly 12 (actuator rod) and a handle assembly 4 (see Fig. 1). The end effector 10 comprises a first jaw member 14a that is pivotably coupled to a second jaw member 14b to grasp tissue therebetween (see Fig. 1 and para. 0038). The handle assembly 4 includes a plurality of components including those for affecting the closure of the jaws 16a, 16b (see para. 0039). A two-stage trigger 9 (actuator) rotates a trigger plate 24 about a rotation point defined by a rotation pin 25 which in turn causes rotation of a clamp plate 26 that transitions the jaws 16a, 16b from an open position to a closed position (see para. 0040). In operation, rotation of the two-stage trigger 9 rotates the trigger plate 24 and a cam plate 54 about an axis defined by a pivot pin 97a and rotation of the trigger plate 24 drives the floating pin 48 upward in the pin track 56 (see para. 0048). The floating pin 48 engages the clamp plate 26 and rotates the clamp plate 26 about the axis defined by the pivot pin 97a and rotation of the clamp plate 26 drives the toggle clamp 52 proximally, moving the yoke 32 proximally and compressing a closure spring 42 (see para. 0048). In regard to claim 2, Figure 7 shows that the cam plate 54 has a cam path 68 that has an angled path and, at the two ends of the path, a proximal pocket and a distal pocket. See also paras. 0052-0056 noting that moving the two-stage trigger 9 (button) in the proximal direction moves the plunger pin 41 to the proximal pocket and moving the two-stage trigger 9 in the distal direction moves the plunger pin 41 to the distal pocket. With further respect to claim 7 and in regard to claim 4, see para. 0059 which discusses a partially returned position. In regard to claims 5 and 8, Boudreaux et al. teach a firing spring 38 and a closure spring 52 (see para. 0059). In regard to claim 6, Boudreaux et al. teach that the end effector 10 comprises at least one electrode to deliver energy and the handle assembly 4 includes mechanisms for delivering the energy to the electrodes (see para. 0038-0039). An energy circuit 266 is formed integrally with the handle assembly 4 and an energy switch connection 286 couples the energy circuit 266 to the energy delivery button 22 (see Fig. 22 and para. 0065). An end of stroke switch 284 is configured to prevent delivery of energy to the electrodes of the end effector 10 when the end effector 10 is not in a closed position (see para. 0065).
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) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Boudreaux et al. (U.S. Patent Application Publication No. 2015/0272659).
In regard to claim 10, Boudreaux et al. are silent as to the shaft 12 being flexible. However, it is well known in the surgical arts to have surgical devices that are flexible depending upon the surgical application (e.g., tight or narrow spaces to access). Furthermore, the term “flexible” is a matter of degree as even some rigid surgical device structures having a degree of flexibility. Thus, it would have been obvious for one of ordinary skill in the art at the effective filing date of the invention to make the shaft 12 of Boudreaux et al. flexible in order to equip the device with the ability to navigate tight or narrow spaces during surgical procedures.
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