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 .
Response to Amendment
The amendment filed 03/03/2026 has been entered. Claims 1-3, 6-11, 13-15, and 17-24 are pending in the application.
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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-3, 6-11, 13-15, and 17-24 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 17/833302/US 12343009 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims are directed to a motorized surgical handle assembly apparatus, comprising: a selector lever configured to rotate to a locked position and an unlocked position; and a selector cam coupled to the selector lever to enable a trigger to electrically activate a motor depending on the position of the a selector lever.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-3 and 6-9 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for having a selector lever in the locked position to have the trigger configured to be electrically deactivated, does not reasonably provide enablement for having “the selector lever and the selector cam are in the locked position, the protrusion on the selector cam contacts a switch of the motorized surgical handle assembly apparatus enabling energy to flow to a drive train of the motorized surgical handle assembly apparatus”. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make the invention commensurate in scope with these claims. As claimed when the selector lever is locked and unlocked, energy is allowed to flow to drive. How can the selector lever be in the same locked position and cause two different functions (power and no power)? The instant application discloses when the selector lever is in a locked position power is deactivated and when unlocked energy is allowed to flow to drive train (instant/applicant’s specification [0053-0090]).
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 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.
(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) 1-3, is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sun et al. (US 20220031321 A1).
Regarding claim 1, Sun et al. discloses a motorized surgical handle assembly apparatus (10/12), comprising: a selector lever (safety toggle assembly 36/38) configured to rotate to a locked position and an unlocked position (firing to non-firing state) in response to a user exerting a force on the selector lever ([0108], figs. 1-5 and 25-33); and a selector cam (164) coupled to the selector lever and including a protrusion (abutment member 182), wherein the selector cam (164/182) and the selector lever (36/38) are in a first stable position in response to the selector lever being in the locked position and in a second stable position in response to the selector lever being in the unlocked position (stop 196 puts in firing state [0107-0108]) such that the selector lever remains in the locked position or the unlocked position after the user stops exerting the force on the selector lever (biasing members 170/172 secure toggle 36/38 in locked and unlocked position [0104-0108])
an electric motor (40/42); and
a power trigger (18) configured to selectively activate the electric motor (activates switches 56a and 57 on PCB 56 [0082-0085, 0105]), wherein the power trigger (18) is configured to be electrically deactivated while the selector lever is in the locked position and spaced apart from the power trigger ([0083-0085, 0104-0108], figs. 1-5 and 25-33);
wherein, when the selector lever and the selector cam are in the locked position, the protrusion (abutment member 182) on the selector cam contacts a switch (57) of the motorized surgical handle assembly apparatus enabling energy to flow to a drive train of the motorized surgical handle assembly apparatus ([0104-0108], figs. 1-5 and 25-33).
Claim(s) 1, is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Pitzen et al. (US 5553675 A).
Regarding claim 1, Pitzen et al. discloses a motorized surgical handle assembly apparatus (10, figs. 1-3), comprising: a selector lever (72) configured to rotate to a locked position and an unlocked position (forward or reverse or stop/off modes) in response to a user exerting a force on the selector lever (rotary switch 72, turned to positions 73, fig. 4); and a selector cam (ribbed control knob with detent mechanisms 62/63) coupled to the selector lever and including a protrusion (62/63), wherein the selector cam and the selector lever are in a first stable position in response to the selector lever being in the locked position and in a second stable position in response to the selector lever being in the unlocked position such that the selector lever remains in the locked position or the unlocked position after the user stops exerting the force on the selector lever (detent mechanism 63 - forward, off and reverse positions);
an electric motor (12); and
a power trigger (40) configured to selectively activate the electric motor (12), wherein the power trigger is configured to be electrically deactivated (off) while the selector lever is in the locked position (off/stop position) and spaced apart from the power trigger (col. 6, lines 46, col. 13, line 34-67, figs. 1-9);
wherein, when the selector lever and the selector cam are in the locked position, the protrusion (62/63) on the selector cam contacts a switch (61, figs. 2 and 21) of the motorized surgical handle assembly apparatus enabling energy to flow to a drive train of the motorized surgical handle assembly apparatus (col. 6, lines 46, col. 13, line 34-67, figs. 1-9 and 21).
Pitzen et al. states: “causing the motor 12 to rotate the drive member 18 either in forward or reverse (clockwise or counterclockwise) directions, or to prevent any rotation by the motor 12 even when the trigger 40 is moved to its inner position. Indicia 73 indicate when the device is in the forward, reverse or stop modes… knob 72 with an attached magnet 62 and a detent mechanism 63 with three positions that correspond to the forward, off and reverse positions. When the knob is rotated fully clockwise, the magnet 62 by its magnetic field, activates one of two hall sensors 61 to run the motor counter-clockwise when facing the output shaft. When the knob is rotated fully counter-clockwise, it will reverse the motor. A center, neutral (off) position is also included” (col. 13, lines 38-55).
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.
Claim(s) 2-3, 21, and 24, is/are rejected under 35 U.S.C. 103 as obvious over Sun et al. (US 20220031321 A1) in view of Shelton, IV et al. (US 20140001231 A1).
Regarding claims 2-3, 21, and 24, Sun et al. fails to discloses a movable handle rotatable between a proximal and distal position, configured to clamp and unclamp a jaw assembly, wherein the movable handle is allowed to clamp and unclamp the jaw assembly while the selector lever is in the locked position and a jaw assembly is closed in response to the movable handle being in the proximal position.
Shelton, IV et al. discloses motorized surgical handle assembly apparatus (2500) having a movable handle (closure trigger 2530) rotatable between a proximal and distal position configured to clamp and unclamp a jaw assembly, wherein the movable handle is allowed to clamp and unclamp the jaw assembly while the selector lever is in the locked position and a jaw assembly (1000) is closed in response to the movable handle being in the proximal position ([0354-0367], figs. 118-120 and 124-128).
Given the teachings of Sun et al. to have a trigger with a selector lever/selector cam that contacts a power switch on a circuit board, it 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 to modify the movable handle rotatable between a proximal and distal position to be configured to clamp and unclamp a jaw assembly, wherein the movable handle is allowed to clamp and unclamp the jaw assembly while the selector lever is in the locked position and a jaw assembly is closed in response to the movable handle being in the proximal position to safely prevent incorrect firing of the device, reverse a drive member, ensure proper clamping before firing and/or safety purposes (ensure steps are done in correct order) as taught by Shelton, IV et al.
Claim(s) 10-11, 13-15, and 17, is/are rejected under 35 U.S.C. 103 as obvious over Sun et al. (US 20220031321 A1) in view of Dey, IV et al. (US 20180091145 A1) and further in view of Pitzen et al. (US 5553675 A).
Regarding claims 10-11, 13-15, and 17, Sun et al. discloses a motorized surgical handle assembly apparatus (12) for a surgical stapler (10), the motorized surgical handle assembly apparatus comprising: a drive train (40, fig. 6); a drive assembly wherein the drive assembly comprises a gear rack (pinion 70/drive rack 77); a circuit board (PCB 56) having switches (56a/57), distance switches and manual retraction [0032, 0088, 0109];
a selector cam (abutment member 182) positioned adjacent to the circuit board (PCB 56) and having a protrusion; and a selector lever (safety toggle assembly 36/38) coupled to the selector cam and configured to rotate to a locked position in which the drive train is disabled from advancing the drive assembly in a distal direction,
an unlocked position (stop 196 firing state) in which the drive train is enabled to advance the drive assembly in the distal direction and thereby cause firing of staples, wherein the locked position and the unlocked positions are stable positions such that the selector lever remains in the locked position or the unlocked position after a user stops exerting force on the selector lever and a spring (biasing members 170/172) configured to move the selector cam and the selector lever to the locked position after a user stops exerting force on the selector lever after rotating the selector lever to the reverse position, wherein the spring (170/172) is configured to push the selector cam in a downward direction (stop 196 puts in firing state and 182 moves down) and teaches having a plurality of switches (56a/57, figs. 4-5) that are contacted by the trigger and selector cam on the PCB ([0083-0085, 0104-0108], figs. 1-5 and 25-33).
Sun et al. fails to explicitly disclose the circuit board with having a reverse switch and a reverse position in which the drive train is enabled to retract the drive assembly in a proximal direction, wherein the reverse position is a momentary position such that the selector lever is biased away from the reverse position when the selector lever is in the reverse position, the protrusion of the selector cam contacts the reverse switch of the circuit board such that the drive train is enabled to retract the drive assembly in the proximal direction and wherein the motorized surgical handle assembly apparatus is placed in a ready-to-fire mode in response to a second protrusion on the selector cam contacting a second switch on the circuit board.
Dey, IV et al. teaches a power tool (10) with a printed circuit board (“PCB”) 42 [0019] and control circuit (motor control unit 82) having trigger assembly (22) a circuit board (42) with a selector lever (trigger 26) configured to rotate (via pivot 30) to a locked/unlocked position and a reverse position, wherein the selector lever (trigger 26) remains in the locked position or the unlocked position after a user stops exerting force on the selector lever (torsion spring 40 biased trigger 26 toward a neutral or “home” position after actuating [0018-0029], figs. 1-7) wherein the reverse position is a momentary position such that the selector lever is biased by a spring (torsion spring 40) away from the reverse position (biased to neutral) to push a cam portion (conductors 34, 38) downward and wherein and Dey, IV et al. also teaches a trigger assembly 322 (fig. 8) with a selector cam (326) including a separate direction switch to switch to reverse [0031] and the selector cam (326) is biased/locked to neutral and also slides to unlocked positions to control speed is placed in a ready-to-fire mode in response to a second protrusion (conductors 34, 38) on the selector cam contacting a second switch on the circuit board and a drive train (motor) configured to run in reverse in response to the protrusion contacting the reverse switch of the circuit board (move and/or stop positions between 336/370 and reverse [0029-0032], figs. 1-9).
Pitzen et al. also teaches a motorized surgical handle assembly apparatus (10, figs. 1-3), with selector lever (72 with ribbed control knob with detent mechanisms 62/63) with a reverse switch and a reverse position (figs. 2 and 21) the protrusion of the selector cam (62/63) contacts the reverse switch (cam contacts a switch 61, col. 6, lines 46, col. 13, line 34-67, figs. 1-9 and 21).
Pitzen et al. states: “causing the motor 12 to rotate the drive member 18 either in forward or reverse (clockwise or counterclockwise) directions, or to prevent any rotation by the motor 12 even when the trigger 40 is moved to its inner position. Indicia 73 indicate when the device is in the forward, reverse or stop modes… knob 72 with an attached magnet 62 and a detent mechanism 63 with three positions that correspond to the forward, off and reverse positions. When the knob is rotated fully clockwise, the magnet 62 by its magnetic field, activates one of two hall sensors 61 to run the motor counter-clockwise when facing the output shaft. When the knob is rotated fully counter-clockwise, it will reverse the motor. A center, neutral (off) position is also included” (col. 13, lines 38-55).
Given the teachings of Sun et al. to have a trigger with a selector lever/selector cam that contacts a power switch on a circuit board, it 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 to modify the circuit board with having a reverse switch and a reverse position in which the drive train is enabled to retract the drive assembly in a proximal direction, wherein the reverse position is a momentary position such that the selector lever is biased away from the reverse position when the selector lever is in the reverse position, the protrusion of the selector cam contacts the reverse switch of the circuit board such that the drive train is enabled to retract the drive assembly in the proximal direction and the motorized surgical handle assembly apparatus is placed in a ready-to-fire mode in response to a second protrusion on the selector cam contacting a second switch on the circuit board to safely prevent incorrect firing of the device, reverse a drive member, (avoid overshoot/damage to the workpiece), safety return to neutral position purposes and/or for better electrical circuit board control with activated switches and/or automated purposes (automatic return) or desired amount of return as taught by Dey, IV et al. and Pitzen et al.
Allowable Subject Matter
Claims 6-9 and 22-23 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 and if a proper and if a Terminal Disclaimer is filed for copending Application No. 17/833302/US 12343009 B2.
Claims 18-21 would be allowable if a proper Terminal Disclaimer is filed for copending Application No. 17/833302/US 12343009 B2.
As allowable subject matter has been indicated, applicant's reply must either comply with all formal requirements or specifically traverse each requirement not complied with. See 37 CFR 1.111(b) and MPEP § 707.07(a).
Reasons for Allowable Subject Matter
The following is an examiner’s statement of reasons for allowance: the prior art of record fails to teach or render obvious a motorized surgical handle assembly apparatus comprising all the structural and functional limitations and further comprising, amongst other limitations/features, a selector lever configured to rotate to a locked position and an unlocked position, a selector cam coupled to the selector lever, wherein the selector cam and the selector lever are in a first stable position in response to the selector lever being in the locked position and in a second stable position in response to the selector lever being in the unlocked position, a power trigger configured to selectively activate the motor, wherein the power trigger is configured to be deactivated while the selector lever is in the locked position and spaced apart from the power trigger movable, the selector lever having a reverse cam, wherein the selector cam comprises a first surface configured to rest against the reverse cam when the selector lever is in the locked position. Though Shelton, IV et al. (US 20140001231 A1) teaches a selector lever with a cam, Shelton, IV et al. lacks having the selector lever with having a reverse cam, wherein the selector cam comprises a first surface configured to rest against the reverse cam when the selector lever is in the locked position and it would not be obvious to modify the sector lever to add another cam to the selector lever without having to modify the firing member, clamping member and handle and one of ordinary skill would recognize that a selector lever having a reverse cam, wherein the selector cam comprises a first surface configured to rest against the reverse cam when the selector lever is in the locked position would require substantial modification. Having the efficiency and speed of the added cam an effective safety feature for preventing accidental activation and provide adjustment of the device safely with the handles locked in place.
While various features of the claimed subject matter are found individually in the prior art, a skilled artisan would have to include knowledge gleaned only from the applicant's disclosure to combine or modify the teachings of the prior art to produce the claimed subject matter, and thus obviousness would not be proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). There is no teaching, suggestion, or motivation found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art to combine or modify the teachings of the prior art to produce the claimed invention, and thus obviousness would not be proper. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007).
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-3, 6-11, 13-15, and 17-20 have been considered but are moot because the new ground of rejection does not rely on all references and new object applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: ARICH (US 20230118960 A1) rotatable mode selection actuator 116 detent locking in mode selections and see references cited, form 892.
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 ROBERT LONG whose telephone number is (571)270-3864. The examiner can normally be reached M-F, 9am-5pm, 8-9pm (EST).
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, Hemant Desai can be reached on (571) 272-4458. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ROBERT F LONG/Primary Examiner, Art Unit 3731
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