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 .
DETAILED ACTION
Election/Restriction
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 21-39, drawn to a medical instrument, classified in A61B18/1445.
II. Claim 40, drawn to a method of manufacturing a medical instrument, classified in A61L31/00.
Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply:
The inventions have acquired a separate status in the art in view of their different classification.
Applicant is advised that the reply to this requirement to be complete must include (i) an election of an invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
During a telephone conversation with Eric Volz on 09/14/2026 a provisional election was made without traverse to prosecute the invention of group I, claims 21-39. Affirmation of this election must be made by applicant in replying to this Office action. Claim 40 is withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
Specification
The disclosure is objected to because of the following informalities: The first paragraph of the specification should be amended to include any updated patent information.
Appropriate correction is required.
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
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.
Claim 37 is 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.
The language of claim 37 fails to further limit the invention. Specifically, the limitation of claim 37 has already been presented in claim 36. Both claims require, “wherein the tortuous void includes a plurality of channels.”
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)(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.
Claim(s) 21-39 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Williams (US 2011/0238064).
Regarding claim 21, Williams discloses a medical instrument, comprising:(a) an end effector assembly (302A), including: (i) a first pulley configured to selectively pivot about a first axis (drive elements 306A define a first set), (ii) a first jaw projecting from the first pulley and having a first surface configured to engage a tissue (302A as a jaw), (iii) a second jaw (302B is a second jaw) having a second surface configured to engage the tissue, wherein the first and second jaws are configured to move relative to each other from an open configuration configured to receive a tissue and a closed configuration configured to compress the tissue therebetween, wherein the first and second surfaces face toward each other in the closed configuration, and (iv) a first insulating member mechanically coupling the first surface of the first jaw relative to the first pulley via a first coupler, wherein the first insulating member is configured to transmit force therethrough, wherein the first coupler is configured to prevent the first surface of the first jaw from being detached relative to the first pulley, and wherein the first insulating member is formed of a first electrically insulating material (insulated conductor 448 provides an insulated continuous electrical path from base connector 448 to both end effectors [Para 01331, 0138 (discloses that it is best to insulate the electrode at the end effector)]; [Para 0038, 0046, 0056-0062]).
Regarding claim 22, Williams discloses the medical instrument of claim 21, further comprising an elongated shaft, and wherein the end effector assembly distally projects from the elongated shaft (view figure 1D or 2A).
Regarding claim 23, Williams discloses the medical instrument of claim 21, wherein the end effector assembly further includes:(i) a second pulley configured to selectively pivot about a second axis, (ii) the second jaw projecting from the second pulley and having the second surface configured to engage a tissue, (iii) a second insulating member mechanically coupling the second surface of the second jaw relative to the second pulley via a second coupler, wherein the second insulating member is configured to transmit force therethrough, wherein the second coupler is configured to prevent the second surface of the second jaw from being detached relative to the second pulley, and wherein the second insulating member is formed of a second electrically insulating material (second end effector 308B with second set of pulleys 306B; (insulated conductor 448 provides an insulated continuous electrical path from base connector 448 to both end effectors [Para 01331, 0138 (discloses that it is best to insulate the electrode at the end effector)]; [Para 0038, 0046, 0056-0062]).
Regarding claim 24, Williams discloses the medical instrument of claim 23, wherein the first and second electrically insulating materials are each a plastic material [Para 0140].
Regarding claim 25, Williams discloses the medical instrument of claim 21, wherein the first coupler includes a mechanical interlock extending through the first insulating member, wherein the mechanical interlock is configured to prevent the first surface of the first jaw from being detached relative to the first pulley (308 with pin 310 with crimp element 502).
Regarding claims 26-28, Williams discloses the medical instrument of claim 21, wherein the first coupler includes a tortuous void, defined at least in part by the first jaw, includes a plurality of channels, that receives the first insulating member such that the first insulating member mechanically couples the first surface of the first jaw relative to the first pulley [Para 0038, 0046, 0058-0062]; (insulated conductor 448 provide an insulated continuous electrical path from base connector 474 to both end effectors [Para 0131, 0138].
Regarding claim 29, Williams discloses the medical instrument of claim 28, wherein at least a portion of the plurality of channels defines an S-shape [Para 0080-0081,0094].
Regarding claim 30, Williams discloses the medical instrument of claim 21, wherein at least a portion of the first jaw is formed of an electrically conductive material [Para 0123].
Regarding claim 31, Williams discloses the medical instrument of claim 30, wherein the electrically conductive material is a metal material [Para 0047].
Regarding claim 32, Williams discloses the medical instrument of claim 21, further comprising:(a) a wrist; and (b) a plurality of cables extending through the wrist (view figures 2H and 2I).
Regarding claim 33, Williams discloses the medical instrument of claim 32, wherein the wrist includes a distal clevis and a proximal clevis (view figures 2H and 2I).
Regarding claim 34, Williams discloses the medical instrument of claim 21, wherein the end effector assembly further includes a receptacle configured to attach to an electrical cable for connection to an electrical generator [Para 0108-0110].
Regarding claim 35, Williams discloses the medical instrument of claim 21, wherein the end effector assembly is configured to apply bipolar electrical energy [Para 0109 and 0123].
Regarding claim 36 and 37, Williams discloses a medical instrument, comprising:(a) an elongated shaft; and (b) an end effector (302A) assembly distally projecting from the elongated shaft and configured to apply bipolar energy, including: (i) a first pulley configured to selectively pivot about a first axis (drive elements 306A define a set), (ii) a first jaw (302A) projecting from the first pulley and having a first surface configured to engage a tissue, (iii) a second jaw (302B) having a second surface configured to engage the tissue, wherein the first and second jaws are configured to move relative to each other from an open configuration configured to receive a tissue and a closed configuration configured to compress the tissue therebetween, wherein the first and second surfaces face toward each other in the closed configuration, and (iv) a first insulating member mechanically coupling the first surface of the first jaw relative to the first pulley via a first coupler, wherein the first insulating member is configured to transmit force therethrough, wherein the first coupler is configured to prevent the first surface of the first jaw from being detached relative to the first pulley, and wherein the first insulating member is formed of a first electrically insulating material, wherein the first coupler includes a tortuous void that receives the first insulating member such that the first insulating member mechanically couples the first surface of the first jaw relative to the first pulley, wherein the tortuous void is defined at least in part by the first jaw, and wherein the tortuous void includes a plurality of channels [Para 0038, 0046, 0058-0062]; (insulated conductor 448 provide an insulated continuous electrical path from base connector 474 to both end effectors [Para 0131, 0138].
Regarding claim 38, Williams discloses the medical instrument of claim 37, wherein at least a portion of the first jaw is formed of an electrically conductive material [Para 0047].
Regarding claim 39, Williams discloses the medical instrument of claim 21, further comprising:(a) a wrist including a distal clevis and a proximal clevis; and (b) a plurality of cables extending through the wrist (view figures 2H and 2I).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AMANDA L ZINK whose telephone number is (571)270-7103. The examiner can normally be reached Monday-Friday 7-12 EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joanne Hoffman can be reached at (303)297-4276. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/A.L.Z/Examiner, Art Unit 3794
/MICHAEL F PEFFLEY/Primary Examiner, Art Unit 3794
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