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 on August 4th 2026 has been entered. Claims 1-4 and 22-27 remain pending in the application. Claims 5-13 are withdrawn and claims 14-21 have been cancelled. Applicant’s amendments to the claim 26 have overcome the objection previously set forth in the Final Office Action mailed on June 11th 2026.
Response to Arguments
Applicant’s arguments, see pages 8-10, filed on August 4th 2026, with respect to the 35 U.S.C 102(a)(1) rejection of claims 23-25 has been fully considered and are persuasive. The finality of the previous action has been withdrawn. A new grounds of rejection is now being applied to the claims.
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 22 and 27 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 pre-AIA the applicant regards as the invention.
Claims 22 and 27 recite the limitation “wherein the first and second blades are removed by moving the first and second blades in a distal direction and replaced by moving replacement first and second blades in a proximal direction”. It is unclear if the steps of replacing/removing the blades are trying to be claimed or just stating that the blades themselves are capable of being removed/replaced. It is noted that these claims recite steps of use rather than structural components. A single claim covering both an apparatus and a method of using it is improper. It is suggested to use terms such as “configured to” in order to functionally recite the method of use rather than positively claiming the method.
Claim Rejections - 35 USC § 102
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.
Claims 23-24 and 27 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wallace (US Pub. No. 2019/0374297) herein referred to as “Wallace”.
Regarding Claim 23, Wallace teaches a surgical tool 100, comprising: a drive housing (Figs. 1-11); an elongate shaft 102 extending distally from the drive housing (Fig. 16A and [0113], [0133]); a wrist 106 arranged at a distal end of the shaft (Figs. 16A-16B, 24A-24H); and an end effector 108 operatively coupled to the wrist 106 (Fig. 16A-16B, 24A-24H and [0108] -[0113] and [0126]-[0127]) and including: first and second blade pulleys 122/124 rotatably mounted to the wrist 106 by a first axle 160 extending through both the first and second blade pulleys 122/124, wherein the first and second pulleys are rotatable about a pivot axis extending through the first axle 160 (Figs. 24B, 24E and [0158]); first and second blade holders (156/158 Fig. 24B) mounted to the first and second blade pulleys 122/124, respectively, and cooperatively defining an interior (the interior of link 126, Figs. 24A-24H); first and second blades 118/120 mountable to the first and second blade holders, respectively (Figs. 24A-24H, [0159]-[0163]), such that rotational movement of the first and second blade pulleys correspondingly moves the first and second blades between closed and open positions ([0009], [0157]); and a blade retention system (proximal ends of each jaw including openings and pins 128/130) that releasably secures the first and second blades 118/120 to the first and second blade holders 156/158 (by passing the pins 132/134 through openings 166/168 [0159]), respectively, and allows a user to manually remove and replace the first and second blades (given the broadest reasonable interpretation, by taking the pins apart, the jaws are configured to be manually removed by a user).
Regarding Claim 24, Wallace teaches wherein the blade retention system includes:
a boss extending laterally outward from a side surface of each blade (“first link pin 132 may be integrally formed with the first jaw member 118 … second link pin 134 may be integrally formed with the second jaw member 120” [0121]); and upper and lower retention mechanisms (depending on how the instrument is held the openings 162/164 and similarly two other openings arranged on 153/154 in view of “first link pin 132 may be integrally formed with the first jaw member 118 … second link pin 134 may be integrally formed with the second jaw member 120” [0121] are interpreted to be the upper and lower retention mechanism) provided on each blade holder 156/158 (See the annotated figure below) and arranged within the interior (the interior of link 126), the upper and lower retention mechanisms being engageable with the boss 132/134 of a corresponding one of the first and second blades 118/120 to removably secure the corresponding one of the first and second blades within the interior (Fig. 24B and [0121]-[0122] and [0160]).
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Regarding Claim 27, Wallace teaches wherein the first and second blades are (configured to be) removed by moving the first and second blades in a distal direction and replaced by moving replacement first and second blades in a proximal direction (please note that an intended use or method of operation does not patentably distinguish an apparatus from the prior art if the structural elements are identical, thus examiner takes the position that by removing the pins the jaws 118/120 which are separate elements than the link 126 and wrist 106 are configured to be removed by moving the first and second blades in a distal direction and replaced by moving replacement first and second blades in a proximal direction, please also see the 112 rejection above).
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.
Claims 1-2 and 22 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Wallace (US Pub. No. 2019/0374297).
Regarding Claim 1, Wallace teaches a surgical tool 100, comprising: a drive housing (Figs. 1-11); an elongate shaft 102 extending distally from the drive housing (Fig. 16A and [0113], [0133]); a wrist 106 arranged at a distal end of the shaft (Figs. 16A-16B, 24A-24H); and an end effector 108 operatively coupled to the wrist 106 (Fig. 16A-16B, 24A-24H and [0108]-[0113] and [0126]-[0127]) and including: first and second blade pulleys 122/124 rotatably mounted to the wrist 106 ([0133]), the first pulley 122 including a first pulley pin (“proximal end of the first jaw member 118 can be connected to the first pulley 122 by a first drive pin 128. The first drive pin 128 may be integrally formed with the first jaw member 118 or the first pulley 122” [0118]) and the second pulley 124 including a second pulley pin (“Similar to the first drive pin 128, the second drive pin 130 may be integrally formed with the second jaw member 120 or the second pulley 124” [0118]); a first axle 160 extending through both the first and second blade pulleys 122/124, wherein the first and second blade pulleys are rotatable about a pivot axis extending through the first axle (Figs. 24B, 24E and [0158]); first and second blade holders (156/158 Fig. 24B) mounted to the first and second blade pulleys, respectively, and cooperatively defining an interior (the interior of link 126, Figs. 24A-24H), first and second blades 118/120 mountable to the first and second blade holders, respectively (Figs. 24A-24H, [0159]-[0163]), such that rotational movement of the first and second blade pulleys correspondingly moves the first and second blades between closed and open positions ([0009], [0157]); and a blade retention system (proximal ends of each jaw including openings and pins 128/130) that releasably secures the first and second blades 118/120 to the first and second blade holders 156/158 (by passing the pins 132/134 through openings 166/168 [0159]), respectively, and allows a user to manually remove and replace the first and second blades (given the broadest reasonable interpretation, by taking the pins apart, the jaws are configured to be manually removed by a user); although Wallace teaches “first pulley 122 may also include a hole 180 for receiving the first drive pin 128… second pulley 124 may also include a hole 184 for receiving the second drive pin 130” [0158] in view of the disclosure in [0118] which the pins are integrally formed on the pulleys, examiner takes the position that the openings 180/182 would be provided at the proximal ends of the jaws 118/120 in order to receive pins 128/130; furthermore, Walace teaches “the ears 156, 158 of the first and second pieces 153, 154 of the link 126 form a slot or channel. The pulley pin 160 rides within and contacts this channel during motion of the instrument 100. This contact provides an added point of stability, which can stabilize the instrument 100 while the drive pins 128, 130 overlap” in [0162]; thereby, Examiner takes the position that since the pulleys 122/124 are shown positioned within the interior of link 126 thus on the inner sides of ears 156/158 that either the pins 128/130 pass from the pulley through each of the slot or channels of 156/158 in order to reach the openings 180/184 of the jaws or alternatively it would have been obvious to one having ordinary skill in the art prior to the effective filing date of the current invention to have the pins pass through the channel or slot to reach the jaws for added stability, which in that case the first blade holder 156 includes a first aperture (slot or channel) receiving the first pulley pin 128 and the second blade holder 158 includes a second aperture (slot or channel) receiving the second pulley pin 130.
Regarding Claim 2, Wallace teaches wherein the blade retention system includes:
a boss extending laterally outward from a side surface of each blade (“first link pin 132 may be integrally formed with the first jaw member 118 … second link pin 134 may be integrally formed with the second jaw member 120” [0121]); and upper and lower retention mechanisms (depending on how the instrument is held the openings 162/164 and similarly two other openings arranged on 153/154 in view of “first link pin 132 may be integrally formed with the first jaw member 118 … second link pin 134 may be integrally formed with the second jaw member 120” [0121] are interpreted to be the upper and lower retention mechanism) provided on each blade holder 156/158 (See the annotated FIG above) and arranged within the interior (the interior of link 126), the upper and lower retention mechanisms being engageable with the boss 132/134 of a corresponding one of the first and second blades 118/120 to removably secure the corresponding one of the first and second blades within the interior (Fig. 24B and [0121]-[0122] and [0160]).
Regarding Claim 22, Wallace teaches wherein the first and second blades are (configured to be) removed by moving the first and second blades in a distal direction and replaced by moving replacement first and second blades in a proximal direction (please note that an intended use or method of operation does not patentably distinguish an apparatus from the prior art if the structural elements are identical, thus examiner takes the position that by removing the pins the jaws 118/120 which are separate elements than the link 126 and wrist 106 are configured to be removed by moving the first and second blades in a distal direction and replaced by moving replacement first and second blades in a proximal direction, please also see the 112 rejection above).
Claims 1-2 and 22 are rejected under 35 U.S.C 103 as being unpatentable over Johnson et al (US20220338891) herein referred to as “Johnson” in view of Wallace.
Regarding claim 1, Johnson discloses: A surgical tool, comprising: ([0091] the medical instrument is referred to as a surgical tool) a drive housing; ([0127] the surgical tool includes a drive housing) an elongate shaft extending distally from the drive housing; ([0091] the surgical tool comprises an elongate shaft which extends distally from the instrument base) a wrist arranged at a distal end of the shaft; ([0092] the wrist is at the distal end of the shaft) and an end effector operatively coupled to the wrist ([0092] the distal end of the shaft is connected to an end effector which is coupled to the wrist) and including: first and second blade pulleys rotatably mounted to the wrist, ([0139] first and second pulleys rotatably mounted to the wrist) the first pulley including a first pulley pin and the second pulley including a second pulley pin; (See FIG 20A pins 2004a and 2004b respectively which is seen as the first and second pulley pins) first and second blade holders mounted to the first and second blade pulleys, respectively, and cooperatively defining an interior, ([0150] blade pulleys with recesses (defining an interior) and an aperture which constitute the blade holders) the first blade holder includes a first aperture receiving the first pulley pin and the second blade holder includes a second aperture receiving the second pulley pin; (See FIG 20A and [0155] where 2006a and 2006b are seen as the apertures where the pins attach for the respective pulley pins) first and second blades mountable to the first and second blade holders, respectively, such that rotational movement of the first and second blade pulleys correspondingly moves the first and second blades between closed and open positions; ([0154] jaws, here interpreted to be blades, are rotatably coupled such that movement of their respective pulleys cause them to move, [0155] between open and closed positions) and a blade retention system that releasably secures the first and second blades to the first and second blade holders, respectively, and allows a user to manually remove and replace the first and second blades (See FIG 23 element 2204 needs to be moved in a distal direction to be removed and in a proximal direction to be reattached), however, Johnson does not explicitly disclose: a first axle extending through both first and second blade pulleys, wherein the first and second blade pulleys are rotatable about a pivot axis extending through a first axle;
Wallace discloses: a first axle extending through both first and second blade pulleys, (first axle 160 extending through blade pulleys 122/124) wherein the first and second blade pulleys are rotatable about a pivot axis extending through a first axle; (Figs. 24B, 24E and [0158]);
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the blade pulley as disclosed in Johnson to incorporate the axle as disclosed in Wallace. The motivation being that to prevent or reduce instability in the instrument. (Wallace [0159]).
Regarding claim 2, Johnson discloses: The surgical tool of claim 1, however Johnson does not explicitly disclose: wherein the blade retention system includes: a boss extending laterally outward from a side surface of each blade; and upper and lower retention mechanisms provided on each blade holder and arranged within the interior, the upper and lower retention mechanisms being engageable with the boss of a corresponding one of the first and second blades to removably secure the corresponding one of the first and second blades within the interior.
Wallace discloses: wherein the blade retention system includes: a boss extending laterally outward from a side surface of each blade; ([0121] the first link pin 132 may be integrally formed with the first jaw member 118 and the second link pin 134 may be integrally formed with the second jaw member 120) and upper and lower retention mechanisms (depending on how the instrument is held the openings 162/164 and similarly two other openings arranged on 153/154 in view of “first link pin 132 may be integrally formed with the first jaw member 118 … second link pin 134 may be integrally formed with the second jaw member 120” [0121] are interpreted to be the upper and lower retention mechanism) provided on each blade holder (See the annotated FIG above) and arranged within the interior, (the interior of link 126) the upper and lower retention mechanisms being engageable with the boss of a corresponding one of the first and second blades to removably secure the corresponding one of the first and second blades within the interior (See FIG 24B and [0121]-[0122] and [0160]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the blade pulleys as disclosed in Johnson to include the boss as disclosed in Wallace. The motivation being that this provides mechanical advantage to the instrument. (Wallace [0122]).
Regarding claim 22, Johnson teaches: The surgical tool of claim 1, wherein the first and second blades are removed by moving the first and second blades in a distal direction and replaced by moving replacement first and second blades in a proximal direction (See FIG 23 element 2204 needs to be moved in a distal direction to be removed and in a proximal direction to be reattached).
Claims 23, 24, and 27 are rejected under 35 U.S.C 103 as being unpatentable over Johnson in view of Wallace.
Regarding claim 23, Johnson teaches: A surgical tool, comprising: ([0091] the medical instrument is referred to as a surgical tool) a drive housing; ([0127] the surgical tool includes a drive housing) an elongate shaft extending distally from the drive housing; ([0091] the surgical tool comprises an elongate shaft which extends distally from the instrument base) a wrist arranged at a distal end of the shaft; ([0092] the wrist is at the distal end of the shaft) and an end effector operatively coupled to the wrist ([0092] the distal end of the shaft is connected to an end effector which is coupled to the wrist) first and second blades mountable to the first and second blade holders, respectively, such that rotational movement of the first and second blade pulleys correspondingly moves the first and second blades between closed and open positions; ([0154] jaws, here interpreted to be blades, are rotatably coupled such that movement of their respective pulleys cause them to move, [0155] between open and closed positions) and a blade retention system that releasably secures the first and second blades to the first and second blade holders, respectively, and allows a user to manually remove and replace the first and second blades (See FIG 23; Element 2204 which is seen as the blade releasably attaches to element 2202 which is seen as the blade holder). However, Johnson does not explicitly disclose: and including: first and second blade pulleys rotatably mounted to the wrist by a first axle extending through both the first and second blade pulleys, (See FIG 25 where 2506 is seen as the axle extending through both blade pulleys) wherein the first and second pulleys are rotatable about a pivot axis extending through the first axle; ([0181] piece 2506 which is seen as the axle allows the pulleys to be rotatable) first and second blade holders mounted to the first and second blade pulleys, respectively, and cooperatively defining an interior; ([0150] blade pulleys with recesses (defining an interior) and an aperture which constitute the blade holders)
Wallace discloses: and including: first and second blade pulleys rotatably mounted to the wrist by a first axle extending through both the first and second blade pulleys, (See FIG 24B; The first and second blade pulleys 122 and 124 mounted to wrist 106 by first axle 160 extending through both the first and second blade pulleys) wherein the first and second pulleys are rotatable about a pivot axis extending through the first axle; (Figs. 24B, 24E and [0158]); first and second blade holders (156/158 Fig. 24B) mounted to the first and second blade pulleys, respectively, and cooperatively defining an interior; (the interior of link 126, Figs. 24A-24H), first and second blades 118/120 mountable to the first and second blade holders, respectively (Figs. 24A-24H, [0159]-[0163]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the blade pulleys as disclosed in Johnson to include an axle as disclosed in Wallace. The motivation being to prevent or reduce instability in the instrument. (Wallace [0159]).
Regarding claim 24, Johnson teaches: The surgical tool of claim 23, however, Johnson does not explicitly disclose: wherein the blade retention system includes: a boss extending laterally outward from a side surface of each blade; and upper and lower retention mechanisms provided on each blade holder and arranged within the interior, the upper and lower retention mechanisms are engageable with the boss of a corresponding one of the first and second blades to removably secure the corresponding one of the first and second blades within the interior.
Wallace discloses: wherein the blade retention system includes: a boss extending laterally outward from a side surface of each blade; ([0121] the first link pin 132 may be integrally formed with the first jaw member 118 and the second link pin 134 may be integrally formed with the second jaw member 120) and upper and lower retention mechanisms (depending on how the instrument is held the openings 162/164 and similarly two other openings arranged on 153/154 in view of “first link pin 132 may be integrally formed with the first jaw member 118 … second link pin 134 may be integrally formed with the second jaw member 120” [0121] are interpreted to be the upper and lower retention mechanism) provided on each blade holder (See the annotated FIG above) and arranged within the interior, (the interior of link 126) the upper and lower retention mechanisms are engageable with the boss of a corresponding one of the first and second blades to removably secure the corresponding one of the first and second blades within the interior (See FIG 24B and [0121]-[0122] and [0160]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the blade pulleys as disclosed in Johnson to include the boss as disclosed in Wallace. The motivation being that this provides mechanical advantage to the instrument. (Wallace [0122]).
Regarding claim 27, Johnson teaches: The surgical tool of claim 23, wherein the first and second blades are removed by moving the first and second blades in a distal direction and replaced by moving replacement first and second blades in a proximal direction (See FIG 23 element 2204 needs to be moved in a distal direction to be removed and in a proximal direction to be reattached).
Allowable Subject Matter
Claims 3, 4, 25 and 26 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.
Regarding claims 3 and 25, Johnson teaches: The surgical tool of claim 24, however Johnson in view of Wallace do not teach the combination of the elements in addition to a longitudinal channel being defined by the first and second blade holders within the interior and is sized to receive the boss of each blade, and wherein the upper and lower retention mechanisms comprise flexible arms provided on upper and lower walls of the longitudinal channel. It would not be obvious to modify this because the longitudinal channel of Johnson is already used to receive the jaw pins.
Regarding claims 3 and 25 Wallace teaches wherein a longitudinal channel is defined by the first and second blade holders within the interior and is sized to receive the boss of each blade (the interior of link 126 is sized to receive pins 132/134 within the interior, the spacing between walls 158 is here interpreted to be a longitudinal channel); however, neither alone or in combination teaches wherein the upper and lower retention mechanisms comprise flexible arms provided on upper and lower walls of the longitudinal channel.
Claims 4 and 26, are objected to due to dependency over claims 3 and 25.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTINA M GANAN-SINGH whose telephone number is (571)272-3194. The examiner can normally be reached Monday to Friday 7:30am to 5:00pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joanne M Rodden can be reached at 3032974276. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/C.G.S/Examiner, Art Unit 3794
/JOANNE M RODDEN/Supervisory Patent Examiner, Art Unit 3794
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