DETAILED ACTION
This action is in response to amendments received on 3/18/2026. Claims 1-20 were previously pending. Claims 1-2, 4, 6, 13 and 19-20 have been amended, claims 7-12 canceled and new claims 21-26 added. A complete action on the merits of claims 1-20 follows 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 .
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.
Election/Restrictions
Newly submitted claims 23-26 directed to an invention that is independent or distinct from the invention originally claimed for the following reasons: Claims 23-26 are directed to a method of manufacturing a jaw holder for a jaw, which is distinct and searchable in a different area than an end-effector of claim 1.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 23-26 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added 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.
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 1-3, 5, 13, 15 and 17-22 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Murrell (US Pub. No. 2019/0105099).
Regarding Claim 1, Murrell teaches an end effector for a surgical tool (Fig. 16), comprising:
a jaw 1604 including a shank (1714 as seen in Figs. 17-18B, [0115]) and a contact plate 1706 forming part of the shank (Figs. 16-18B);
a jaw holder 1606 secured to the jaw and providing:
a first molded component 1618a defining a cavity (see the annotated drawing below, Figs. 16-20B and [0112]-[0119]);
a cable clip 1804 received within the cavity (Figs. 18A-20B and [0118], [0122]); and
a second molded component 1618b overmolded onto the first molded component and at least a portion of the cable clip, and filling the cavity ([0112], [0122]-[0124] and Figs. 16-20B); and
an electrical conductor 1614 extending within the cavity (see the annotated drawing below) and including an insulation sheath (“a supply conductor 1616 encased in an insulative covering” [0111]) and a supply conductor 1616 extending through the insulation sheath and electrically coupled to the contact plate 1706 to supply electrical energy to the jaw (“a supply conductor 1616 encased in an insulative covering” [0111], also see generally [0111]-[0113] and [0118]-[0122]), wherein the cable clip entirely covers an exposed portion of the insulation sheath within the cavity (Figs. 16-19 show that cable holder 1804 entirely covers “an exposed portion of the insulation sheath” surrounding cable 1616, which is further covered by the second portion 1618b, see the following annotated drawing), and
wherein the second molded component encapsulates and electrically insulates the contact plate and an exposed portion of the supply conductor (Figs. 16-20B and [0112]-[0113]).
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Regarding Claim 2, Murrell teaches, wherein the first molded component comprises one or more retention features arranged to engage and retain the electrical conductor within the cavity (Figs. 16-19 and [0118], [0122] and “one or more retention features defined in the cable passage to retain the electrical conductor within the cable passage” [0157]).
Regarding Claim 3, Murrell teaches, wherein the first molded component is overmolded on top of a portion of the shank and the contact plate (Figs. 16-19).
Regarding Claim 5, Murrell teaches, wherein the cable clip defines a raised shoulder and material of the second molded component fills a volume generated by the raised shoulder over the cable clip (see the annotated drawing above and [0122]).
Regarding Claim 13, Murrell teaches an end effector for a surgical tool (Fig. 16), comprising:
a jaw 1604 including a shank (1714 as seen in Figs. 17-18B, [0115]) and a contact plate 1706 forming part of the shank (Figs. 16-18B);
a jaw holder 1606 secured to the jaw and providing a molded component 1618a overmolded onto portions of the shank and the contact plate 1706 (Figs. 16-18B and [0112]-[0119]);
an electrical conductor 1614 arranged within the jaw holder and including an insulation sheath (“a supply conductor 1616 encased in an insulative covering” [0111]) and a supply conductor 1616 extending through the insulation sheath electrically coupled to the contact plate to supply electrical energy to the jaw ([0111]-[0113] and [0118]-[0122]);
a cavity defined in the jaw holder 1606 and exposing portions of the jaw and the electrical conductor (see the annotated drawing above, also see Figs. 16-20B); and
a filler material (“second portion 1618b may be configured to fully encapsulate and insulate the supply conductor 1616 at the jaw 1604” [0112]) that covers exposed portions of the jaw and the electrical conductor within the cavity ([0112], [0123] and Figs. 16-20B).
Regarding Claim 15, Murrell teaches, wherein the filler material 1618b comprises a low-temperature and low-pressure casting received within and filling the cavity ([0112] and [0123]-[0124]).
Regarding Claim 17, Murrell teaches, wherein the filler material 1618b comprises a cover that exhibits a geometry configured to be received within the cavity (Figs. 20A-20B).
Regarding Claim 18, Murrell teaches wherein the cover is made of a non-conductive material and is secured to the molded component using an adhesive ([0112]-[0113] teach “second portion 1618b coupled to the first portion 1618a”; however, does not specify that it is secured to it using an adhesive. since Murrell teaches the covers are coupled together, it is either coupled to the first portion 1618a (here interpreted to be the molded component) using an adhesive or alternatively, any other means, since applicant has not disclosed that the adhesive solves any stated problem or is for any particular purpose and it appears that the invention would perform equally well with adhesive or any other means of attachment. Furthermore, "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted) (Claim was directed to a novolac color developer. The process of making the developer was allowed. The difference between the inventive process and the prior art was the addition of metal oxide and carboxylic acid as separate ingredients instead of adding the more expensive pre-reacted metal carboxylate. The product-by-process claim was rejected because the end product, in both the prior art and the allowed process, ends up containing metal carboxylate. The fact that the metal carboxylate is not directly added, but is instead produced in-situ does not change the end product).
Regarding Claim 19, Murrell teaches an end effector for a surgical tool (Figs. 16-20B), comprising:
a jaw 1604 including a shank (1714 as seen in Figs. 17-18B, [0115]) and a contact plate 1706 forming part of the shank (Figs. 16-18B);
a jaw holder 1606 secured to the jaw and providing:
a first molded component 1618a defining a cavity (see the annotated figure above) and a raised thin-walled rib arranged within the cavity (the wall area of the first portion 1618a that outlines the cavity and is extended in the cavity since the cavity is defined to be the open section annotated on the drawing above) that circumscribes at least a portion of the interior of the cavity (see the annotated figure above); and
a second molded component 1618b overmolded onto the first molded component and filling the cavity (Figs. 16-20B); and
an electrical conductor 1614 extending within the cavity and including a supply conductor 1616 electrically coupled to the contact plate 1706 to supply electrical energy to the jaw ([0111]-[0113] and [0118]-[0122]),
wherein the second molded component 1618b encapsulates and electrically insulates the contact plate and an exposed portion of the supply conductor (Figs. 16-20B and [0112]-[0113]).
Regarding Claim 20, Murrell teaches, wherein the electrical conductor includes an insulation sheath (“a supply conductor 1616 encased in an insulative covering” [0111]), and the second molded component contacts the insulation sheath (Figs. 16-20B).
Regarding Claim 21, Murrell teaches, wherein the raised thin-walled rib facilitates a lap joint between the first molded component and the second molded component (“the second portion 1618b may be overmolded onto the first portion 1618a via a second injection molding shot. In some embodiments” [0112] through the thin-walled rib on the side of the cavity as seen in Figs. 19-20B).
Regarding Claim 22, Murrell teaches, wherein the cable clip 1804 provides a positive pressure shutoff on the insulative sheath (“one or more retention features 1804 may be provided in the cable passage 1802 to help capture the electrical conductor 1614” [0118] and “retention features 1804 may be configured to engage the outer insulative layer of the electrical conductor 1614 and thereby help retain the electrical conductor 1614 within the cable passage 1802. As illustrated, the retention features 1804 may comprise angled teeth or protrusions that extend radially into the cable passage 1802, but could alternatively comprise any other type of structure capable of gripping the outer surface of the electrical conductor 1614. In operation, the retention features 1804 substantially prevent the electrical conductor 1614 from reversing back through the cable passage 1802. This may prove advantageous in providing strain relief on the electrical conductor 1614 by helping to mitigate strain over several cycles of using the end effector 1602 (FIG. 16). Moreover, the retention features 1804 may prove advantageous in helping prevent the electrical conductor 1614 from moving during a second overmold shot used to form the second portion 1618b (FIGS. 20A and 20B)” [0122]; thereby the retention feature holds and engages the cable without risk of damage to the cable and thereby interpreted to provide a positive pressure shutoff on the insulative sheath).
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.
Claims 4, 6 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Murrell.
Regarding Claims 4 and 6, Murrell teaches, “the retention features 1804 substantially prevent the electrical conductor 1614 from reversing back through the cable passage 1802. This may prove advantageous in providing strain relief on the electrical conductor 1614 by helping to mitigate strain over several cycles of using the end effector 1602 (FIG. 16). Moreover, the retention features 1804 may prove advantageous in helping prevent the electrical conductor 1614 from moving during a second overmold shot used to form the second portion 1618b” in [0122]; however, does not specifically teach wherein the cable clip is received within the cavity via at least one of an interference fit, a shrink fit, a press fit, or one or more flexible mechanical fasteners or any combination thereof or wherein the first and second molded components and the cable clip are made of a non-conductive material selected from the group consisting of a plastic, a thermoplastic or thermosetting polymer, a composite material or any combination thereof ([0124] and [0157]-[0158]).
It would have been obvious to one having ordinary skill in the art prior to the effective filing date of the current invention to position the retainer feature in the cavity by one of the known means of interference fit, a shrink fit, a press fit, or one or more flexible mechanical fasteners, and any combination thereof since the examiner takes Official Notice of the equivalence of all of these coupling means for their use in the coupling art at the selection of any of these known equivalents to interference fit, a shrink fit, a press fit, or one or more flexible mechanical fasteners, and any combination thereof would be within the level of ordinary skill and also to make the retainer feature of an insulation material in order to better helping prevent the electrical conductor from moving as well as ensuring no electric short occurs if the insulation of the electrical cable is exposed to the component.
Regarding Claim 16, Murrell teaches, “the material for the second portion 1618b (e.g., plastic) fills and encapsulates a cavity 2002 that contains the contact plate 1706 (FIG. 19) and the exposed portion of the supply conductor 1616 (FIG. 19)” in [0124]; however, does not specifically teach wherein the low-temperature and low-pressure casting comprises silicone. In a different embodiment, Murrell teaches “the first and second spacers 908a,b may be made of a lubricious (e.g., slippery or slick) material. Suitable lubricious materials include, but are not limited to, nylon, polished metal, a smooth plastic, or any combination thereof. In other embodiments, however, the first and second spacers 908a,b may be coated with a lubricious substance or material such as, but not limited to, oil, graphite, TEFLON™, silicone, or any combination thereof” [0086]. It would have been obvious to one having ordinary skill in the art at the time the invention was made to make the second portion 1618b comprise silicone, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Murrell as applied above in view of Achterhoff (US Pub. No. 2023/0389985).
Regarding Claim 14, Murrell teaches wherein the filler material 1618b comprises “the material for the second portion 1618b (e.g., plastic) fills and encapsulates a cavity 2002 that contains the contact plate 1706 (FIG. 19) and the exposed portion of the supply conductor 1616 (FIG. 19)” in [0124]; however, does not teach its material comprises a potting of an epoxy material received within and filling the cavity.
In the same field of surgical instruments Achterhoff teaches “the aforementioned interfaces are sealed with an epoxy potting material, e.g., as illustratively shown at 1024, to fill, or substantially fill, these gaps in the handle housing” in [0109].
it would have been obvious to one having ordinary skill in the art prior to the effective filing date of the current invention to couple and seal the second portion 1618b using a potting of an epoxy material received within and filling the cavity in order to substantially fill the gaps therebetween and also since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
Response to Arguments
Applicant's arguments filed 03/18/2026 have been fully considered but they are not persuasive.
With respect to claim 1, applicant argues that the claim requires the cable clip to entirely cover an exposed portion of the insulation sheath and that retention feature 1804 does not complete cover an exposed portion of the insulation sheath. Examiner respectfully disagrees and maintains that given the broadest reasonable interpretation “an exposed portion of the sheath” is interpreted to be the section circled on the annotated drawing above, which as seen in the retention feature 1804 covers that section entirely and therefore these arguments are not found persuasive.
Furthermore, applicant’s arguments directed to claims 13 and 19 are not found persuasive since the interpretation of the reference has been changed due to amendments. Therefore, applicant’s arguments are moot because the new ground of rejection does not rely on any teaching of the reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
Other references made of record, but not relied on: Kase (US Pub. No. 2019/0159801) teaches an end effector for a surgical tool, comprising: a jaw including a shank and a contact plate; a jaw holder secured to the jaw ([0067]-[0068]) and providing: a first molded component (first resin material 146) defining a cavity (inner cavity 150) and; a second molded component overmolded (second resin material 148).
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 KHADIJEH A VAHDAT whose telephone number is (571)270-7631. The examiner can normally be reached M-F 9-6 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, 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.
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/KHADIJEH A VAHDAT/Primary Examiner, Art Unit 3794
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