DETAILED ACTION
Currently claims 1-4, 7, 12-17, and 21-22 are being examined, while the remaining claims have been cancelled or withdrawn.
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 (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.
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 filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual 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/apply/applying-online/eterminal-disclaimer.
Claims 1-4, 7, 12-17, and 21-22 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18/590,168 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the copending claims anticipate the claims of the application. Accordingly, the application claims are not patentably distinct from the copending claims. Here, the more specific copending claims encompass the broader application claims. Following the rationale in In re Goodman cited in the preceding paragraph, if applicant were to be granted a patent containing a claim for the specific narrow invention, applicant may not obtain a second patent with a claim for the generic or broader invention without first submitting an appropriate terminal disclaimer.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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.
Claim(s) 12-17, 21, and 22 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Murrell, U.S. 2019/0105099 (hereinafter Murrell).
Regarding claim 12, Murrell discloses (note figs. 16-20B) an end effector comprising: a jaw (1604) including a shank (1704) and a contact plate (1706) forming part of the shank, the jaw further defining an internal bore (space around ‘1706’); a jaw holder (1606; note paragraphs 112 and 117) comprising a molded component capable of being overmolded onto portions of the shank and the contact plate in a single shot, thereby creating the molded component as a monolithic part made of a single material (note paragraph 112); a cable passageway (1802) defined in the molded component and aligned with and in communication with the internal bore (note paragraph 118); and an electrical conductor (1614) including an insulation sheath (note paragraph 111) and a supply conductor (1616), the electrical conductor being receivable within the cable passageway, and an exposed portion of the supply conductor being capable of being received within the internal bore after the molded component is formed, wherein the internal bore ‘extends outside’ the molded component (i.e., communicates with the outside of the molded component – via ‘1710’ and ‘1806’; note paragraph 119). It should be noted that 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" (MPEP 2113).
Regarding claim 13, Murrell discloses (see above) an end effector wherein the molded component defines a central aperture (1612) that aligns with an axle aperture (1712) defined in the jaw (note paragraphs 110 and 116).
Regarding claim 14, Murrell discloses (see above) an end effector wherein the internal bore is necessarily defined in the shank (note fig. 17).
Regarding claim 15, Murrell discloses (see above) an end effector wherein the supply conductor is coupled to the jaw at the internal bore to supply electrical energy to the jaw (note paragraphs 120-121).
Regarding claim 16, Murrell discloses (see above) an end effector wherein a pinhole aperture (1710) is defined in the jaw ‘outside of the molded component’ (i.e., disposed outside of the molded component prior to the overmolding step; after the overmolding step the pinhole aperture communicates with the outside of the molded component via ‘1806’ - note paragraph 119) and in communication with the internal bore, and wherein the supply conductor is welded to the jaw through the pinhole aperture (note paragraphs 120-121).
Regarding claim 17, Murrell discloses (see above) an end effector wherein the supply conductor is capable of being welded to the jaw via penetrative welding (note paragraph 121). It should be noted that 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" (MPEP 2113).
Regarding claim 21, Murrell discloses (see above) an end effector wherein the internal bore extends distally through a proximal end of the jaw (note fig. 17), and the exposed portion of the supply conductor necessarily extends through the internal bore ‘toward’ a distal end of the jaw (e.g., when the jaws are in an open state and the cited jaw extends away from the jaw holder at an oblique angle). It should be noted that “toward” has been defined as “in relation to; along a course leading to; and at a point in the direction of”, according to Merriam-Webster dictionary.
Regarding claim 22, Murrell discloses (see above) an end effector wherein the internal bore necessarily extends longitudinally through the jaw (note fig. 17), and wherein a portion of the cable passageway necessarily extends along an axis extending parallel to a longitudinal axis of the end effector (note hidden region of cable passageway depicted in fig. 19, between proximal and distal portions of electrical conductor).
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.
Claim(s) 1-4 and 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Murrell in view of Flores, U.S. 2002/0165533 (hereinafter Flores).
Regarding claim 1, Murrell discloses (note figs. 16-20B) an end effector comprising: a jaw (1604) including a shank (1704) and a contact plate (1706) forming part of the shank; an electrical conductor (1614) including an insulation sheath (note paragraph 111) and a supply conductor (1616) coupled to the contact plate to supply electrical energy to the jaw (note paragraph 115); a jaw holder (1606; note paragraphs 112 and 117) comprising a molded component capable of being overmolded onto portions of the shank, the contact plate, and the electrical conductor in a single shot, thereby creating the molded component as a monolithic part made of a single material (note paragraph 112); and a cable passage (1802; note paragraph 118) defined in the molded component through which the electrical conductor extends, wherein an annular space is necessarily defined between an outer circumference of the electrical conductor and an inner wall of cable passage (note fig. 19 - 1804’s are disposed within this space on an inner surface of ‘1802’, thereby leaving a space between ‘1802’ and ‘1614’ elsewhere; also see gap surrounding a proximal portion of ‘1616’); wherein the molded component encapsulates and electrically insulates the contact plate and an exposed portion of the supply conductor. While Murrell discloses (see above) an end effector wherein the electrical conductor is secured within the annular space defined by the cable passage therearound (via 1804’s – note paragraph 122), Murrell fails to explicitly disclose a potting material filling at least a portion of the annular space. Flores teaches (note fig. 2) a relevant apparatus comprising an electrical conductor (46) that is secured within the annular space therearound by a potting material (50) filling at least a portion of said annular space (note paragraph 30). It is well known in the art that these different lead-securing configurations (i.e., retention features vs potting material) are widely considered to be interchangeable. Therefore, it would have been obvious to a person having ordinary skill in the art at the time the invention was filed, to have modified the apparatus of Murrell to secure the electrical conductor within the annular space using a potting material filling at least a portion of said annular space. This is because this modification would have merely comprised a simple substitution of interchangeable lead-securing configurations in order to produce a similar/predictable result (see MPEP 2143). It should be noted that 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" (MPEP 2113).
Regarding claim 2, Murrell discloses (see above) an end effector wherein the molded component defines a central aperture (1612) that aligns with an axle aperture (1712) defined in the jaw (note paragraphs 110 and 116).
Regarding claim 3, Murrell discloses (see above) an end effector further comprising an axle extendable through the central aperture and the axle aperture, wherein the jaw holder is rotatable about an axis extending through the axle to thereby rotate the jaw (note paragraphs 110 and 116).
Regarding claim 4, Murrell discloses (see above) an end effector wherein the supply conductor is welded to the contact plate to facilitate communication of electrical energy from the electrical conductor to the jaw (note paragraph 121).
Regarding claim 7, Murrell discloses (see above) an end effector wherein the molded component is made of a non-conductive material selected from the group consisting of a plastic, a thermoplastic or thermosetting polymer, a composite material, and any combination thereof (note paragraph 83).
Response to Arguments
Applicant's arguments filed August 13, 2026 have been fully considered but they are not persuasive. Regarding Applicant’s argument that Murrell fails to disclose an ‘annular space’, Examiner respectfully disagrees. More specifically, Examiner maintains that Murrell discloses the claimed ‘annular space’, as can be seen in the rejection above. While Examiner acknowledges Applicant’s argument that the instant invention has said space for a reason, this does not prevent Murrell from also having the claimed space (for whatever reason). While Applicant has further argued that amended claim 1 has not been met due to the ‘potting material’ limitation, Examiner respectfully disagrees and maintains that this limitation has been met by the cited combination of references (as can be seen in the rejection above). In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., ‘using potting material to seal the cable exit while enabling the conductor to articulate’) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Regarding Applicant’s argument that Murrell fails to disclose the limitations of claim 12, Examiner respectfully disagrees. More specifically, Examiner maintains that the limitations of claim 12 have been met by Murrell as they are currently written, due to their breadth (see above rejection for specific interpretation). Furthermore, it should be noted that a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. Therefore, Examiner asserts that the claims are still met by the cited references, as can be seen above.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
U.S. 2007/0123855 (Morley).
U.S. 2022/0192732 (Mumaw).
U.S. 2010/0016853 (Burbank).
U.S. 2011/0071347 (Rogers).
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 THOMAS ANTHONY GIULIANI whose telephone number is (571)270-3202. The examiner can normally be reached Mon - Fri 9:00-5:00.
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, Joanne Rodden 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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/THOMAS A GIULIANI/Primary Examiner, Art Unit 3794
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