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 .
Information Disclosure Statement
Receipt is acknowledged of Information Disclosure Statements (IDS), filed 15 May 2026, 15 September 2026, and 16 September 2026, which have been placed of record in the file. An initialed, signed, and dated copy of each PTO-1449 or PTO-SB-08 form is attached to the Office action.
Response to Amendment
Receipt is acknowledged of an amendment, filed 12 August 2026, which has been placed of record and entered in the file.
Status of the claims:
Claims 1-2, 5-6, 8, 10-14, and 22-23 are pending.
Claims 3-4, 7, 9, 15-21, and 24-26 are canceled.
Specification and Drawings:
Amendments to the specification and drawings have not been submitted in the amendment filed 12 August 2026.
Claim Rejections - 35 USC § 102
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-2, 5-6, 8, 10-12, and 14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Shelton et al. (US Patent Publ. No. 2017/0245857), cited by applicant.
With respect to claim 1, Shelton et al. disclose a surgical instrument comprising: an end effector comprising first and second jaws (jaw 123 and jaw 124, figs. 1, 3); a staple cartridge comprising a central channel and first and second elongate side portions lateral of the central channel (staple cartridge 140, fig. 3), the first and second elongate side portions each containing a plurality of staples (staple cartridge contains staples 160, fig. 3), each of the plurality of staples comprising first and second legs and a backspan extending therebetween (staples 160 comprise legs and a backspan, fig. 3); the second jaw having a cavity for receiving the staple cartridge (jaw 123 includes an elongate channel 122, fig. 3), the cavity comprising first and second lateral walls (channel 122 includes lateral walls, fig. 3); a substantially longitudinal reinforcing wall extending through the cavity of the second jaw and configured to provide support for the staple cartridge (channel 122 includes reinforcing walls between the lateral walls, fig. 3), wherein the reinforcing wall defines first and second grooves between the reinforcing wall and the first and second lateral walls (grooves are defined between the reinforcing walls and the lateral walls, fig. 3), wherein the first elongate side portion of the staple cartridge extends into the first groove past the backspan of each of the staples when the staple cartridge is received within the cavity and the second elongate side portion of the staple cartridge extends into the second groove past the backspan of each of the staples when the staple cartridge is received within the cavity (staple cavities 144 including sidewalls 150a, 150b, “the sidewalls 150a, 150b can be configured and arranged such that the entirety of the staple 160 is positioned intermediate the sidewalls 150a, 150b when the staple 160 is in its unfired position”, [0237], fig. 58); and a drive member configured to translate distally through the end effector (firing bar 156 and sled 190, fig. 3).
With respect to claim 2, Shelton et al. disclose the cavity is configured to receive the staple cartridge from a direction lateral to a longitudinal axis of the surgical instrument (channel 122 receives the staple cartridge 140 laterally, fig. 3).
With respect to claim 5, Shelton et al. disclose the reinforcing wall comprises first and second walls defining a channel therebetween (the reinforcing wall comprises first and second walls with a channel between the first and second walls of the reinforcing wall, fig. 3).
With respect to claim 6, Shelton et al. disclose the drive member is configured to translate through the central channel in the staple cartridge (firing bar 156 translates through central channel, fig. 3), the instrument further comprising an actuation mechanism configured to translate the drive member through the central channel (tool drive assembly 1010, fig. 100, [0242]).
With respect to claim 8, Shelton et al. disclose each of the first and second elongate side portions of the staple cartridge contains at least one row of staple retention openings (staple cartridge 140 includes staple cavities 144, fig. 4).
With respect to claim 10, Shelton et al. disclose the staple cartridge comprises a polymer material (staple cartridge could be made of material such as plastic, [0246]) and at least a portion of the second jaw is metal (second jaw with cavity for receiving cartridge may be metal, [0246]).
With respect to claim 11, Shelton et al. disclose an actuator for actuating the actuation mechanism (master controller 1001 operatively coupled to tool drive assembly 1010, fig. 100, [0242]), wherein the actuator includes a control device of a robotic surgical system (master controller 1001 of robotic system 1000, [0242]).
With respect to claim 12, Shelton et al. disclose the drive member comprises one or more inclined ramps configured to engage the staples and drive the staples in a direction transverse to a longitudinal axis of the staple cartridge as the drive member is translated longitudinally through the central channel in the staple cartridge (sled 190 including ramps 191a, 191b to eject staples 160, fig. 3, [0181]).
With respect to claim 14, Shelton et al. disclose a surgical stapling instrument comprising: an end effector comprising first and second jaws (jaw 123 and jaw 124, figs. 1, 3); a staple cartridge removably coupled to the second jaw (staple cartridge 140, fig. 3), wherein the second jaw has a cavity for receiving the staple cartridge (jaw 123 includes an elongate channel 122, fig. 3), and at least one reinforcing wall extending through the cavity to provide support for the staple cartridge (channel 122 includes reinforcing walls between the lateral walls, fig. 3), wherein the cavity comprises first and second outer walls and first and second grooves between the reinforcing wall and the first and second outer walls (grooves are defined in the channel 122 between lateral walls and the reinforcing walls, fig. 3), wherein the staple cartridge comprises first and second elongate side portions each containing a plurality of staples (staple cartridge contains staples 160, fig. 3), each of the plurality of staples comprising first and second legs and a backspan extending therebetween (staples 160 comprise legs and a backspan, fig. 3), wherein the first elongate side portion extends into the first groove between the first outer wall of the cavity and the backspan of each of the staples when the staple cartridge is coupled to the second jaw and the second elongate side portion extends into the second groove between the second outer wall of the cavity and the backspan of each of the staples when the staple cartridge is coupled to the second jaw (staple cavities 144 including sidewalls 150a, 150b, “the sidewalls 150a, 150b can be configured and arranged such that the entirety of the staple 160 is positioned intermediate the sidewalls 150a, 150b when the staple 160 is in its unfired position”, [0237], fig. 58); and a drive member configured to translate distally through the end effector to engage the staple cartridge (firing bar 156 and sled 190, fig. 3).
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Shelton et al. in view of Swensgard (US Patent Publ. No. 2013/0056521).
With respect to claim 13, Shelton et al. disclose a drive member including a firing bar and inclined ramps, but fail to disclose the inclined ramps are integral with the drive member.
Swensgard disclose a surgical instrument including inclined ramps that are integral with the drive member (fig. 3).
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 Shelton et al. device to replace the inclined ramps and drive member with the inclined ramps that are integral with the drive member as taught by Swensgard, as the substitution of an art-recognized equivalent for the ejection of staples and cutting of tissue in a surgical stapler. MPEP 2144.06 II.
Claims 22-23 are rejected under 35 U.S.C. 103 as being unpatentable over Shelton et al. in view of Harris et al. (US Patent Publ. No. 2015/0297235).
With respect to claim 22, Shelton et al. discloses a bottom wall in the second jaw (fig. 3), and discloses a slot in the bottom wall (for receiving the lower flange of the firing member 156, fig. 3).
Shelton et al. fail to disclose the second jaw comprises first and second slots in a bottom wall of the second jaw.
Harris et al. disclose a surgical instrument comprising first and second jaws (fig. 1), and wherein the second jaw 6022 comprises first and second slots 6040, 6042 (fig. 32, openings to provide the clinician with a view of the progress of the cutting head and firing member, [0411]).
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 surgical instrument of Shelton et al. to provide the second jaw with first and second longitudinal slots as taught by Harris et al., to provide the clinician with a view of the progress of the firing member.
With respect to claim 23, Shelton et al. disclose first and second grooves within the cavity of the second jaw (fig. 3), but fails to disclose the first and second grooves are substantially aligned with first and second slots.
Harris et al. disclose a surgical instrument comprising first and second jaws (fig. 1), and wherein the second jaw 6022 comprises first and second slots 6040, 6042 that are aligned with the longitudinal axis of the end effector (fig. 32, openings to provide the clinician with a view of the progress of the cutting head and firing member, [0411]).
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 surgical instrument of Shelton et al. to provide the second jaw with first and second longitudinal slots as taught by Harris et al., that are substantially aligned with the grooves, to provide the clinician with a view of the progress of the firing member.
Response to Arguments
With respect to the rejection of claims 1 and 14 under 35 U.S.C. 102(a)(1) as being anticipated by Shelton et al. (US Patent Publ. No. 2017/0245857), applicant’s arguments have been fully considered but are not persuasive.
Applicant argues that “FIG. 3 alone cannot support a finding of anticipation” and “[T]he Examiner’s reliance on ¶ [237] cannot transform Shelton’s flat cartridge into the claimed structure where the cartridge side portions extend deeply into jaw grooves past the staple backspans”.
In response, the rejection of claims 1 and 14 under 35 U.S.C. 102(a)(1) over Shelton et al. is based on the disclosure of Shelton et al. as a whole. Shelton et al. disclose in figures 1-5 a surgical instrument comprising first and second jaws (jaw 123 and jaw 124), a staple cartridge 140 comprising a central channel and first and second elongate side portions lateral of the central channel, staples 160, each staple comprising first and second legs and a backspan, the second jaw having a cavity comprising first and second lateral walls and a longitudinal reinforcing wall, the reinforcing wall defining first and second grooves. Shelton et al. disclose the cartridge 140 includes staple cavities 144 formed by cavity sidewalls 150a, 150b (figs. 4, 5, [0170], [0194]).
As noted by applicant, figure 3 of Shelton et al. depicts the staple 160 backspans extending below the sidewalls of the cavities.
Shelton et al. further disclose “a staple cavity, such as staple cavity 144, for example, can include a first sidewall 150a and a second sidewall 150b which can be configured to guide a staple, such as a staple 160, for example, as it is lifted between an unfired position and a fired position. In various instances, the sidewalls 150a, 150b can be configured and arranged such that the entirety of the staple 160 is positioned intermediate the sidewalls 150a, 150b when the staple 160 is in its unfired position” ([0237], figs. 58, 61, 64). Thus, Shelton et al. specifically disclose that the first and second elongate side portions of the cartridge may extend past the backspans of the staples.
Applicant further argues that Shelton’s disclosure of “the sidewalls 150a, 150b can be configured and arranged such that the entirety of the staple 160 is positioned intermediate the sidewalls 150a, 150b when the staple 160 is in its unfired position” ([0237]) fails to disclose the claim limitation because the word “intermediate” means “between” in a lateral sense, and not in a vertical/depth sense.
In response, applicant’s attention is directed to the remainder of paragraph [0237], which states:
“a staple cavity, such as staple cavity 144, for example, can include a first sidewall 150a and a second sidewall 150b which can be configured to guide a staple, such as a staple 160, for example, as it is lifted between an unfired position and a fired position. In various instances, the sidewalls 150a, 150b can be configured and arranged such that the entirety of the staple 160 is positioned intermediate the sidewalls 150a, 150b when the staple 160 is in its unfired position. In other circumstances, referring primarily to FIGS. 22-31, the sidewalls 150 of the staple cavity 144 may be configured such that less than the entirety of the staple 160 is positioned intermediate the sidewalls 150 when the staple 160 is in its unfired position. For instance, the base 162 of the staples 160 in the outermost rows of staple cavities 144 defined in the cartridge body 142 may be unsupported by at least one of the sidewalls 150 when the staples 160 are in their unfired positions. As the staples 160 are lifted upwardly, however, the bases 162 of the staples 160 may then be supported by both of the sidewalls 150.” [0237]).
In paragraph [0237], Shelton et al. disclose that in circumstances in which the bases of the staples are unsupported by the cartridge walls in the unfired position, the bases are supported by the cartridge walls as the staples are lifted. Clearly, this is a vertical/depth sense, not a lateral sense.
Applicant further argues that paragraph [0237] does not describe the elongate side portions extending into the grooves in the jaw.
In response, figures 1-5 and paragraph [0169] describe the grooves in the jaw. See also figure 18, depicting a staple 160 positioned at the bottom of the jaw before firing. Clearly, cartridge sidewalls 150 that extend to cover the entirety of a staple 160 (as described in [0237]) would also extend into the grooves of the jaw.
In view of all of the above, the rejection of claims 1 and 14 under 35 U.S.C. 102(a)(1) over Shelton et al. is still deemed proper.
With respect to dependent claims 2, 5-6, 8, and 10-12, applicant argues that claims 2, 5-6, 8, and 10-12 are not anticipated since the claims depend from independent claim 1, and since none of the additional elements cited for claims 2, 5-6, 8, or 10-12 address the “extends into the groove past the backspan” limitation. This argument has been fully responded to above.
With respect to the rejection of claim 13 under 35 U.S.C. 103 as being unpatentable over Shelton et al. in view of Swensgard (US Patent Publ. No. 2013/0056521), applicant argues that Swensgard fails to cure the deficiencies of Shelton et al.
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). This rejection is still deemed proper.
With respect to the rejection of claims 22-23 under 35 U.S.C. 103 as being unpatentable over Shelton et al. in view of Harris et al. (US Patent Publ. No. 2015/0297235), applicant argues that Harris et al. fail to cure the deficiencies of Shelton et al.
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). This rejection is still deemed proper.
Conclusion
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 Linda J. Hodge whose telephone number is (571)272-0571. The examiner can normally be reached Monday-Friday 8:00-5:00.
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, Shelley Self can be reached at (571) 272-4524. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/LINDA J. HODGE/Primary Examiner, Art Unit 3731
Prosecution Insights