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 . 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.
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 10 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.
Regarding claim 10, the claim recites that the body portion is formed at least partially from a conductive material but claim 2 has been amended to recite that body portion is non-conductive. It is not clear how the body portion can be conductive and non-conductive at the same time. Since the fundamental issue appears to be an indefiniteness issue, a rejection under 35 U.S.C. 112(a) is not made at this time.
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 2 and 3 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Dumbauld (US 2012/0253344).
Regarding claim 2, Dumbauld discloses an instrument with a first member (524, fig. 6) with a first electrode (512) and therefore “configured to receive energy” from a source. The instrument further comprises a second member with a body (510) and an electrode (570) and therefore also “configured to receive energy from a source,” where the electrode is on the surface of the second member that faces away from the surface that faces the first member, and the electrode is tapered to define an edge (fig. 6). The body portion includes a non-conductive insulation portion (510 must be electrically insulating or energizing either 570 or 512 would energize both, contradicting [0047]) which includes the first side (i.e. the side that holds electrode 510). The body portion (510) thus forms a non-conductive portion of the second member while the electrode (570) on the second side forms a conductive portion. Worded differently, the body portion (510) is non-conductive and the electrode (570, which can be monopolar as discussed below) is a conductive element of the jaw member opposing the elongate member. Whatever elements connects the electrodes to the source can be called a lead. Dumbauld teaches the electrodes are independently energizable ([0047]). Dumbauld also teaches the electrode can be operated in a monopolar or bipolar mode ([0046]), thus the instrument is being understood to include the return electrode that makes monopolar operation possible, a feature required by but not explicitly recited in the claims.
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 4-9, 19 and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Dumbauld in view of Stern (US 5,443,463).
Regarding claims 4-9, Dumbauld does not disclose the use of monopolar/bipolar modes or which electrodes interact in those modes. However, providing forceps with a number of electrodes which can be independently controlled according to monopolar and bipolar modes is a feature common in the art because it allows an operator fine control over the manner in which energy is delivered to tissue. Further, there is no evidence that the variously claimed energy patters produce an unexpected result (within the meaning of MPEP 716.02(a)). Stern discloses a forceps device for cutting and coagulation tissue (the same functions as Dumbauld and common for forceps) and teaches that all of the electrodes can be connected to a user operated switch to allow them to be operated in bipolar or monopolar modes as desired (fig. 5, column 6 line 36 to col. 7 line 15). Therefore, before the application was filed, it would have been obvious to one of ordinary skill in the art to provide the instrument of Dumbauld with electrodes independently connectable to each other and a ground pad, such as taught by Stern, that would produce the predictable result of allowing a user to set any electrode to be a monopolar electrode or part of a bipolar set of electrodes.
Regarding claims 19 and 21, Dumbauld discloses all the elements as discussed above with respect to claim 1 except for the first side including a “non-conductive insulation” portion and a bipolar mode between the jaw member (i.e. the electrode on the jaw member) and the elongate member. However, insulation is common in forceps devices and there is no evidence that such surfaces produce an unexpected result here. Stern discloses that the first sides of both jaws (i.e. the tissue grasping surfaces of the jaws) both include insulation to allow a series of electrodes to be independently operated (121, 122, 123 and 124, note associated leads, fig. 5). That is, without electrical insulation separating the electrodes (note gaps between electrodes, fig. 5), the electrodes would short out when used in a bipolar mode. Therefore, before the application was filed, it would have been obvious to one of ordinary skill in the art to modify the instrument of Dumbauld to include a plurality of electrodes separated by insulation on the inward facing surface of the jaw member, such as taught by Stern, and to further modify the instrument to connect all the electrodes to an independent switching structure, also taught by Stern, that would produce the predictable result of allowing a user more options for applying energy to tissue.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Dumbauld in view of Latterell (US 2006/0271042).
Regarding claim 10, while the claim does not recite the manner in which the body is conductive (electrical, thermal, optical, etc.), Dumbauld does not disclose the material at all because a person of ordinary skill in the art would be able to choose an appropriate material. Latterell can be considered a generic forceps device and teaches that a jaw body can be made out of a conductive material ([0046]). It has been held that the simple substitution of one known element for another is an obvious modification (MPEP 2141(III)), where in this case the “known element” is jaw material. Therefore, before the application was filed, it would have been obvious to one of ordinary skill in the art to use any commonly known jaw material in the device of Dumbauld, including a conductive material such as taught by Latterell, that would produce the predictable result of a jaw body having desired properties. This modification is understood to retain the electrical properties disclosed by Dumbauld such as by the use of an electrical insulation around the conductive material thus rendering the conductor non-conductive to the energy used to treat tissue even while remaining a conductive material.
Claim 22 is rejected under 35 U.S.C. 103 as being unpatentable over Dumbauld in view of Wampler (US 2003/0139742)
Regarding claim 22, Dumbauld does not disclose the first member comprises two electrodes on the side facing the second member that can exist in a bipolar mode. However, bipolar electrode pairs on forceps jaws are very common in the art. Wampler, for example, discloses a forceps and teaches that both members can include bipolar pairs of electrodes (fig. 6) which minimizes thermal spread ([0080]). Further, it has been held that the simple substation of one known element for another is an obvious modification (MPEP 2141(III)). Therefore, before the application was filed, it would have been obvious to one of ordinary skill in the art to modify the instrument of Dumbauld to include the bipolar pairs of electrodes as taught by Wampler to reduce thermal spread or to produce the predictable result of allowing a user to treat tissue in a desired manner.
Response to Arguments
Applicant's arguments filed 11 June 2026 have been fully considered but they are not persuasive.
The new claim language has resulted in new grounds of rejection but in the interest of compact prosecution it is noted that the examiner generally agrees with Applicant that the tissue contacting surface (512) of Dumbauld is conductive and therefore different than the disclosed invention which has an insulative tissue contacting surface. However, reciting negative limitations (i.e. what the prior art cannot have) is difficult because such language must be supported by the original disclosure (see MPEP 2173.05(i)). The transitional phrase “comprising” allows the prior art to have other elements beyond those recited (MPEP 2111.03(I), note “including” is a type of “comprising”). Thus, the fact that the body portion of the second member includes a first, non-conductive side facing the first member which has a conductive element located on that first side does not change the fact that Dumbauld has a non-conductive body portion that includes a non-conductive side facing the first member. There are several options to move the application forward. First, Applicant could use a different transitional phrase to describe the second member. For example, “…the second member consisting of a body portion…” (see MPEP 2111.03(II) for details). Second, Applicant could attempt to use functional language to describe the relationship between various elements. For example, “the first side comprising a non-conducive insulation portion configured to contact a first side of the first member when the first member and the second member are in the approximated second position…” That is, the language describes that one part can touch another part, which would not be possible if the surfaces of those parts are covered with a conductor. Naturally, any such language must be supported by the original disclosure, and consider how a reference such as Stern or Wampler, cited above, might still read on a version of such language by not having the electrodes extending across the entire surface. Third, Applicant could use language the describes some structural feature of the invention. For example, “the first side comprising a non-conductive insulation portion exposed to an external environment.” Once again, such language must be supported by the original disclosure, and it is worth considering whether a reference like Wampler which does not have electrodes across the entire surface might read on the language under consideration. Finally, it is noted that there are features of the invention shown in figure 18 that are not present in the claims, such as the electrode of the second member being embedded into the second member and the triangular cross-sectional shape of the second member being formed in part by the insulative material and in part by the electrode.
Regarding the arguments in view of Dumbauld and Stern, the arguments are not persuasive. It is well established that a person of ordinary skill in the art is a person of ordinary creativity not an automation (MPEP 2141.03) and the “fine control” noted in the rejection is discussed in Stern as the ability of a user to select which of a plurality of electrodes are used, as opposed to being forced to use the small number of predetermined configurations of electrodes in the device of Dumbauld. Further, and perhaps more germane to the core issue, the claims do not require that the only conductive element on one jaw is the outward-facing electrode. As discussed above, the claim language does not require that configuration and it will take careful consideration to produce language, supported by the disclosure, which requires the prior art to show exactly and only that specific electrode on a jaw. The examiner’s contact information can be found below if Applicant would care to discuss the pending or proposed claims before filing a response.
Conclusion
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 DANIEL WAYNE FOWLER whose telephone number is (571)270-3201. The examiner can normally be reached Monday-Friday (9-5).
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, Joseph Stoklosa can be reached at 571-272-1213. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DANIEL W FOWLER/Primary Examiner, Art Unit 3794
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