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.
Election/Restrictions
Claim 11-18 and 20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected Species, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 16 February 2026.
Applicant's election with traverse of Species XIV in the reply filed on 16 February 2026 is acknowledged. The traversal is on the ground(s) that that there is no search burden. This is not found persuasive because there is a search burden. Applicant has disclosed 22 distinct species of forceps jaws. Forceps are a very common type of medical devices such that searching for the distinct features of potentially every species would be time intensive, especially when considering 22 different versions. It is conceivable that if the application disclosed a lower number of embodiments the restriction would not be required. But without the restriction Applicant could alternate back and forth between any one or more of the 22 independent species at any time which would be untenable. Further, the fact that Applicant could have removed the restriction requirement by stating that the species are obvious variants, but has decided not to do so, is more evidence that Applicant understands the features of each species are worthy of an independent search. It is noted that Applicant’s remark that that claims 2-10 share some features with other species is not relevant to the question of whether the restriction is proper. The term “generic” in this context refers a claim with features present in all species, such that any elected species will include that claim. In this case the restriction properly states that there are no generic claims since none of the claims have features common to all the species. The requirement is still deemed proper and is therefore made FINAL.
Regarding the claims associated with the elected Species, Applicant has not correctly identified that claims 2-10 and 19-21 are directed to the version of the invention shown in figure 18. That figure shows two jaws, one (12) having two inward-facing electrodes (16, 18) and the other (14) having one outward-facing electrode (20). The specification states that, aside from the electrodes, the jaws are not energy conducting ([0088]). Therefore, any claim that requires the jaw with the electrode on the outward facing surface to have a second electrode/lead belongs to a non-elected species. This includes, at least for now, claim 20. Where other claims can be interpreted to refer in some way to figure 18 they have been, even where the most likely explanation is that they are intended to refer to other figures (claims 7-10 and 21 in particular).
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 7-9 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claims 7-9, claim 7 recites that the second member is configured to receive energy. However, this claim depends from claim 2 which recites that the second member includes a body and an electrode such that it is not clear whether the second member receiving energy is a reference to the electrode receiving energy or something else (keeping in mind that Applicant has elected the species shown in figure 18). Further, “receiving energy” is profoundly broad: the claim does not even recite that the second member is configured to interact with tissue in any way. Presumably even the first member having a lead that transmits energy to the electrode can be considered to meet the requirements of “receiving energy” but this has the problem of then failing to further limit the claim (because any structure that would allow a functional electrode in claim 2 would also “deliver energy” to the second member as in claim 7). It is not clear generally why Applicant has used the vague language of the “member” being configured to “receive energy” in the first place when claim 2 shows it is clearly possible to specifically distinguish the electrodes from the body of the member. Claims 8 and 9 depend from claim 7 and are therefore also indefinite.
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 (514) 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). 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.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Regarding another forceps with metal jaws having a tapered electrode on the outer surface of one of the jaws, see fig. 6 of US 2004/0006340 to Latterell.
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).
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/DANIEL W FOWLER/Primary Examiner, Art Unit 3794