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 .
Response to Amendment
The amendment filed August 13, 2026 has been entered. Claims 1, 3-7, 19 have been amended. Claims 2, 10, 20 have been canceled. Claims 21-22 are new. Currently, claims 1, 3-9, 11-19 and 21-22 are pending for examination.
Response to Arguments
Applicant's arguments filed August 13, 2026 have been fully considered but they are not persuasive. Applicant argues claim 1 now requires the indent of the of the orientation portions forms a receptacle for a contact plate of an electrical pole. Claim 1 does not require an electrical pole as it merely states, “a first pole”. Applicant has similarly amended claim 19 and states, “a first pole” and therefore does not limit the claimed invention to an electrical pole.
Claim Interpretation
Claim 22 is directed to the connection arrangement recited in claim 21 but recites it is in combination with a manipulation device to form a surgical instrument. Any limitations directed to the manipulation device or the surgical instrument not within the scope of the connection arrangement will not be treated on the merits.
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 22 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.
Claim 22 recites, “a shaft opening configured to arrange a receiving element” (line 3-4). This wording is indefinite because it is unclear how to interpret the limitation of the shaft opening being “configured to arrange” a receiving element.
Claim Rejections - 35 USC § 103
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
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, 3, 6, 8-9, 11, 13, 16, 18-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Storz (US 2023/0078274).
Regarding claim 1, Storz discloses a connection arrangement for a surgical instrument or in a surgical instrument, the connection arrangement comprising: an instrument base 4 (“machine tool” fig. 3, 5) which is configured to control and/or operate a high-frequency tool 5 of the surgical instrument (fig. 5); and a connection body 3 of a high-frequency connector, wherein the connection body is configured for predetermined orientation in a connection axis of the high-frequency connector within the instrument base (fig. 5), wherein the instrument base forms a receptacle 1 for the connection body and the receptacle has an orientation portion 17, 19 (fig. 3), wherein the connection body 3 has a corresponding orientation portion 35a-c (fig. 4a-b), and wherein the connection body, by insertion into the receptacle by the orientation portions, can orient itself at a predetermined angle of rotation on the connection axis ([0144-0145]), wherein the orientation portions are configured as a projection 17, 19 (fig. 3) and as an indent 35a-c (fig. 4a-b), the projection corresponding to the indent and the indent forms a receptacle for a contact plate 35b of a first pole (fig. 4ab). While Storz does not expressly disclose the contact plate having a thickness less than a depth of the indent, it would have been obvious to one having ordinary skill in the art at the time the invention was made to select a contact plate having a thickness less than a depth of the indent, since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
Regarding claim 3, Storz discloses wherein the projection 17, 19 protrudes from an inner surface of the receptacle 1 (fig. 3).
Regarding claim 6, Storz discloses wherein the projection 17, 19 is arranged spaced apart from an insertion opening of the receptacle (fig. 3).
Regarding claim 8, Storz discloses wherein the connection body 3 is conical and tapers in a direction of a plug-in connector (fig. 4a; [0141]).
Regarding claim 9, Storz discloses wherein the connection body 3 has at least one oblique or curved insertion contour to allow to allow insertion of the orientation portions when the connection body is oriented at an angle other than the predetermined angle of rotation on the connection axis (fig. 4a; [0141]).
Regarding claim 11, Storz discloses wherein the orientation portions are configured as a projection 17, 19 and as an indent 35a-c, the projection corresponding to the indent and wherein, in an end region adjacent to the insertion contour, the indent transitions continuously into the insertion contour (fig. 4a-b).
Regarding claim 13, Storz discloses wherein the connection body is at least partially cylindrical (fig. 4a-b).
Regarding claim 16, Storz discloses wherein the connection body has at least one oblique or curved insertion contour to allow to allow insertion of the orientation portions when the connection body is oriented at an angle other than the predetermined angle of rotation on the connection axis (fig. 4a; [0141]) and wherein the insertion contour intersects a cylindrical surface of the at least partially cylindrical connection body (fig. 4a).
Regarding claim 18, the limitation “wherein the connection body is configured as a uniaxially demoldable injection molded part” is regarded as a product-by-process claim. “[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).
Regarding claim 19, Storz discloses a connection arrangement for a surgical instrument or in a surgical instrument, the connection arrangement comprising: an instrument base 4 (“machine tool” fig. 3, 5) which is configured to control and/or operate a high-frequency tool 5 of the surgical instrument (fig. 5); and a connection body 3 of a high-frequency connector, wherein the connection body is configured for predetermined orientation in a connection axis of the high-frequency connector within the instrument base (fig. 5), wherein the instrument base forms a receptacle 1 for the connection body and the receptacle has an orientation portion 17, 19 (fig. 3), wherein the connection body 3 has a corresponding orientation portion 35a-c (fig. 4a-b), and wherein the connection body, by insertion into the receptacle by the orientation portions, can orient itself at a predetermined angle of rotation on the connection axis ([0144-0145]), and wherein the surgical instrument is operated as a bipolar or monopolar instrument ([0070]), wherein the orientation portions are configured as a projection 17, 19 (fig. 3) and as an indent 35a-c (fig. 4a-b), the projection corresponding to the indent and the indent forms a receptacle for a contact plate 35b of a first pole (fig. 4ab). While Storz does not expressly disclose the contact plate having a thickness less than a depth of the indent, it would have been obvious to one having ordinary skill in the art at the time the invention was made to select a contact plate having a thickness less than a depth of the indent, since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
Claim(s) 4-5, 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Storz (US 2023/0078274) in view of Zung et al. (US 2018/0207417).
Regarding claim 4, Storz discloses wherein the projection is oriented along the connection axis but does not expressly disclose it has an elongate shape. Zung et al. teaches a similar self-alignment connection arrangement between an instrument base and a connection body, where a projection of an orientation portion has an elongate shape 112 (fig. 1) corresponding to an indent orientation portion 220 (fig. 2). While in this embodiment the projection protrudes from the connection body, Zung et al. acknowledges that the inner surface of the receptacle of the instrument base can comprise the projection ([0060]). It would have been an obvious matter of design choice to modify Storz to provide an elongated shape projection and a corresponding indent in the connection body as taught by Zung et al., since such a projection shape in a connection arrangement is known in the art and such a modification would have involved a mere change in the form or shape of a component. A change in form or shape is generally recognized as being within the level of ordinary skill in the art. In re Dailey, 149 USPQ 47 (CCPA 1976).
Regarding claim 5, Storz does not expressly disclose wherein the projection extends over at least half a length of the receptacle, the length being defined in a direction of the connection axis. Zung et al. teaches a similar self-alignment connection arrangement between an instrument base and a connection body, where a projection of an orientation portion extends over at least half a length of the receptacle of the instrument base (fig. 3c). While in this embodiment the projection protrudes from the connection body, Zung et al. acknowledges that the inner surface of the receptacle of the instrument base can comprise the projection ([0060]). It would have been an obvious matter of design choice to modify Storz to provide a projection extending over at least half a length of the receptacle and a corresponding indent in the connection body as taught by Zung et al., since such a projection shape in a connection arrangement is known in the art and such a modification would have involved a mere change in the form or shape of a component. A change in form or shape is generally recognized as being within the level of ordinary skill in the art. In re Dailey, 149 USPQ 47 (CCPA 1976).
Regarding claim 7, Storz does not expressly disclose wherein the projection, for the orientation of the connection body in the receptacle, has side edges tapering conically to the insertion opening. Zung et al. teaches a similar self-alignment connection arrangement between an instrument base and a connection body, where a projection of an orientation portion has side edges tapering conically to an insertion opening (fig. 3b). While in this embodiment the projection protrudes from the connection body, Zung et al. acknowledges that the inner surface of the receptacle of the instrument base can comprise the projection ([0060]). It would have been an obvious matter of design choice to modify Storz to provide a projection has side edges tapering conically to the insertion opening and a corresponding indent in the connection body as taught by Zung et al., since such a projection shape in a connection arrangement is known in the art and such a modification would have involved a mere change in the form or shape of a component. A change in form or shape is generally recognized as being within the level of ordinary skill in the art. In re Dailey, 149 USPQ 47 (CCPA 1976).
Claim(s) 12, 14-15, 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Storz (US 2023/0078274) in view of Brown et al. (US 2025/0162045).
Regarding claim 12, Storz does not expressly disclose wherein the connection body has recesses which serve as a grip. Brown et al. teaches an analogous tool with a connection arrangement where the connection body has recesses 40 which serve as a grip for the connection body when interfacing with the receptacle of the instrument base (fig. 1). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Storz to include recesses on the connection body to serve as a grip as taught by Brown et al. in order to provide features to improve the tactile maneuverability of the connection body as it is inserted into the receptacle.
Regarding claims 14-15, Storz discloses wherein the connection body 3 is conical and tapers in a direction of a plug-in connector (fig. 4a; [0141]), Storz in view of Brown et al. do not disclose wherein the recesses form part of the taper and, on an opposite side, the connection body has a cylindrical surface but it would have been obvious to one having ordinary skill in the art at the time the invention was made to provide recesses as part of the taper, since it has been held that rearranging parts of an invention involves only routine skill in the art. In re Japikse, 86 USPQ 70.
Regarding claim 17, Storz discloses wherein the connection body has at least one oblique or curved insertion contour to allow to allow insertion of the orientation portions when the connection body is oriented at an angle other than the predetermined angle of rotation on the connection axis (fig. 4a; [0141]) and wherein the insertion contour intersects a cylindrical surface of the at least partially cylindrical connection body (fig. 4a).
Claim(s) 21-22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Farritor et al. (US 2018/0056527).
Regarding claim 21, Farritor et al. discloses an electrical connection arrangement for a surgical instrument 230 or in a surgical instrument, the electrical connection arrangement comprising: an instrument base 180 (fig. 5a) which is configured to control and/or operate a high-frequency tool 230 of the surgical instrument 230; and a connection body 232 of a high-frequency connector (fig. 5b), wherein the connection body is configured for predetermined orientation in a connection axis of the high-frequency connector with the instrument base 180 (fig. 5a), the connection body comprising a pole configuration comprising a first pole (“spring-loaded pin” ([0048]), wherein the instrument base forms a receptacle 184 (fig. 5a) for the connection body 232 and the receptacle has an orientation portion (fig. 3), wherein the connection body has a corresponding orientation portion (fig. 2a-b), and wherein the connection body, by insertion into the receptacle by the orientation portions, can orient itself at a predetermined angle of rotation on the connection axis ([0048], [0056]), wherein the orientation portions are configured as a projection 58a (fig. 2a-b) and as an indent 102a (fig. 3), 192 (fig. 5b), the projection corresponding to the indent (fig. 5b). Farritor et al. does not expressly disclose the first pole comprises a contact plate and an electrically connected contact tab, and the indent forms a receptacle for the contact plate of the first pole, the contact plate having a thickness less than a depth of the indent.
Farritor et al. however teaches an embodiment where the connection arrangement for a surgical instrument provides bipolar capabilities to the surgical instrument 230 ([0065]), where electrical contacts in the form of spring pins 234, 244 are provided to drive components 192, 194 that contact the spring-loaded pins of the surgical tool 230 (fig. 5b). Farritor et al. states insulation layer 196 electrically insulates drive components 192, 194 from each other to provide “two independent electrical conduction paths to any tool (such as tool 230) coupled to the coupler 180 for potential bipolar capability” [0072]). It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that the first pole (“spring-loaded pin” [0048]) of the connection body 232 of the surgical instrument 230 comprised a contact plate and an electrically connected contact tab (E.N. regarded as the pin and the spring, respectively or any other conductive components), with the indent 192 and 194 (fig. 5b) of the instrument base forming a receptacle for the contact plate of the first pole in order to provide the required electrical conduction paths to the tool as Farritor et al. teaches the tool comprises bipolar capabilities. While Storz does not expressly disclose the contact plate having a thickness less than a depth of the indent, it would have been obvious to one having ordinary skill in the art at the time the invention was made to select a contact plate having a thickness less than a depth of the indent, since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
Regarding claim 22, Farritor et al. discloses wherein the receptacle leads within the instrument base to a shaft opening 190 configured to arrange a receiving element 70 (fig. 2a-b); and wherein the connection arrangement further comprises a plug-in connector (E.N. regarded as the spring-loaded pins 58b inserted into receptacles 102b, 194), and a second pole 58b is provided with the plug-in connector, which second pole extends toward the shaft opening (fig. 2a, 5b; E.N. second pole 58b extends in the same direction as receiving element 70, and thus extends toward shaft opening 190).
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 ERICA S LEE whose telephone number is (571)270-1480. The examiner can normally be reached M-F 8-7pm, flex.
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, David Hamaoui can be reached at (571) 270-5625. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ERICA S LEE/Primary Examiner, Art Unit 3796
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