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
In response to the amendment filed on 7/29/2026, claims 2, 9-20, 24-30 have been canceled, and claims 1, 3-8 and newly added claims 31-37 are pending, while claims 21-23 remain withdrawn.
Response to Arguments
Applicant’s arguments with respect to the prior art rejections have been considered but are moot because the arguments do not apply to any of the new combination of references being used in the current rejection. Applicant has amended the claims, thus changing the scope and requiring additional consideration. A new grounds of rejections is set forth below which does not rely upon the previous interpretation of the reference(s) or any matter specifically challenged in the arguments.
Drawings
The drawings were received on 7/29/2026. These drawings are accepted and the previous drawing objections are hereby withdrawn.
Election/Restrictions
Applicant’s request for the rejoinder of claims 21-23 is acknowledged. However, the product/apparatus claims are not presently found to be allowable and therefore claims 21-23 are not in condition for a rejoinder.
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) 1, 4, 6-8, 31, 33, 35-37 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Dickerson et al (US 2017/0056060)
Dickerson et al discloses the following limitations:
Claims 1 and 31. A harmonic tissue cutter (Figs. 2, 47-63), comprising:
a shaft (130) (Fig. 2; [0132]);
a jaw (710) pinned to the shaft ([0223] discloses clamp arm (710) is substantially the same as clamp arm (144) described above unless otherwise noted herein, and [0225] discusses pins (135, 145) for pinning to the shaft) and comprising a slot (720); and
a tissue-engaging pad (746), comprising:
a main body (base structure in Fig. 48) comprising a tissue-engaging surface (bottom surface in Figs. 48-50); and
a rail (750) configured for insertion into the slot of the jaw to retain the tissue-engaging pad to the jaw, the rail comprising a stem (see annotated figure below) extending from the main body opposite the tissue-engaging surface and a flange supported by the stem, wherein the flange (752) is configured so that the rail can be pressed into the slot in a direction transverse to a longitudinal direction of the slot of the jaw ([0225], [0227]), and
wherein the flange comprises a chamfer (see annotated figure below) configured to engage an edge (see annotated figure below) of an opening of the slot as the rail is pressed into the slot in the direction transverse to the longitudinal direction of the slot such that the edge of the slot compresses the flange, enabling the flange to move past the opening of the slot ([0227]).
PNG
media_image1.png
325
594
media_image1.png
Greyscale
Claims 4 and 33. The harmonic tissue cutter of claim 31, wherein an end of the rail is spaced from a corresponding end of the tissue-engaging pad (Fig. 48).
Claims 6 and 35. The harmonic tissue cutter of claim 31, wherein the rail is a single continuous rail (Figs. 48, 49).
Claims 7 and 36. The harmonic tissue cutter of claim 31, wherein the main body and the rail are made of the same material ([0147]; e.g. PTFE material; Fig. 49 - hatch marks indicate the same material).
Claims 8 and 37. The harmonic tissue cutter of claim 31, wherein the main body and the rail are formed as a single piece ([0147]; e.g. PTFE material; Fig. 49 - hatch marks indicate the continuity of the single piece material).
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1, 3-8, 31-37 is/are rejected under 35 U.S.C. 103 as being unpatentable over Riestenberg et al (US 2017/0181765).
Claims 1 and 31. Riestenberg et al discloses a harmonic tissue cutter (Figs. 2, 10-12), comprising:
a shaft (130) (Fig. 2; [0045]);
a jaw (250) pinned (via pin 290) to the shaft ([0066]) and comprising a slot (280); and
a tissue-engaging pad (270), comprising:
a main body (base structure in Fig. 10) comprising a tissue-engaging surface (272) ([0067]); and
a rail (278) configured for insertion into the slot of the jaw to retain the tissue-engaging pad to the jaw, the rail comprising a stem (see annotated figure below) extending from the main body opposite the tissue-engaging surface (tissue-engaging surface is on the bottom of the main body while the stem is on the top of the main body as seen in Figs. 10-11) and a flange (see annotated figure below) supported by the stem,
wherein the flange comprises a chamfer (see annotated figure below).
PNG
media_image2.png
262
466
media_image2.png
Greyscale
Riestenberg et al does not explicitly disclose the flange is configured so that the rail can be pressed into the slot in a direction transverse to a longitudinal direction of the slot of the jaw, the chamfer configured to engage an edge of an opening of the slot as the rail is pressed into the slot in the direction transverse to the longitudinal direction of the slot such that the edge of the slot compresses the flange, enabling the flange to move past the opening of the slot.
However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention that the flange and therefore chamfer is able to be pressed in the direction transverse to the longitudinal direction of the slot such that the chamfer can engage an edge of an opening (edge can be seen on the top of slot 280 in Fig. 13) of the slot as the rail is pressed into the slot in the direction transverse to the longitudinal direction of the slot such that the edge of the slot compresses the flange, enabling the flange to move past the opening of the slot because Riestenberg et al discloses the tissue-engaging pad, and thereby the flange and chamfer, is made of PTFE ([0057]) which is a known, highly flexible biomaterial material. Riestenberg et al further discloses the tissue-engaging pad is resilient and deformable inwardly ([0067]). Therefore, with enough force applied in the transverse direction to the longitudinal axis, it would be obvious to one of ordinary skill in the art before the effective filing date of the invention the chamfer would be configured to engage the edge of an opening of the slot as the rail is pressed into the slot such that the edge of the slot compresses the flange, enabling the flange to move past the opening of the slot.
Claims 3 and 32. Riestenberg et al as made obvious above discloses the harmonic tissue cutter of claim 31, wherein the rail extends to at least one end face (proximal end face) of the tissue-engaging pad (Fig. 10).
Claims 4 and 33. Riestenberg et al as made obvious above discloses the harmonic tissue cutter of claim 31, wherein an end (distal end) of the rail is spaced from a corresponding end (distal end) of the tissue-engaging pad (Fig. 10).
Claims 5 and 34. Riestenberg et al as made obvious above discloses the harmonic tissue cutter of claim 33, wherein the end (distal end) of the rail is chamfered (Fig. 10).
Claims 6 and 35. Riestenberg et al as made obvious above discloses the harmonic tissue cutter of claim 31, wherein the rail is a single continuous rail (Fig. 10).
Claims 7 and 36. Riestenberg et al as made obvious above discloses the harmonic tissue cutter of claim 31, wherein the main body and the rail are made of the same material (Fig. 11; [0057]; PTFE material).
Claims 8 and 37. Riestenberg et al as made obvious above discloses the harmonic tissue cutter of claim 31, wherein the main body and the rail are formed as a single piece (Fig. 11).
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 KATHERINE M SHI whose telephone number is (571)270-5620. The examiner can normally be reached Mon-Thurs, 8-5 EST.
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, Darwin Erezo can be reached at (571)272-4695. 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.
/KATHERINE M SHI/Primary Examiner, Art Unit 3771
Prosecution Insights