DETAILED ACTION
Applicant’s response, filed February 27, 2026, is fully acknowledged by the Examiner. The following is a completes response to the February 27, 2026 communication.
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Election/Restrictions
Applicant’s election without traverse of Species B (figures 48-50) in the reply filed on February 27, 2026 is acknowledged. Currently, pending claims 21-37 are directed towards this Species and will be examined herein. Claims 38-40 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Species A, C and D, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on February 27, 2026.
Claim Rejections - 35 USC § 103
The factual inquiries for establishing a background for determining obviousness under pre-AIA 35 U.S.C. 103(a) 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.
This application currently names joint inventors. In considering patentability of the claims under pre-AIA 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of pre-AIA 35 U.S.C. 103(c) and potential pre-AIA 35 U.S.C. 102(e), (f) or (g) prior art under pre-AIA 35 U.S.C. 103(a).
Claims 21-24 and 27-31 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Smith et al. (US Pat. Pub. 2009/0057369 A1) further in view of Hashimoto et al. (US Pat. No. 5,477,130) and Kamenoff (US Pat. No. 6,900,615 B2).
Regarding claim 21, Smith provides for a surgical instrument system, comprising: a surgical instrument (device 1100 as in figures 37/38),
a battery pack (see [0246] providing for the removable battery pack at 1500), and
an electrical circuit configurable in a first state and a second state (1100 as in figure 36; see [0235], [0240] and [0246] with the isolation of cell 1510a from the remainder of the cells, with the connection of the pack to the device providing for actuation of 1100 to connect all six cells),
wherein, in response to attachment of the battery pack to the surgical instrument, a portion of the electrical circuit is configured to transition from the first state to the second state (via attachment of the battery pack to the surgical instrument and with the functionality of the switch as in [0246] to be in a first state with only 1510a providing energy to a second state where all the cells of 1510a/1510 are providing energy after attachment).
Smith fails to specifically provide that the electrical circuit is in the battery pack and for the circuit to include a discharge circuit, wherein the discharge circuit is configured to transition from an open position to a closed position in response to removal of the battery pack from the surgical instrument, and wherein in the closed position, the discharge circuit is configured to drain the battery pack.
Hashimoto provides battery pack arrangement as that of Smith and specifically provides for such to have an electrical circuit therein and wherein the electrical circuit therein is transitioned from a first state to a second state based on the attachment of the battery pack to a device (see figure 2 with the battery 22 having various circuitry therein and with the switch 210 functioning to provide for the change of state). As such, the Examiner is of the position that the relocation of the electrical circuit including the above-noted switch from the surgical instrument to the battery pack would have been obvious consideration to one of ordinary skill in the art when designing the surgical instrument arrangement of Smith would have been an obvious consideration in view of the teachings of Hashimoto given that either placement of the electrical circuit is known in the art and would work equally as well as one another to provide for the disclosed high and low power drive of the surgical instrument. Additionally, the Examiner notes that the moving of the electrical circuit would have been further obvious given that since it has been held that rearranging parts of an invention involves only routine skill in the art. In re Japikse, 86 USPQ 70.
While Hashimoto disclosing that the switching is dependent upon the attachment and/or removal of the battery from the device and for such switching to disable the battery, Hashimoto fails to specifically contemplate that the electrical circuit includes a discharge circuit, wherein the discharge circuit is configured to transition from an open position to a closed position in response to removal of the battery pack from the surgical instrument, and wherein in the closed position, the discharge circuit is configured to drain the battery pack.
Kamenoff discloses a similar light activated electrical circuit similar to that of Hashimoto that functions, responsive to light exposure, to provide for a battery discharge circuit located within the battery pack wherein the discharge circuit functions to transition from an open position to a closed position in response to a change in status of the battery pack and wherein the closed position functions to drain the battery pack.
Therefore, it is the Examiner’s position that it would have been further obvious to one of ordinary skill in the art at the time of filing to have utilized a discharge circuit as in Kamenoff to the combined system of Smith and Hashimoto to provide for a combined arrangement that drains the battery pack upon removal from the device. Such ensures that the battery pack, upon removal from the device, is placed into a safe condition where the battery is discharged and can subsequently be disposed of safely without risk of explosion or fire (see col. 1; 16-33 of Kamenoff).
Regarding claim 22, Smith provides for an end effector configured to clamp tissue (see figure 18 providing for an end effector at 60/62 capable of clamping tissue).
Regarding claim 23, Smith provides that the end effector comprises a replaceable staple cartridge (see [0139] providing for a replaceable cartridge 60 at the end of 30).
Regarding claim 24, Smith provides that end effector comprises a knife to cut tissue (cutting element required to provide for the cutting in [0122] in the form of a “cutting blade”).
Regarding claim 27, in view of the combination with Kamenoff above, the discharge circuit of the combination comprises a resistive element (resistive network 48), and wherein the discharge circuit is further configured to drain the battery pack with the resistive element (See col. 4; 60-65).
Regarding claims 28 and 29, Smith provides for a first cell comprising a first lithium-ion cell, and a second cell comprising a second lithium-ion cell (see [0246] with the cells being lithium-ion cells via the use of lithium-ion batteries CR123 or CR2; see also figure 36 with the multiple cells at 602 and 602’).
The Examiner is further of the position that the combination with Kamenoff would provide that the discharge circuit is in electrical communication with the first and second cells, such that the first cell and second cell are electrically decoupled in the first state, and are electrically coupled in the second state.
Regarding claim 30, in view of the combination in the rejection of claim 21 above, the electrical circuit would be provided for in the battery pack. The Examiner is of the position that the electrical circuit then further comprises a switch intermediate the first cell and the second cell (1100 as in figure 36), and wherein said switch is configured to electrically couple the first cell and the second cell upon the attachment of said battery pack to said surgical instrument (see [0235], [0240] and [0246] with the isolation of cell 1510a from the remainder of the cells, with the connection of the pack to the device providing for actuation of 1100 to connect all six cells).
Regarding claim 31, Smith provides that the battery pack further comprises a third cell electrically coupled to the first cell and the second cell upon the attachment of the battery pack to the surgical instrument (a third one of the cells of the group defined by 602’ and 602).
Claims 25 and 26 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Smith et al. (US Pat. Pub. 2009/0057369 A1) in view of Hashimoto et al. (US Pat. No. 5,477,130) and Kamenoff (US Pat. No. 6,900,615 B2) as applied to claim 21 above, and further in view of Ptzen et al. (US Pat. No. 5,553,675).
Regarding claims 25 and 26, while Smith contemplates a battery pack, Smith fails to provide that the battery pack further comprises a clutch coupled to the portion of the electrical circuit of the battery pack, the clutch configured for transitioning the portion of the electrical circuit from the first state to the second state, and wherein the clutch comprises a pair of locks.
Pitzen discloses an alternative manner of providing a surgical device with a removable battery pack where the batter pack 30 includes a clutch in the form of a pair of locks (37) that are coupled to an electrical circuit of the battery pack (structurally connected to the circuit within the pack). Therefore, it is the Examiner’s position that it would have been obvious to one of ordinary skill in the art at the time of filing to have utilized the removable battery pack connection as in Pitzen in place of the arrangement in Smith to provide for an alternative manner of securing a battery pack to a surgical device. The Examiner is of the position that either arrangement would function equally as well as one another and with a reasonable expectation of success to provide for the removable pack as in Smith.
The Examiner is further of the position that the arrangement in Pitzen would provide the combined device with the functionality of the clutch functioning to transition the electrical circuit from the first state to the second state. Such would be provided via the locks causing the transition of the circuit as in the rejection of claim 21 above as the battery pack is attached to the device.
Claim 32 is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Smith et al. (US Pat. Pub. 2009/0057369 A1) in view of Hashimoto et al. (US Pat. No. 5,477,130) and Kamenoff (US Pat. No. 6,900,615 B2) as applied to claim 28 above, and further in view of Smith et al. (US Pat. Pub. 2009/0143798 A1) hereinafter “Smith ‘798”.
Regarding claim 32, Smith provides that the surgical instrument comprises a battery pack receptacle (See figure 37 with the receptacle in the device for receiving the battery; see also [0017], [0209] and [0210] providing for a removable battery pack). While Smith provides for the receptacle and the battery pack, the disclosure of Smith is silent with respect to the specific structure of the battery pack so as to include a first instrument electrode and a second instrument electrode, wherein the battery pack further comprises: an anode electrically coupled to the first cell, and a cathode electrically coupled to the second cell; wherein, upon the attachment of the battery pack to the surgical instrument, the first instrument electrode contacts the anode and the second instrument electrode contracts the cathode. Neither Hashimoto nor Kamenoff specifically cure this deficiency in Smith.
Smith ‘798 discloses an exemplary coupling of a surgical instrument having an electrical circuit and an electrical circuit of a battery pack. Therein, Smith ‘798 specifically contemplates a first and a second instrument electrode (via the instrument side portion of the contacts 1426 from Smith ‘798), and wherein said battery pack further comprises: an anode electrically coupled to said first cell; and a cathode electrically coupled to said second cell (the battery pack side of the contacts 1426 from Smith ‘798). Therefore, it is the Examiner’s position that it would have been obvious to one of ordinary skill in the art at the time of filing to have utilized the instrument and battery pack contacts of Smith ‘798 in combination with the instrument and battery pack as of Smith to provide for an exemplary manner of electrically connecting the battery pack to the surgical instrument when the battery pack is attached to the instrument.
The Examiner is then of the position that the combined arrangement of Smith and Smith ‘798 would provide the functionality that upon the attachment of the battery pack to the surgical instrument, the first instrument electrode contacts the anode and the second instrument electrode contacts the cathode (in view of the anode and cathode arrangement of the battery pack in figures 37 and 38 of Smith, and the electrical contacts for each respective connection of 1426 via Smith ‘798).
Claims 33-37 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Smith et al. (US Pat. Pub. 2009/0057369 A1) further in view of Hashimoto et al. (US Pat. No. 5,477,130) and Sink et al. (US Pat. No. 6,270916 B1).
Regarding claim 33, Smith provides for a surgical instrument system, comprising: a battery pack for powering a surgical instrument (removable battery pack as in [0246]),
wherein the surgical instrument comprises an electrical circuit configurable in a first physical state and a second physical state (1100 as in figure 36; see [0235], [0240] and [0246] with the isolation of cell 1510a from the remainder of the cells being a first physical state, with the connection of the pack to the device providing for actuation of 1100 to connect all six cells being a second physical state), and
wherein said electrical circuit comprises an anode (anode connection to the cells 1510), a cathode (cathode connection to the cells 1510), a first cell comprising a first positive pole (1510a), and a second cell comprising a second positive pole (one of the remaining 1510),
wherein, in response to electrically coupling of the anode and the cathode to the surgical instrument, the electrical circuit of the surgical instrument is configured to transition from the first physical state to the second physical state (via the insertion of the removable battery pack to the device to provide capability of the switching between the first and second states above),
wherein the first positive pole of the first cell and the second positive pole of the second cell are electrically decoupled in the first physical state and coupled in the second physical state (via the first switch position as in [0246] to use only the power of 1510a; in the position the positive pole of 1510a would be decouples from the one of the remaining positive poles of cells 1510),
wherein the first positive pole of the first cell and the second positive pole of the second cell are electrically coupled in the second physical state (via [0246] providing for the use of all power of 1510a/1510 thereby coupling the positive poles of each of 1510a and 1510), and
wherein an attachment of the battery pack to the surgical instrument electrically couples the anode and the cathode (via the battery pack having the anode and cathode connections as noted above and being electrically connected to one another when inserted into the surgical device), and wherein the anode and the cathode are electrically decoupled when the battery pack is not attached to the surgical instrument (via battery pack having the anode and cathode connections as noted above and being electrically isolated from one another when the battery pack is removed from the device).
Smith fails to specifically provide that the electrical circuit is in the battery pack and for the circuit to include a discharge circuit including a manual discharge switch wherein the manual discharge switch is configured to drain the first and second cells.
Hashimoto provides battery pack arrangement as that of Smith and specifically provides for such to have an electrical circuit therein and wherein the electrical circuit therein is transitioned from a first state to a second state based on the attachment of the battery pack to a device (see figure 2 with the battery 22 having various circuitry therein and with the switch 210 functioning to provide for the change of state). As such, the Examiner is of the position that the relocation of the electrical circuit including the above-noted switch from the surgical instrument to the battery pack would have been obvious consideration to one of ordinary skill in the art when designing the surgical instrument arrangement of Smith would have been an obvious consideration in view of the teachings of Hashimoto given that either placement of the electrical circuit is known in the art and would work equally as well as one another to provide for the disclosed high and low power drive of the surgical instrument. Additionally, the Examiner notes that the moving of the electrical circuit would have been further obvious given that since it has been held that rearranging parts of an invention involves only routine skill in the art. In re Japikse, 86 USPQ 70.
Hashimoto fails to specifically contemplate that the electrical circuit includes a discharge circuit as claimed. Sink discloses an exemplary discharge circuit included with a battery pack (battery 2 with the circuit as shown in figures 1 and 2). Sink specifically provides that the discharge circuit functions as a manual discharge switch (via the manual removal of 6/8) wherein the manual discharge switch is configured to drain the first and second cells (see col. 2; 46-50).
Therefore, it is the Examiner’s position that it would have been further obvious to one of ordinary skill in the art at the time of filing to have utilized a manual discharge circuit as in Sink to the combined system of Smith and Hashimoto to provide for a combined arrangement that is configured to drain the batteries of the battery pack. Such ensures that the battery pack, can be placed is placed into a safe condition where the battery is discharged and can subsequently be disposed of safely (see col. 1; 7-30 of Sink).
Regarding claim 34, in view of the combination with Sink in the rejection of claim 33 above, the manual discharge switch is further configurable in a closed position and an open position (with figure 2 showing the closed position and figure 1 showing the open position), and wherein the draining of the first and second cells occurs when the manual discharge switch is in the closed position (via the closed position in figure 2 activating the drain circuit; see further col. 2; 46-50 of Sink).
Regarding claim 35, in view of the combination with Sink in the rejection of claim 33 above, the manual discharge switch comprises a spring (Spring contact 5), and wherein the manual discharge switch is mechanically biased to the closed position by the spring (via 5 being biased against the strip 6 and moving via the bias to the position in figure 2).
Regarding claim 36, in view of the combination with Sink in the rejection of claim 33 above, the manual discharge switch further comprises a stopper (strip 6), and wherein the stopper is configurable to overcome the mechanical bias of the spring to configure the manual discharge switch in the open position (via 6 being mechanically placed against 5 to move such away from the contact at 4; see figure 1).
Regarding claim 37, in view of the combination in the rejection of claim 33 above, the electrical circuit would be provided for in the battery pack. The Examiner is of the position that the electrical circuit then further comprises a switch intermediate the first cell and the second cell (1100 as in figure 36), and wherein said switch is configured to electrically couple the first cell and the second cell upon the attachment of said battery pack to said surgical instrument (see [0235], [0240] and [0246] with the isolation of cell 1510a from the remainder of the cells, with the connection of the pack to the device providing for actuation of 1100 to connect all six cells).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 21, 23 and 25-30 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 9-15 of U.S. Patent No. 10,492,787 B2 in view of Hashimoto et al. (US Pat. No. 5,477,130).
Regarding claim 21, the Examiner is of the position that the follows correlations existing between the instant limitations and those set forth in patented claim 9:
Instant claim 21
Patented claim 9
(a) a surgical instrument;
(b) a battery pack
wherein the battery pack comprises a discharge circuit, wherein the discharge circuit is configured to transition from an open position to a closed position in response to removal of the battery pack from the surgical instrument, and wherein in the closed position, the discharge circuit is configured to drain the battery pack.
a surgical instrument
a battery pack
a drain, wherein the assembly of the battery pack to said surgical instrument is configured to close said electrical circuit and to place said drain in a drain portion …
The difference between instant claim 21 and patented claim 9 exists in the electrical circuit in the patented claim being placed in the surgical instrument and not the battery pack. Hashimoto, however, provides for a battery pack arrangement that includes an electrical circuit therein and wherein the electrical circuit therein is transitioned from a first state to a second state based on the attachment of the battery pack to a device (see figure 2 with the battery 22 having various circuitry therein and with the switch 210 functioning to provide for the change of state).’
Therefore, it is the Examiner’s position that the relocation of the electrical circuit including the above-noted switch from the surgical instrument as in patented claim 9 to the battery pack would have been obvious consideration to one of ordinary skill in the art in view of the teachings of Hashimoto. The Examiner finds that either placement of the electrical circuit is would work equally as well as one another to provide for the electrical connection of the cells of the battery pack to the surgical device upon attachment of the battery pack to the device. Additionally, the Examiner notes that the moving of the electrical circuit would have been further obvious given that since it has been held that rearranging parts of an invention involves only routine skill in the art. In re Japikse, 86 USPQ 70.
Again, regarding instant claim 21, the Examiner is of the position that the follows correlations existing between the instant limitations and those set forth in patented claim 14:
Instant claim 21
Patented claim 14
(a) a surgical instrument;
(b) a battery pack
wherein the battery pack comprises a discharge circuit, wherein the discharge circuit is configured to transition from an open position to a closed position in response to removal of the battery pack from the surgical instrument, and wherein in the closed position, the discharge circuit is configured to drain the battery pack.
a surgical instrument
a battery pack
a drain, … means for placing said drain in electrical communication … when said battery pack is disassembled from said surgical instrument
The difference between instant claim 21 and patented claim 14 exists in the electrical circuit in the patented claim being placed in the surgical instrument and not the battery pack. Hashimoto, however, provides for a battery pack arrangement that includes an electrical circuit therein and wherein the electrical circuit therein is transitioned from a first state to a second state based on the attachment of the battery pack to a device (see figure 2 with the battery 22 having various circuitry therein and with the switch 210 functioning to provide for the change of state).’
Therefore, it is the Examiner’s position that the relocation of the electrical circuit including the above-noted switch from the surgical instrument as in patented claim 9 to the battery pack would have been obvious consideration to one of ordinary skill in the art in view of the teachings of Hashimoto. The Examiner finds that either placement of the electrical circuit is would work equally as well as one another to provide for the electrical connection of the cells of the battery pack to the surgical device upon attachment of the battery pack to the device. Additionally, the Examiner notes that the moving of the electrical circuit would have been further obvious given that 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 instant claim 23, see either patented claims 13 or 15;
Regarding instant claims 25 and 26, see patented claim 14;
Regarding instant claim 27-29, see patented claims 10-12 or 14;
Regarding instant claim 30, see patented claim 14;
Claims 33-37 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 14 of U.S. Patent No. 10,492,787 B2 in view of Hashimoto et al. (US Pat. No. 5,477,130) and Sink et al. (US Pat. No. 6,270916 B1).
Regarding claim 33, the Examiner is of the position that the follows correlations existing between the instant limitations and those set forth in patented claim 9:
Instant claim 33
Patented claim 14
A surgical instrument system,
a battery pack configured to power a surgical instrument,
wherein the battery pack comprises: (A) an anode, (B) a cathode, (C) a first cell comprising a first positive pole and (D) a second cell comprising a second positive pole; and
(b) a discharge circuit including a manual discharge switch, wherein the manual discharge switch is configured to drain the first and second cells,
wherein in response to electrical coupling of the anode and the cathode to the surgical instrument, the electrical circuit of the battery pack is configured to transition from the first physical state to the second physical state, … are configured to electrically decouple when the battery pack is removed from the surgical instrument.
a surgical instrument
a battery pack
a first and a second lithium-ion battery cell with the claim means for holding
a drain … means for placing said drain
via the means for closing said electrical circuit and means for placing each of the first and second lithium-ion cell
The difference between instant claim 33 and patented claim 14 exists in the electrical circuit in the patented claim being placed in the surgical instrument and not the battery pack. Hashimoto, however, provides for a battery pack arrangement that includes an electrical circuit therein and wherein the electrical circuit therein is transitioned from a first state to a second state based on the attachment of the battery pack to a device (see figure 2 with the battery 22 having various circuitry therein and with the switch 210 functioning to provide for the change of state).’
Therefore, it is the Examiner’s position that the relocation of the electrical circuit including the above-noted switch from the surgical instrument as in patented claim 9 to the battery pack would have been obvious consideration to one of ordinary skill in the art in view of the teachings of Hashimoto. The Examiner finds that either placement of the electrical circuit is would work equally as well as one another to provide for the electrical connection of the cells of the battery pack to the surgical device upon attachment of the battery pack to the device. Additionally, the Examiner notes that the moving of the electrical circuit would have been further obvious given that since it has been held that rearranging parts of an invention involves only routine skill in the art. In re Japikse, 86 USPQ 70.
The instant claim further differs from the patented claim in that the patented drain is not a manual drain. Sink discloses an exemplary discharge circuit included with a battery pack (battery 2 with the circuit as shown in figures 1 and 2). Sink specifically provides that the discharge circuit functions as a manual discharge switch (via the manual removal of 6/8) wherein the manual discharge switch is configured to drain the first and second cells (see col. 2; 46-50).
Therefore, it is the Examiner’s position that it would have been further obvious to one of ordinary skill in the art at the time of filing to have utilized a manual discharge circuit as in Sink to the system of patented claim 14 to provide for a combined arrangement that is configured to drain the batteries of the battery pack. Such ensures that the battery pack, can be placed is placed into a safe condition where the battery is discharged and can subsequently be disposed of safely (see col. 1; 7-30 of Sink).
Regarding instant claims 34-37, see patented claim 14 as well as the teachings of the manual drain of Sink.
Claims 21 and 27-30 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 5 and 15 of U.S. Patent No. 10,188,393 B2 in view of Hashimoto et al. (US Pat. No. 5,477,130).
Regarding claim 21, the Examiner is of the position that the follows correlations existing between the instant limitations and those set forth in patented claim 9:
Instant claim 21
Patented claims 1 + 5
(a) a surgical instrument;
(b) a battery pack
wherein the battery pack comprises a discharge circuit, wherein the discharge circuit is configured to transition from an open position to a closed position in response to removal of the battery pack from the surgical instrument, and wherein in the closed position, the discharge circuit is configured to drain the battery pack.
1: a surgical instrument
1: a battery pack
5: a drain having a discharge switch .. said drain is electrically couple to said battery pack .. configured to drain said first and second battery cells
The difference between instant claim 21 and patented claims 1 and 5 exists in the electrical circuit in the patented claim being placed in the surgical instrument and not the battery pack. Hashimoto, however, provides for a battery pack arrangement that includes an electrical circuit therein and wherein the electrical circuit therein is transitioned from a first state to a second state based on the attachment of the battery pack to a device (see figure 2 with the battery 22 having various circuitry therein and with the switch 210 functioning to provide for the change of state).’
Therefore, it is the Examiner’s position that the relocation of the electrical circuit including the above-noted switch from the surgical instrument as in patented claims 1 and 5 to the battery pack would have been obvious consideration to one of ordinary skill in the art in view of the teachings of Hashimoto. The Examiner finds that either placement of the electrical circuit is would work equally as well as one another to provide for the electrical connection of the cells of the battery pack to the surgical device upon attachment of the battery pack to the device. Additionally, the Examiner notes that the moving of the electrical circuit would have been further obvious given that since it has been held that rearranging parts of an invention involves only routine skill in the art. In re Japikse, 86 USPQ 70.
Again, regarding instant claim 21, the Examiner is of the position that the follows correlations existing between the instant limitations and those set forth in patented claims 5 and 15:
Instant claim 21
Patented claims 11 + 15
(a) a surgical instrument;
(b) a battery pack
wherein the battery pack comprises a discharge circuit, wherein the discharge circuit is configured to transition from an open position to a closed position in response to removal of the battery pack from the surgical instrument, and wherein in the closed position, the discharge circuit is configured to drain the battery pack.
11: a surgical instrument
11: a battery pack
15: a drain having a discharge switch .. configured to drain said first and second battery cells
The difference between instant claim 21 and patented claims 11 and 15 exists in the electrical circuit in the patented claim being placed in the surgical instrument and not the battery pack. Hashimoto, however, provides for a battery pack arrangement that includes an electrical circuit therein and wherein the electrical circuit therein is transitioned from a first state to a second state based on the attachment of the battery pack to a device (see figure 2 with the battery 22 having various circuitry therein and with the switch 210 functioning to provide for the change of state).’
Therefore, it is the Examiner’s position that the relocation of the electrical circuit including the above-noted switch from the surgical instrument as in patented claim 9 to the battery pack would have been obvious consideration to one of ordinary skill in the art in view of the teachings of Hashimoto. The Examiner finds that either placement of the electrical circuit is would work equally as well as one another to provide for the electrical connection of the cells of the battery pack to the surgical device upon attachment of the battery pack to the device. Additionally, the Examiner notes that the moving of the electrical circuit would have been further obvious given that 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 instant claims 27-30, see patented claims 1+5 or claims 11+15
Claims 33-37 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 5 and 15 of U.S. Patent No. 10,188,393 B2 in view of Hashimoto et al. (US Pat. No. 5,477,130) and Sink et al. (US Pat. No. 6,270916 B1).
Regarding claim 33, the Examiner is of the position that the follows correlations existing between the instant limitations and those set forth in either the combinations of patented claim 1+ 5 or 11+ 15:
Instant claim 33
Patented claims 1+5 or 11+15
A surgical instrument system,
a battery pack configured to power a surgical instrument,
wherein the battery pack comprises: (A) an anode, (B) a cathode, (C) a first cell comprising a first positive pole and (D) a second cell comprising a second positive pole; and
(b) a discharge circuit including a manual discharge switch, wherein the manual discharge switch is configured to drain the first and second cells,
wherein in response to electrical coupling of the anode and the cathode to the surgical instrument, the electrical circuit of the battery pack is configured to transition from the first physical state to the second physical state, … are configured to electrically decouple when the battery pack is removed from the surgical instrument.
1/11: a surgical instrument
1/11: a battery pack
1/11: a first and a second battery cell and the associated 3rd/4th electrodes
5/15: a drain having a discharge switch
1/11: Such is provided for in the disclosed attachment of the battery pack to the instrument
The difference between instant claim 33 and patented claim 14 exists in the electrical circuit in the patented claim being placed in the surgical instrument and not the battery pack. Hashimoto, however, provides for a battery pack arrangement that includes an electrical circuit therein and wherein the electrical circuit therein is transitioned from a first state to a second state based on the attachment of the battery pack to a device (see figure 2 with the battery 22 having various circuitry therein and with the switch 210 functioning to provide for the change of state).’
Therefore, it is the Examiner’s position that the relocation of the electrical circuit including the above-noted switch from the surgical instrument as in patented claim 9 to the battery pack would have been obvious consideration to one of ordinary skill in the art in view of the teachings of Hashimoto. The Examiner finds that either placement of the electrical circuit is would work equally as well as one another to provide for the electrical connection of the cells of the battery pack to the surgical device upon attachment of the battery pack to the device. Additionally, the Examiner notes that the moving of the electrical circuit would have been further obvious given that since it has been held that rearranging parts of an invention involves only routine skill in the art. In re Japikse, 86 USPQ 70.
The instant claim further differs from the patented claim in that the patented drain is not a manual drain. Sink discloses an exemplary discharge circuit included with a battery pack (battery 2 with the circuit as shown in figures 1 and 2). Sink specifically provides that the discharge circuit functions as a manual discharge switch (via the manual removal of 6/8) wherein the manual discharge switch is configured to drain the first and second cells (see col. 2; 46-50).
Therefore, it is the Examiner’s position that it would have been further obvious to one of ordinary skill in the art at the time of filing to have utilized a manual discharge circuit as in Sink to the system of patented claim 14 to provide for a combined arrangement that is configured to drain the batteries of the battery pack. Such ensures that the battery pack, can be placed is placed into a safe condition where the battery is discharged and can subsequently be disposed of safely (see col. 1; 7-30 of Sink).
Regarding instant claims 34-37, see patented claim 14 as well as the teachings of the manual drain of Sink.
Conclusion
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/Ronald Hupczey, Jr./Primary Examiner, Art Unit 3794