CTNF 18/691,140 CTNF 71152 Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. Election/Restrictions Applicant’s election without traverse of Species A in the reply filed on April 27, 2026 is acknowledged. Applicant is correct that claim 30 is part of Species A. Accordingly, claims 27-29 withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim. Claims 1-12, 15-19 and 30 (drawn to Species A) remain for examination. Claim Rejections - 35 USC § 112 07-30-02 AIA 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. 07-34-01 Claim 12 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 12 recites “a rotational coupling” when a rotational coupling has already been recited in independent claim 1, from which claim 12 depends. Claim 12 should instead recite “the rotational coupling.” At line 5 of claim 12, there appears to be a misplaced sentence fragment in “coupling.shaft.” Claim Rejections - 35 USC § 102 07-06 AIA 15-10-15 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. 07-07-aia AIA 07-07 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 – 07-08-aia AIA (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. 07-15-aia AIA Claim(s) 1, 3-12, 16-19 and 30 is/are rejected under 35 U.S.C. 102 (a)(1) as being anticipated by Austin et al. (EP 0795301) . In regard to claims 1, 3-5, 11, 12, 16-18 and 30 , Austin et al. teach a bipolar electrosurgical instrument 10 for grasping, manipulating and cutting tissue (see para. 0001) comprised of an end effector 14 and an elongated hollow tube 16 where end effector 14 comprises a first jaw member 32 (second jaw member) and a second jaw member 34 (first jaw member) (see Figs. 1 and 2 and para. 0020). Jaw 32 includes an electrode 36 and jaw 34 includes electrodes 38 and 40 and electrode 36 includes a coagulating surface 46 and a cutting edge 48 (see Fig. 2 and para. 0021). Elongated hollow tube 16 includes a mechanism connecting a handle 12 to jaw 32 such that movement of a first grip member 18 relative to a second grip member 20 causes jaw 32 to move relative to jaw 34 (see Figs. 2 and 3 and para. 0021). End effector 14 may be opened and closed by translational movement of connecting rod 50 that pivots a lever 52 around a pivot pin 44 (closure block) (see the arrows on Fig. 2 and para. 0023). Jaw 32 and electrode 36 are mounted to connector 52 via a pivot pin 60 and electrode 36 is held in place by a set screw 62 that rides in a channel 64 allowing jaw 32 and electrode 36 to pivot 360 degrees around pivot pin 60 (see para. 0025-0026 and Figs. 5 and 6). Thus, connector 52 constitutes a rotational coupling that allows for movement of the jaws 32, 34 relative to one another (opening and closing) and rotation of the jaw 32 around a roll axis that is transverse to the pivot axis of pivot pin 44 and rod 50 constitutes an actuable element (see also Figs. 3 and 4 showing the rotation of jaw 32). Figure 7 shows the first orientation of jaws 32, 34 where the coagulation surface 46 (second electrode portion) of electrode 36 holds tissue 58 in place against electrodes 38, 40 and the tissue 58 acts as an electrical conductor such that when electrosurgical energy is applied to the end effector 14, it results in electrical current 68 flowing from electrode 36 to electrodes 38, 40 to cauterize or seal tissue (see para. 0027). Figure 8 shows the second orientation where electrical energy is applied to electrode 36 such that when electrode 36 contacts electrically conductive tissue 58, electrical current 66 will flow from electrode 36 to electrodes 38, 40 and tissue 58 in the region between electrodes 38, 40 is cut by the cutting edge 48 (third electrode portion) of electrode 36 (see para. 0028). With further respect to claim 5 , Figures 7 and 8 of Austin et al. show that the coagulation surface 46 has a larger area than the cutting edge 48. In regard to claims 6, 7, 9 and 10 , Figures 7-9 show that the coagulation surface 46 and the cutting edge 48 are integral to a common body but are physically distinct and separated from one another (on opposite sides of electrode 36). In regard to claim 8 , see Figures 3 and 4 of Austin et al. In regard to claim 19 , see Figures 7-9 of Austin et al . Conclusion 07-96 AIA The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The following prior art references teach instruments with end effectors that both cut and coagulate: Dycus et al., U.S. Patent Application Publication No. 2018/0206907; Hibner et al., U.S. Patent Application Publication No. 2016/0089175; and Shelton, IV et al., U.S. Patent Application Publication No. 2014/0005718 . Any inquiry concerning this communication or earlier communications from the examiner should be directed to BEVERLY MEINDL FLANAGAN whose telephone number is (571)272-4766. The examiner can normally be reached Mon-Fri 7:30AM to 5:00PM. 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, Joanne Rodden can be reached at (303) 297-4276. 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. /BEVERLY M FLANAGAN/Primary Examiner, Art Unit 3794 Application/Control Number: 18/691,140 Page 2 Art Unit: 3794 Application/Control Number: 18/691,140 Page 3 Art Unit: 3794 Application/Control Number: 18/691,140 Page 4 Art Unit: 3794 Application/Control Number: 18/691,140 Page 5 Art Unit: 3794 Application/Control Number: 18/691,140 Page 6 Art Unit: 3794
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