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 .
Election/Restrictions
Applicant’s election without traverse of Group I and Species I in the reply filed on 7/27/2026 is acknowledged.
Claims 24-26, 29-34, and 37-39 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected group or species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 7/27/2026. Applicant elected claims 25-26 and claim 39 as corresponding to Group I and Species I. However, claims 25-26 depend on claim 24, which does not correspond to Group I and Species I and claim 39 describes the embodiment depicted in Figures 5A-C which also does not correspond to Group I and Species I.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 36 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Regarding claim 36, the claim language recites “wherein the polymer overmold is injected molded”. Overmold is a type of injection molding so without stating a specific material, this is seen as the same recitation as “polymer overmold” from claim 35. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements. Based on claim 22, it appears that the claim was intended to read “wherein the polymer overmold includes injected molded silicone”, and therefore it is examined as such below.
Claim Rejections - 35 USC § 102
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 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.
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 21 and 28 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Worrell et al., US 20170238991, herein referred to as “Worrell”.
Regarding claim 21, Worrell teaches a forceps (Figure 1A) comprising: a forceps jaw (Figure 1B: first jaw 15a), the forceps jaw including: a forceps jaw frame (Figure 1B: outer portion 16a); and a plurality of standoffs (Figures 22 and 24-26: electrically insulative elements 406); a polymer overmold material (Figures 22-26: electrically insulative element 410) overmolded on the forceps jaw frame ([0398]: “The electrically insulative element 410 of the flexible circuit electrode 400 is formed of electrically insulative material such as a polymer and more specifically can be an electrically insulative material (e.g., polyimide, polyester, fluorocarbon, or any polymeric material, or any combinations thereof)”); and an electrical conductor layer located on a polymer overmold surface of the polymer overmold (Figures 24-26: electrode segments 404a, 404b of the electrically conductive element 404), the electrical conductor layer including electrically conductive traces extending from a surface of the electrical conductor layer where the plurality of standoffs are located on the polymer overmold surface and separate opposing ones of the electrically conductive traces in a closed position of the forceps jaw (Figures 22-26: electrode segments 404a, 404b of the electrically conductive element 404).
Regarding claim 28, Worrell discloses the forceps of claim 21, further comprising: a second forceps jaw (Figure 1B: second jaw 15b) including a second forceps jaw frame opposing the forceps jaw frame (Figure 1B: outer portion 16b); and a second polymer overmold located on the second forceps jaw frame and opposing the polymer overmold (Figures 22-26: electrically insulative element 410 and [0398]: “The electrically insulative element 410 of the flexible circuit electrode 400 is formed of electrically insulative material such as a polymer and more specifically can be an electrically insulative material (e.g., polyimide, polyester, fluorocarbon, or any polymeric material, or any combinations thereof)” and [0338]: “In some aspects, the end effector 14 comprises a first jaw 15a and a second jaw 15b… the first and second jaws 15a, 15b may be transitioned from the open position to a closed position to capture tissue therebetween. Captured tissue may contact one or more working portions of the jaw set, indicated generally as 17a, 17b, configured to apply energy to treat target tissue located at or near the end effector 14.”), the second polymer overmold having a second electrical conductor layer on a surface of the second polymer overmold (Figures 24-26: electrode segments 404a, 404b of the electrically conductive element 404).
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 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.
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.
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.
Claim 22 is rejected under 35 U.S.C. 103 as being unpatentable over Worrell in view of Jones, US 20160199122, herein referred to as “Jones”.
Regarding claim 22, Worrell discloses the forceps of claim 21, but does not explicitly disclose a forceps wherein the polymer overmold includes injected molded silicone.
However, Jones teaches a forceps ([0053]: “The jaw member 27 can be assembled together with another similar jaw member to form an end effector for a forceps instrument, as will be known in the art for the sealing and/or cutting of tissue.”) wherein the polymer overmold includes injected molded silicone ([0047]: “The assembled shim and insert are placed into a mould (not shown), and a flowable plastics material 15 such as silicone is injected into the mould.”).
It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to modify the forceps disclosed by Worrell so that the polymer overmold includes injected molded silicone as taught by Jones to ensure that all available areas of the jaw are filled properly when making the forceps (Jones [0047]).
Claim 23 is rejected under 35 U.S.C. 103 as being unpatentable over Worrell in view of Davis et al., US 20190083166, herein referred to as “Davis”.
Regarding claim 23, Worrell discloses the forceps of claim 21, but does not explicitly disclose a forceps wherein at least one of the plurality of standoffs includes a ceramic standoff.
However, Davis teaches a forceps (Figure 2) wherein at least one of the plurality of standoffs includes a ceramic standoff ([0051]: “In various examples, sealplate spacers 142 may be polymeric components, ceramic components, ceramic-polymer composite components, a resin plastic injection molded component, undoped silicon components, alumina-filled epoxy components and/or another nonmetallic component.”).
It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to modify the forceps disclosed by Worrell so that at least one of the plurality of standoffs includes a ceramic standoff as taught by Davis to ensure that the standoffs can withstand operating temperatures of the conductor layer (Davis [0051]).
Claim 27 is rejected under 35 U.S.C. 103 as being unpatentable over Worrell in view of Scheller et al., US 20160331442, herein referred to as “Scheller”.
Regarding claim 27, Worrell discloses the forceps of claim 21, but does not explicitly disclose a forceps wherein the electrically conductive layer is formed by additive manufacturing. However, this claim is a product-by-process claim and thus is not limited to the manipulations of the recited steps, only the structure implied by the steps and Worrell teaches a forceps with an electrically conductive layer (Figures 24-26: electrode segments 404a, 404b of the electrically conductive element 404).
Further, Scheller teaches a forceps (Figure 3) wherein the electrically conductive layer is formed by additive manufacturing ([0029]: “In one or more embodiments, a first portion of forceps arm 100 may be manufactured by additive manufacturing and a second portion of forceps arm 100 may be manufactured by computer numerical control machining, e.g., conductor tip 110 may be manufactured by additive manufacturing”).
It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to modify the forceps disclosed by Worrell so that the electrically conductive layer is formed by additive manufacturing as taught by Scheller so that the device can be manufactured in one or more frontal plane layers (Scheller [0029]).
Claim 35 is rejected under 35 U.S.C. 103 as being unpatentable over Worrell in view of Yates et al., US 20190000528, herein referred to as “Yates”.
Regarding claim 35, Worrell discloses a method of forming forceps (Figure 1A and Abstract), the method comprising: providing a forceps jaw (Figure 1B: first jaw 15a), the forceps jaw including: a forceps jaw frame (Figure 1B: outer portion 16a); and a plurality of standoffs (Figures 22 and 24-26: electrically insulative elements 406); forming a polymer overmold on the forceps jaw frame (Figures 22-26: electrically insulative element 410 and [0398]: “The electrically insulative element 410 of the flexible circuit electrode 400 is formed of electrically insulative material such as a polymer and more specifically can be an electrically insulative material (e.g., polyimide, polyester, fluorocarbon, or any polymeric material, or any combinations thereof)”); and forming an electrically conductive layer on a surface of the polymer overmold such that an electrical conductor layer is formed on the surface of the polymer overmold (Figures 24-26: electrode segments 404a, 404b of the electrically conductive element 404), the electrical conductor layer including electrically conductive traces extending from a surface of the electrical conductor layer where the plurality of standoffs are located on the polymer overmold surface and separate opposing ones of the electrically conductive traces in a closed position of the forceps jaw (Figures 22-26: electrode segments 404a, 404b of the electrically conductive element 404). Worrell does not explicitly disclose a method wherein the electrical conductor layer is an electrical conductor ink layer.
However, Yates teaches a method wherein the electrical conductor layer is an electrical conductor ink layer ([0065]: “In some examples, one or more of the conductors 1205 can be coated with a carbon ink or a silver ink. Alternatively, in other examples, the conductors 1205 can be fully made from a carbon ink or a silver ink.”).
It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to modify the method disclosed by Worrell so that the electrical conductor layer is an electrical conductor ink layer as taught by Yates in order to reduce signal noise and/or loss of power/signals in water and/or other body fluids (Yates [0065]).
Claim 36 is rejected under 35 U.S.C. 103 as being unpatentable over Worrell in view of Yates, further in view of Jones.
Regarding claim 36, Worrell in view of Yates discloses the method of claim 35, but does not explicitly disclose a method wherein the polymer overmold includes injected molded.
However, Jones teaches a method ([0053]: “The jaw member 27 can be assembled together with another similar jaw member to form an end effector for a forceps instrument, as will be known in the art for the sealing and/or cutting of tissue.”) wherein the polymer overmold includes injected molded silicone ([0047]: “The assembled shim and insert are placed into a mould (not shown), and a flowable plastics material 15 such as silicone is injected into the mould.”).
It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to modify the method disclosed by Worrell so that the polymer overmold includes injected molded as taught by Jones to ensure that all available areas of the jaw are filled properly when making the forceps (Jones [0047]).
Claim 40 is rejected under 35 U.S.C. 103 as being unpatentable over Worrell in view of Yates, further in view of Ross et al., US 20210153927, herein referred to as “Ross”.
Regarding claim 40, Worrell in view of Yates discloses the method of claim 35, but does not explicitly disclose a method wherein each of the plurality of standoffs are unitary with the polymer overmold and project from the polymer overmold surface.
However, Ross teaches a method wherein each of the plurality of standoffs (Figures 4G-H: spacers 416) are unitary with the polymer overmold and project from the polymer overmold surface (Figures 4G-H and [0143]: “Spacers 416 may be unitary with elastomeric layer 419 and protrude out of openings in seal electrode 406A.”).
Conclusion
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/NORA W RHODES/Examiner, Art Unit 3794
/JOANNE M RODDEN/Supervisory Patent Examiner, Art Unit 3794
