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 .
Claim Objections
Claims 3 and 15 are objected to because of the following informalities:
In claim 3, line 2, “wherein in that” should read --wherein--.
In claim 15, line 12, “the electro-surgical Electro-surgical” should read --the electro-surgical--.
Appropriate correction is required.
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.
Claims 3-7, 9-10, 12-14, and 16-18 are 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.
In claims 3 and 6, it is unclear which direction the terms “circumferential” and “circumferentially” refer to, which renders the scope of the claims unclear. For examination purposes, the claims will be read without these limitations. Dependent claims 4 and 7 are necessarily rejected as being dependent upon a rejected base claim.
In claims 5-6, 9-10, and 13, the limitation “the contact portion” lacks sufficient antecedent basis because it is unclear whether the limitation refers to the electrically conductive contact portion recited in claim 1. Dependent claim 18 is necessarily rejected as being dependent upon a rejected base claim.
In claim 12, the limitations “non-emerging joint mechanism” and “rotationally manipulated without displacement” are unclear because it is unclear what the joint mechanism does not emerge from, and in which direction displacement is avoided. For examination purposes, the claim will be read as wherein the levers can be rotationally manipulated.
In claim 14, the second instance of “an electrically conductive contact portion” is unclear because it is unclear whether it refers to the same electrically conductive contact portion recited earlier in the claim. Examiner recommends changing “an” to --the--.
Claims 16 and 17 recite the limitation “the securing element” in lines 2-3. There is insufficient antecedent basis for this limitation in the claim. Additionally, because it is unclear what element is referred to by this limitation, for examination purposes, the claims will be read as wherein lever extension and lever are integrally bond connected together, and wherein the lever extension and electrically conductive contact portion are integrally bond connected together.
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.
Claims 1-2, 5, 8-11, 13-15, and 18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Dorn (US Patent No. 6,334,860).
Regarding claims 1 and 15, Dorn discloses an electrosurgical instrument, comprising an endoscopic instrument (Fig. 1: endoscopic electrosurgical instrument 10; col 4, lines 59-62: “The instrument 10 according to this embodiment is used as a grasping instrument for grasping human or animal tissue under control of an endoscope”), having a handling device for (Figs. 1-2: jaw parts 14, 16), the handling device comprising:
a joint mechanism which has at least one handling-side lever which is configured to be moved for manipulation (Fig. 2: metallic base 28; col 5, line 18: “the metallic base 28 is moveable”);
a lever extension, which is configured as an electrical insulator and which is fixedly coupled to the lever (Fig. 2: insulator element 32; col 5, lines 20-21: “the metallic bases 28, 30 each have an insulator element 32, 34”);
and an electrically conductive contact portion, which is fixedly coupled to the lever extension and which is arranged on a side of the lever extension that is configured to be subjected to force via the joint mechanism (Fig. 2: conductive element 36; col 5, lines 34-37: “A conductive element 36, 38 forming an electrode is connected respectively to each of the insulator elements 32, 34. The conductive elements 36, 38 are made of metal and are therefore electrically conductive”)
and is configured for electrosurgical contacting biological tissue (col 1, lines 36-41: “When applying bipolar high frequency power, the two jaw parts when acting as a cutting tool achieve a better cutting effect due to the thermal effects of the high frequency current. On the other hand, when acting as a grasping tool a coagulation of the tissue grasped between the jaw parts is achieved through heat generation”).
Examiner notes that claim 15 includes product-by-process limitations. Even 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 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 2, Dorn discloses the device of claim 1 as described previously. Dorn further discloses wherein the lever extension is form-fittingly connected to the lever (Fig. 3 and col 5, 25-29: “The metallic base 30 has a rounded, concave form for receiving the insulator element 32 in formfit manner. The metallic base 28 has the same configuration to which the insulator element 32 of the first jaw part 14 is connected”).
Regarding claim 5, Dorn discloses the device of claim 1 as described previously. Dorn further discloses wherein the contact portion is form-fittingly connected to the lever extension (Fig. 3: conductive element 38 form-fitting with insulator 34; col 5, lines 33-35: “A conductive element 36, 38 forming an electrode is connected respectively to each of the insulator elements 32, 34”).
Regarding claim 8, Dorn discloses the device of claim 1 as described previously. Dorn further discloses wherein the lever extension mechanically extends the lever (Fig. 2: insulator 32 mechanically extending metallic base 28 in length and width).
Regarding claims 9 and 18, Dorn discloses the device of claim 8 as described previously. Dorn further discloses wherein the contact portion is arranged in a region which is mechanically extended by the lever extension and into which the lever does not extend completely (Fig. 2: conductive element 36 arranged in a region spaced apart from the metallic base 28 by the insulator 32; examiner interprets the conductive element spaced apart from the metallic base as arranged in a region into which the lever does not extend completely, as broadly as claimed).
Regarding claim 10, Dorn discloses the device of claim 1 as described previously. Dorn further discloses wherein the lever extension has a passage opening which is configured for an electrical conductor to pass through from the side of the joint mechanism to the contact portion for high-frequency activation of the contact portion (Fig. 2: electrical line 52; col 6, lines 31-35: “The distal end 56 of the line 52 as well as the distal end 58 of the line 54 is embedded with all sides closed in the respective insulator elements 32, 34. A corresponding axial bore is made through the insulator elements 32, 34 for this purpose”).
Regarding claim 11, Dorn discloses the device of claim 1 as described previously. Dorn further discloses wherein the joint mechanism has a second lever which can be moved for manipulation (Fig. 2: second jaw part 16; col 5, lines 5-6: “both the jaw part 14 and the jaw part 16 are moveable”).
Regarding claim 13, Dorn discloses the device of claim 11 as described previously. Dorn further discloses wherein the second lever is fixedly coupled to a second lever extension configured as an electrical insulator and the second lever extension is coupled to an electrically conductive second contact portion, wherein the contact portions are arranged corresponding to one another in each case on an inner side of the lever extensions and are configured for the bipolar high-frequency treatment of biological tissue (Fig. 2: second jaw 16 with insulator 34 and conductive element 38 facing conductive element 36).
Regarding claim 14, the limitations of the claim are rejected for the same reasons set forth previously in the rejections of claims 1, 2, and 5, since the claimed method broadly recites steps for generally forming the device recited in claims 1, 2, and 5.
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.
Claims 3-4, 6-7, and 16-17 are rejected under 35 U.S.C. 103 as being unpatentable over Dorn in view of Slater (WO 9622740).
Dorn teaches the device of claim 1 as described previously but does not explicitly teach tongue-and-groove connections with corresponding mounting portions between the lever and lever extension, or between the lever extension and the contact portion, and wherein each tongue-and-groove connection is configured to be fixed with an additional locking mechanism. However, in an analogous art, Slater teaches a handling device for an electrosurgical instrument utilizing tongue-and-groove connections as a means for securing elements of the jaws together, with adhesive as an additional locking mechanism, wherein the elements are integrally bond connected via the adhesive (Fig. 3c; page 9, line 34–page 10, line 9: “An electrically non- conductive ceramic insert 129 is provided with a groove engaging tongue 129c and is inserted into the groove 128g of the blade 128. […] The ceramic insert 129 is cast or molded with an integral groove engaging tongue 129c which is kept in place in the groove 128g by an adhesive (not shown), a friction fit, or any other desired mechanism”).
To provide the device of Dorn with tongue-and-groove connections between the lever and lever extension, and between the lever extension and the contact portion, would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, because one of ordinary skill in the art would have recognized that applying the known technique taught by Slater (namely, using tongue-and-groove connections between elements of electrosurgical jaws with additional adhesive) to the handling device of Dorn would have yielded predictable results and resulted in an improved system, namely, a system with additional mechanical stability provided by the interlocking features of the tongue-and-groove connections.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Dorn in view of Garrison (US PGPub No. 2014/0100564).
Dorn teaches the device of claim 11 as described previously but is silent with respect to the details of the second jaw’s movement and does not explicitly teach wherein both levers can be rotationally manipulated. However, in a related electrosurgical art, Garrison teaches a handling device with first and second levers that can be rotationally manipulated (Fig. 1: jaw assemblies 110 and 120) and cooperate to grasp tissue therebetween (par. 0042: “impart movement to the jaw assemblies 110 and 120 from an open position, wherein the jaw assemblies 110 and 120 are disposed in spaced relation relative to one another, to a clamping or closed position, wherein the jaw assemblies 110 and 120 cooperate to grasp tissue therebetween”). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the device of Dorn by configuring both levers to be rotationally manipulated, as taught by Garrison, so that the levers can cooperate to grasp tissue therebetween, as taught by Garrison.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVINA E LEE whose telephone number is (571)272-5765. The examiner can normally be reached Monday through Friday between 8:00 AM and 5:30 PM (ET).
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, LINDA C DVORAK can be reached at 571-272-4764. 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.
/LINDA C DVORAK/Primary Examiner, Art Unit 3794
/D.E.L./Examiner, Art Unit 3794