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
The amendment filed 10 June 2026 has been entered. Claims 1, 6, 9, 12, and 14-17 are currently amended. Claims 2-4 and 10 are canceled, and claims 19-24 are new. Claims 1, 5-9, and 11-24 are pending in the application. Applicant’s amendments to the drawings, claims, specification have overcome each and every objection and rejection under 35 U.S.C. 112(b) previously set forth in the Non-Final Office Action mailed 11 February 2026, except for the 112(b) rejection restated below.
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 1, 5-9, and 11-24 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.
Claims 1 and 9 recite the limitation “a contact portion,” which renders the scope of the claims unclear because it is unclear whether this limitation refers to a new contact portion or the same electrically conductive contact portion recited earlier in claim 1. Claims 5-9 and 11-24 are necessarily rejected as depending upon a rejected base claim.
In claims 5-6, 18, and 20, 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 claims 7 and 17 are necessarily rejected as depending upon a rejected base claim.
In claims 6 and 15, the limitation “the form-fitting connection” renders the scope of the claim unclear because it is unclear whether the limitation refers to the first form-fitting connection (between the lever and the lever extension), or the second form-fitting connection (between the lever extension and the electrically conductive contact portion). For examination purposes, the limitation will be interpreted as the second form-fitting connection. Dependent claims 7, 16-17, and 24 are necessarily rejected as depending upon rejected base claims.
In claim 7, the limitation “the tongue-and-groove connection” renders the scope of the claim unclear because it is unclear whether the limitation refers to the first tongue-and-groove connection (between the lever and the lever extension), or the second tongue-and-groove connection (between the lever extension and the electrically conductive contact portion). For examination purposes, the limitation will be interpreted as the second tongue-and-groove connection. Dependent claim 17 is necessarily rejected as depending upon a rejected base claim.
In claim 17, the limitation “the additional locking mechanism” renders the scope of the claim unclear because it is unclear which additional locking mechanism (recited in claim 1 for the lever extension or recited in claim 7 for the contact portion) is recited. For examination purposes, the limitation will be interpreted as the first additional locking mechanism for the lever extension.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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.
Claims 1, 5-9, 11, and 13-24 are rejected under 35 U.S.C. 103 as being unpatentable over Dorn (US Patent No. 6,334,860) in view of Bacher et al. (US PGPub No. 2002/0128649), hereinafter Bacher.
Regarding claims 1, 5, and 15, Dorn teaches 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”),
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”),
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”),
and 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”).
Dorn does not explicitly teach the first form-fitting connection having a tongue-and-groove connection around a handling-side end of the lever and a corresponding mounting portion of the lever extension, wherein the tongue-and-groove connection is secured with an additional locking mechanism or securing element, or wherein the second form-fitting connection is fixed by another securing element.
However, in an analogous art, Bacher teaches an electrosurgical forceps instrument having a jaw insert with a tongue-and-groove connection (Figs. 2 and 8: jaw part insert 48 with dovetail strip 50 and corresponding groove 51), wherein the tongue-and-groove connection is secured with an additional locking mechanism or securing element, which prevents unwanted displacement (Fig. 3 and par. 0090: “At its proximal end, the jaw part insert 48 is connected with the main body 42 by screwing, by means of a bolt 52, so that it is secured on the main body 42 also against relative displacement with respect to the main body 42”).
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 Bacher (namely, using tongue-and-groove connections between elements of electrosurgical jaws) 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.
It would further 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 the combined reference by using a screwed bolt as an additional locking mechanism or securing element in either connection, as taught by Bacher, in order to prevent unwanted displacement, as taught by Bacher.
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 claims 6-7, the combination teaches the device of claim 5 as described previously. In light of Bacher’s teachings, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to form the second form-fitting connection between the lever and contact portion as a tongue-and-groove connection, and to fix the connection with an additional locking mechanism, for the same reasons set forth previously in the rejection of claim 1.
Regarding claim 8, the combination teaches the device of claim 1 as described previously. Dorn further teaches 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, the combination teaches the device of claim 8 as described previously. Dorn further teaches 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 11, the combination teaches the device of claim 1 as described previously. Dorn further teaches 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, the combination teaches the device of claim 11 as described previously. Dorn further teaches 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 and 15, since the claimed method broadly recites steps for generally forming the device recited in claims 1 and 15.
Regarding claims 16 and 17, the combination teaches the devices of claims 1 and 7 as described previously. Bacher further teaches wherein the additional locking mechanism comprises a securing element (Fig. 3: bolt 52) does not explicitly teach wherein the securing element is integrally bond connected to the lever. However, given that Bacher also teaches using an adhesive to secure a mechanical connection (par. 0091: “the connection being realized by a press fit and being secured, if necessary, by an adhesive”), it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, that applying the known technique taught by Bacher (namely, using an adhesive to secure a mechanical connection) to the device of the combined reference would have yielded predictable results and resulted in an improved system, namely, a system with improved bonding between mechanical components.
Regarding claims 19, 23, and 24, the combination teaches the devices of claims 1 and 15 and the method of claim 14 as described previously. Bacher further teaches wherein the additional locking mechanism or securing element comprises a locking pin (Fig. 3: bolt 52).
Regarding claim 20, the combination teaches the device of claim 19 as described previously. Bacher further teaches the limitations of claim 20 for the same reasons set forth previously in the rejection of claim 15.
Regarding claim 21, the combination teaches the device of claim 19 as described previously. Bacher further teaches wherein the mounting portion comprises a groove, the groove receiving a portion of the lever, the portion of the lever extending in a longitudinal direction of the lever (Fig. 8: groove 51 and portion of insert 50 extending in longitudinal direction of jaw/forceps).
Regarding claim 22, the combination teaches the device of claim 21 as described previously but does not explicitly teach wherein the locking pin extends in a direction traversing the longitudinal direction of the lever. However, it would have been an obvious matter of design choice to one having ordinary skill in the art before the effective filing date of the claimed invention to change the direction of Bacher’s screwed bolt to traverse the longitudinal direction, since applicant has not disclosed that the traversing direction of the locking pin solves any stated problem or is for any particular purpose and it appears that the invention would perform equally as well with a screwed bolt extending in any direction.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Dorn in view of Bacher and further in view of Garrison (US PGPub No. 2014/0100564).
Dorn in view of Bacher 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 the combined reference 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.
Response to Arguments
Applicant’s arguments filed 10 June 2026, with respect to the rejection(s) of claim(s) 1, 14, and 15 under 35 U.S.C. 102(a)(1) have been fully considered and are persuasive. Therefore, in light of the amendments to the claims, the previous rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made under 35 U.S.C. 103 in view of Bacher. As described previously, Bacher teaches a tongue-and-groove connection for a form-fitting connection that is secured with an additional locking mechanism.
Applicant’s arguments with respect to the Slater reference have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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 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).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, JOANNE M 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.
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/D.E.L./Examiner, Art Unit 3794
/JOANNE M RODDEN/Supervisory Patent Examiner, Art Unit 3794
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