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
Claim 9 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected group, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 11/11/2025.
Response to Amendment
The amendment filed 4/28/2026 is entered and fully considered.
In view of the amendment the previous rejection is removed and a new rejection using additional art is made below.
The 112 rejection to claim 8 is removed. The examiner previously interpreted the use of both “comprising” or “consisting of” language to be an indefinite claim because it includes a broad and narrow limitation. However, in view of the amendment the examiner notes that the Markush group includes a compound “comprising tungsten carbide and cobalt” the scope of which already includes all the other Markush members, “consisting of tungsten carbon and cobalt”, “comprising tungsten carbide, cobalt and chromium”, and “consisting of tungsten carbide, cobalt and chromium” . Double inclusion is not per se improper, MPEP 2173.05(o). However, the claim interpretation makes the listed Markush members of more narrow scope superfluous and non-limiting. The scope of the claim is simply the first compound “comprising tungsten carbide and cobalt”. If applicant wants the more narrow members of the Markush group to have weight they should in separate depending claims which would further narrow the composition from “comprising tungsten carbide and cobalt”.
Response to Arguments
In view of the amendment the previous rejections are removed and new rejections are made.
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 1-4, 6-8, 10 and 11 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.
Claim 1 refers to “non-smooth” texture which is a relative term of degree that is not defined in the specification. Therefore, the term “non-smooth” makes the scope of the claim indefinite because it is not clear at what degree a texture is smooth versus non-smooth.
Depending claims are rejected because they incorporate the issues of claim 1. It is also noted that there is an intermediate non-smooth texture and final non-smooth texture. The examiner recommends defining the textures with ordinal numbers (first, second and third textures) and describing their relative roughness to each other.
Claim 10 refers to “the texture of the layer of coating material…” The term “the texture” lacks antecedent basis. The examiner recommends deleting
Claim 10 also refers to “a smooth texture” in line 3. The term “smooth” is a relative term of degree that is not defined in the specification. Therefore, the term “smooth” makes the scope of the claim indefinite because it is not clear at what degree a texture is smooth versus not smooth.
Claim 11 refers to “non-smooth” texture which is also a relative term of degree that makes the scope of the claim ambiguous.
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.
Claim(s) 1, 3, 4, 10 and 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over EGGERS et al. (US 5,484,436) in view of DACUYCUY et al. (US 2014/0309673).
Regarding claim 1,
EGGERS teaches a method of applying hardening coating on uninsulated shearing faces column 5 lines 55-56 of electrosurgical scissors (medical instrument with jaws) Fig. 1 and column 2 lines 52-59. The device can also be a grasper instead of scissors with grasping surfaces and teeth (jaws), Fig. 5A and column 10 lines 23-30. A deposited material can be deposited by HVOF to improve density and wear resistance (hardness) column 6 lines 1-12. The hardening coating on the uninsulated surface can include chromium carbide (cermet) column 9 lines 45-53. The deposition by HVOF requires feeding coating material through the thermal spray device (producing particles) and hitting (impinging) the substrate at near super-sonic speed, column 6 lines 2-12.
EGGERS teaches making a grasper with grasping surfaces but does not teach roughening the surfaces of the gripper in a post-texturing step. However, DACUYCUY teaches that when making a device for gripping biological tissue, the gripper surfaces can be roughened to increase adhesion of the biological tissue [0046]. At the time of filing the invention it would have been prima facie obvious to one of ordinary skill in the art to perform a surface roughening step on the gripper surfaces of EGGERS to improve adhesion of biological tissue.
Regarding claims 3 and 4.
EGGERS teaches teeth for a grasper can be shaped by grinding (pre-texturing) column 10 lines 38-47. EGGERS also teaches generally roughening the surface for the purposes of adhesion column 6 lines 22-26.
Regarding claim 10,
EGGERS teaches applying material by HVOF. The same method of deposition is expected to form a coating material with the same “smooth” texture.
Regarding claim 11,
EGGERS teaches depositing material by the same pre-texturing step (initial non-smooth surface) and a method of HVOF for deposition. Therefore, the same deposition is expected to similarly form an intermediate non-smooth texture. The roughening in DACUYCUY is then considered to turn the intermediate non-smooth texture to a final non-smooth surface.
Claim(s) 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over EGGERS et al. (US 5,484,436) in view of DACUYCUY et al. (US 2014/0309673) further in view of FARZI-NIA et al. (US 5,257,558).
Regarding claim 2,
EGGERS teaches depositing a hard coat onto a grasping instrument but does not teach the thickness of the coating. However, one of ordinary skill in the art would naturally look to the art to find appropriate coating thicknesses for gripping devices. FARZIN-NIA generally teaches that when coating a hard coat onto a gripping face by a similar flame spray process, the coatings can be 250 microns to 1000 microns (0.25-1 mm) for satisfactory results column 4 lines 44-60. At the time of filing the invention it would have been prima facie obvious to one of ordinary skill in the art to deposit a hard coat for a grasping instrument of EGGERS at a known satisfactory thickness used in the art as a known workable coating thickness for gripping faces.
Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over EGGERS et al. (US 5,484,436) in view of DACUYCUY et al. (US 2014/0309673) further in view of MIELKE et al. (US 2006/0131184).
Regarding claim 6,
DACUYCUY teaches the roughening the grasper surfaces and further teaches using techniques such as electrochemical machining [0040]. DACUYCUY teaches electrochemical machining (a genus) but does not expressly teach the individual types of electrochemical machining (species). However, MIELKE teaches that precise electrochemical machining does not wear the workpiece and obtains high precision to the surface finish [0005]. At the time of filing the invention it would have been prima facie obvious to use a known variety of electrochemical machining such as precise electrochemical machining to obtain a superior workpiece.
Claim(s) 7 and 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over EGGERS et al. (US 5,484,436) in view of DACUYCUY et al. (US 2014/0309673) further in view of BERGER et al. (US 6,162,276).
Regarding claim 7 and 8,
As noted above, the EGGERS reference teaches deposition of a hard coating made of chromium carbide. BERGER teaches that when performing HVOF to deposit hard coats column 4 lines 4-17 other materials can be deposited including TiC, WC, or Cr3C2 with metals Ni and Co columns 3-4. At the time of filing the invention it would have been prima facie obvious to one of ordinary skill to deposit other powder materials by HVOF as a simple substitution of known hard coat materials.
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 AUSTIN MURATA whose telephone number is (571)270-5596. The examiner can normally be reached M-F 8:30-5.
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, MICHAEL CLEVELAND can be reached at 571272-1418. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/AUSTIN MURATA/ Primary Examiner, Art Unit 1712
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