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Claim 9 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected group, there being no allowable generic or linking claim.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.
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 3-5 and 8 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 3 recites the limitation "pre-texturing is carried out… by processing material that forms at least one distal jaw portion". There is insufficient antecedent basis for this limitation in the claim. Claim 1 should amend step A to provide a distal jaw portion made of “a material”. Then claims 3-4 can refer to the material without being confused with the coating material.
Claim 4 depends from claim 3 and also refers to “processing material”.
Claim 5 recites the limitation "to finish the non-smooth surface pattern provided by pre-texturing" in lines 3-4. There is insufficient antecedent basis for this limitation in the claim. The term “a non-smooth surface” is only introduced in a separate embodiment (provided by post-texturing).
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 8 recites the broad recitation “comprising”, and the claim also recites “or consisting of” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
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.
Claim(s) 1, 3-5, and 7-8 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by EGGERS et al. (US 5,484,436).
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.
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 5,
EGGERS teaches a post deposition grit polishing can be performed to improve smoothness (finish a non-smooth surface provided by pre-texturing) of cutting surfaces column 6 lines 27-37.
Regarding claims 7 and 8,
EGGERS teaches the hardening coating can be chromium carbide as noted above which contains (comprises) metal chromium and ceramic chromium carbide.
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.
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.
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(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 LAKHOTKIN et al. (US 2005/0158589).
Regarding claim 2,
EGGERS teaches applying a hard coat to a cutting blade but does not expressly teach the thickness of the coating. However, LAKHOTKIN teaches that when providing a hardcoat to a cutting tool, the thickness of the hard coat changes the blade performance over the life of the blade Table 1. At the time of filing the invention it would have been prima facie obvious to one of ordinary skill in the art to change the thickness of a hard coating to achieve a desired performance profile for the life of the blade.
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 NGUYEN et al. (US 2016/0302823) and MIELKE et al. (US 2006/0131184).
Regarding claim 6,
EGGERS teaches smoothing the surface of the coated material but does not expresslyt each an electrochemical machining technique. However, NGUYEN teaches when micromachining parts to decrease friction, including cutting parts, coated in a tungsten carbide suitable techniques include electrochemical machining [0039]. At the time of filing the invention it would have been prima facie obvious to use electrochemical machining instead of grit blasting as a known suitable technique for machining hard materials for decreased friction (smoothing).
NGUYEN 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 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
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.
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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