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 . 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 (i.e., changing from AIA to pre-AIA ) 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.
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 1, 2, 4-18 are rejected under 35 U.S.C. 103 as being unpatentable over Lee (US 2022/0125503) in view of Ouchi (US 6,093,195) and Williams (US 2008/0119870).
Regarding claims 1, 2, 4-13, Lee, sharing an Applicant with the pending Application, clearly discloses many of the claimed elements including an instrument with an end tool (120, fig. 2), a connection part (140), a plurality of wires within the connection part (130, fig. 5, [0113]) and a manipulation part for controlling rotation/pitch of the end tool and coupled to end of the connection part opposite the end tool (110, see discussion associated with figs. 1A-F which are identical with figs. 1A-F of the pending application). Lee further discloses an electric wire connected to the jaw (168, fig. 5). The end tool further comprises an end tool hub (125, fig. 4) connected to an end tool jaw pulley (J11, J21), a pitch hub (142) coupled to the end too hub by a rotation shaft (123PA). The claims do not define either what the “insulator” is insulating from (electric, thermal, optical, acoustic, etc.), or the degree to which the insulator is insulating. Therefore, the whole surface of both hubs can be considered to include an insulator of some kind or to some degree. It is further noted that using the modifier “includes” means that the whole surface of the hubs does not need to be an insulator. It is also noted that every component recited in claim 12 (and most components of claim 14, see more discussion below) can be identified by simply comparing Applicant’s figures 4 and 5 to Lee’s figures 4 and 5. Lee does not disclose the (entire) wire is located within a shrink tube which is located within a shaft tube so the shrink tube separates the wire from the shaft tube. However, both of these elements are common in the art. Regarding a shrink tube, it is first noted that “shrink” is a product-by-process limitation. “[E]ven 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 a 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) (citations omitted). In this case, it makes no difference whether the tube is caused to “shrink” or not as long as the result of the process is a tube. This includes claim 4. Using insulation on wires to prevent current leakage is very common in the art. Ouchi, for example, discloses a surgical instrument with control wire and an electrical wire and teaches that either or both may be provided with insulation to prevent current leakage (col. 6 lines 26-31). Due to the nature of electrical interaction between conductive elements and the lack of any suggestion otherwise this is understood to either teach or suggest to a person of ordinary skill in the art insulating a sufficient amount of the wire to prevent unwanted electrical behavior, including the entire wire. Therefore, before the application was filed, it would have been obvious to one of ordinary skill in the art to insulate all the wires of Lee such as taught by Ouchi, including along their entire length, that would produce the predictable result of preventing unwanted electrical interaction between the wires. This insulation tube is understood to block voltage being transmitted to the wire as discussed by Ouchi. Ouchi does not disclose a shaft tube attached and around the tube. However, using shaft tubes around wires is common in the art. It is noted that “crimped” is another product-by-process limitation as discussed above. Williams, for example, discloses an instrument with similar pitch and roll features as the claimed invention (fig. 1C) and teaches that wires (438, fig. 2G) can be attached to shaft tubes within the connection part (433, fig. 2G). Williams teaches, for example, this prevents the wires from stretching ([0126], although note the specific reference to crimping). The shaft tube connects a wire at the side of the end tool to a wire on the side of the manipulation part (fig. 2G). Therefore, before the application was filed, it would have been further obvious to one of ordinary skill in the art to modify the instrument of Lee to attach tubes around the outside the wire, such as taught by Williams, which would include the tube because it extends the entire length of the wire as discussed above, to produce the predictable results of preventing stretching of the wires during use of the device. This modification results in the wire and shaft tube not being in direct contact/facing each other due to the intermediate insulating tube.
Regarding claims 14-18, the instrument of Lee as modified discloses all the features further including a single pitch wire (130P, [0113]) around the pitch pulley, and the various insulations (interpreted broadly). The pitch pulley, since it does not fall off the instrument relative to the end tool hub (which is axially coupled to the end jaw pully which is coupled to the one or more jaws, fig. 4), can be considered to have a “coupling part” (however, note figure 4 is, again, almost identical with Applicant’s figure 4 which is disclosed as having two coupling parts as part of 180, not numbered but 181 and 182 in fig. 6). Lee does not disclose a fastening member on the wire. However, use of fastening members is very common in the art to prevent undesired movement of a wire relative to a pulley. Williams discloses this feature as well, showing a single wire with a fastened fastening element (502, fig. 6) for connection to a pulley, where the fastening member is not in direct contact with anything other than the wire and the pulley. Therefore, before the application was filed, it would have been obvious to one of ordinary skill in the art to further modify the instrument of Lee to include a fastening member coupled to the wire for connecting the wire to the pitch pulley, and nothing else, such as taught by Williams, that would produce the predictable result of ensuring the pitch pulley is actuated by the wire in a desired manner. Because the fastening member only contacts the pitch pulley, the pitch pulley is understood to separate the fastening member from the rest of the instrument.
Response to Arguments
Applicant's arguments filed 26 June 2026 have been fully considered but they are not persuasive. Applicant has made several arguments.
As an initial matter, it is noted that the remarks use language (“simultaneously crimped”) that is not in the claims. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). These are apparatus claims, not method claims, and so it is not immediately clear how limiting a step of providing each of the three layers together before crimping would be. Further, while perhaps not ultimately relevant (as discussed with respect to Williams below), it is noted that the claim does not even specifically recite that a crimp is applied to the shaft, the shrink tube, and the wire. Instead, the claim merely recites that a “region” in which those elements overlap “is crimped.” This is a product-by-process limitation as discussed in the rejection (and in more detail below) which does not require that a diameter of any specific element is reduced in a specific manner that would constrain the elements relative to each other.
The first argument, that neither Lee, Ouchi nor Williams disclose the whole invention, is not persuasive because it is a piecemeal analysis of the references. One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
The second argument, that of physical incompatibility, is also unpersuasive. Applicant asserts that the “high compressive force” of a metal-crimping operation would destroy the “thin” insulation coating applied per Ouchi. There is no evidence this is true. First, the fact that Applicant’s invention relies on the crimping of metal over an insulator undermines any argument that such crimping necessarily and inevitably breaks the insulation. Second, neither the arguments nor the claims recite any particular amount of force for the crimp, or alternatively any amount of force on the wire/tube which must be resisted by the joining, nor any particular amount of thickness for the insulation. If it is obvious to modify Lee as taught by Ouchi and Williams, as argued in the rejection, it follows that a person of ordinary skill in the art (who “is also a person of ordinary creativity, not an automation,” MPEP 2141.03(I)) would be able to choose a configuration which does not render the insulation useless.
The third argument, that about product-by-process, is also not persuasive. As noted above, there are no method steps in these apparatus claims, and no claim language at all involving the word “simultaneous.” The claims describe three elements (or at least a “region” of those elements) attached together, where there is no evidence it makes any difference what method of attachment is employed. The fact that these three elements attached together as a single feature is not present in any one reference is not relevant to the rejection in view of three references. In the interest of compact prosecution, it is noted that the language “is crimped” could be phrased in a way that would require one or more elements to have a specific structural feature, such as by reciting the physical characteristics of the crimp rather than reciting a method step. However, it is exactly for that reason that Williams is cited: paragraph [0126] cited in the rejection specifically notes that the elements are crimped together. Further, Williams also teaches that crimping is just one of several known methods of attachment that are useful in this scenario ([0124]), which supports not only of the determination of product-by-process due to the way the claims are worded (that the product that results from the method of attachment is the same) but also would clearly support an obviousness rejection on the grounds that the prior art teaches it makes no difference how wires and tubes are attached together (regardless of an intervening element).
The fourth argument, about the benefits of the claimed invention, is not really an argument. First, there is no evidence the modification proposed in the rejection does not meet these objectives, even before noting that they are vaguely defined. It is not clear how “strong” a mechanical coupling would have to be to meet this language, nor is it clear how “reliable” the electrical insulation would have to be (particularly without reference to any electrical parameters). These kinds of benefits are usually only applicable where they are unexpected (within the meaning of MPEP 716.02(a)) which does not appear to be the case here.
Conclusion
Applicant's amendment necessitated any 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.
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/DANIEL W FOWLER/Primary Examiner, Art Unit 3794
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