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 § 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.
Claim 4, 6 and 14-18 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.
Regarding claim 4, the term “tightly” is a relative term which renders the claim indefinite. The term “tightly” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. It is not clear how much friction must exist between the tube and the wire to be considered “tightly coupled.”
Regarding claim 6, there is no antecedent basis for “the wire at the side of the manipulation part.”
Regarding claims 14-18, claim 14 is worded in a manner that renders the claim indefinite. The last clause of claim 14 states “wherein the end tool hub and the fastening member are separated by the pitch pulley and the end tool hub and the fastening member are insulated from each other.” It is unclear if the end tool hub is separated by the pitch pulley and the end tool hub, or just the pitch pulley. Claims 15-18 depend from claim 14 and are therefore also indefinite.
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 1-18 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 1-13, 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 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]). 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 (which is being interpreted as extremely broad rather than indefinite, as discussed above). The pitch pulley, since it does not fall off the instrument relative to the end tool hub, 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.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Regarding another instrument which includes a control wire contained within an electrically insulating tube, see paragraph [0106] of US 2016/0175060 to Park. Regarding the general teaching that various wires within a medical instrument can be provided with a shrink tube for electrical insulation (at least), see paragraph [0148] of US 2017/0252096 to Felder. Regarding the use of various elements to prevent current leakage in medical devices, including tubes, see paragraph [0025] of US 2022/0151686 to Takikawa. Regarding the general teaching that straight portions of control wires are commonly known to benefit from being tubes instead of wires, see paragraph [0044] of US 2010/0016853 to Burbank. Regarding another invention solving the same problem as Applicant’s invention, including using wires, crimped tubes and optional heat shrink insulation, see paragraph [0013] and figures 6C-D of US 2006/0079884 to Manzo. Regarding the general teaching to crimp wires to tubes, see paragraph [0170] and figure 56 of US 2003/0036748 to Cooper. Regarding another of Applicant’s disclosures that is available as prior art and has many similar figures, see US 2020/0237466 to Lee.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIEL WAYNE FOWLER whose telephone number is (571)270-3201. The examiner can normally be reached Monday-Friday (9-5).
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/DANIEL W FOWLER/Primary Examiner, Art Unit 3794