DETAILED ACTION
A complete action on the merits of pending claims 21-40 appears below.
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 .
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Double Patenting
Claims 21-40 are rejected on the grounds of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,049,706. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of patent anticipate the claims of the application. Accordingly, the application claims are not patentably distinct from the patent claims. Here, the more specific patent claims encompass the broader application claims. Following the rationale in In re Goodman cited in the preceding paragraph, where applicant has once been granted a patent containing a claim for the specific narrow invention, applicant may not obtain a second patent with a claim for the generic or broader invention without first submitting an appropriate terminal disclaimer.
Claim Rejections - 35 USC § 103
Claims 21-25, 27-35, and 37-40 rejected under 35 U.S.C. 103 as being unpatentable over Latterell US 20040049185 in view of Yasunaga US 20170215938 and Worrell US 20170238991.
Regarding claims 21 and 30, Latterell teaches comprising: a structural frame including a proximal flange portion and a distal body portion; a jaw housing surrounding the distal body portion of the structural frame (Fig. 7); a tissue-treating plate disposed atop the jaw housing (Fig. 8 surfaces 89), the tissue-treating plate defining a first tissue-treating surface extending in a longitudinal direction and including a longitudinal slot defined longitudinally therethrough along at least a portion of a length thereof (Fig. 8 slot 92); and an energizable cutting element disposed within the jaw housing and extending through at least a portion of the longitudinal slot along at least a portion of a length of the tissue-treating plate (Fig. 8 cutting element 94), the energizable cutting element defining a second tissue-treating surface extending in the longitudinal direction (Fig. 8 top of 94), the energizable cutting element including: a substrate (Fig. 8 ceramic support 93).
Latterell does not explicitly teach an electrically insulative coating disposed on the substrate; and a circuit layer disposed on the electrically insulative coating, the circuit layer including first and second end portions adapted to connect to different potentials of electrical energy to energize the circuit layer, the circuit layer defining a thickness extending transverse to the longitudinal direction and a surface extending in the longitudinal direction, the surface of the circuit layer oriented transverse to the second tissue-treating surface.
Yasunaga, in an analogous device, teaches a substrate 120 that is epoxy with alumina having a heating element 132 therein (Fig. 4 and pars. [0048]). There are contacts that are connected continuously of different electrical potentials (Fig. 5 136).
It would have been obvious to one of ordinary skill in the art at the time the invention was effectively filed to modify the device of Latterell to have a sandwiched circuit as in Yasunaga so the device will have a slimmer profile (par. [0041]).
Yasunaga does not explicitly teach the circuit transverse the longitudinal axis in multiple directions.
Worrell, in an analogous device, teaches electrical contacts that extend below the tissue surfaces (Fig. 213).
It would have been obvious to one of ordinary skill in the art at the time the invention was effectively filed to substitute the electrical circuit configuration of Latterell and Yasunaga to have the contacts extend transverse the tissue surface, as in Worrell. The contacts are seen to preform equally as well and would yield the result of providing power to the end effector.
Regarding claims 22 and 32, the combination of Latterell, Yasunaga, and Worrel teaches wherein the circuit layer defines a continuous circuit trace between the first and second end portions (Yasunaga Fig. 5).
Regarding claims 23 and 33, the combination of Latterell, Yasunaga, and Worrel teaches wherein the first and second end portions of the circuit layer are disposed adjacent one another (Yasuanga Fig. 5 and Worrell Fig. 213).
Regarding claims 24 and 34, the combination of Latterell, Yasunaga, and Worrel teaches further comprising first and second electrical contacts disposed atop the respective first and second end portions of the circuit layer, the first and second electrical contacts configured to facilitate connection of the different potentials of electrical energy to the first and second end portions (Yasuanga Fig. 5 and Worrell Fig. 213).
Regarding claims 25 and 35, the combination of Latterell, Yasunaga, and Worrel teaches wherein the substrate is formed from aluminum, titanium, an aluminum alloy, or a titanium alloy (Yasunaga par. [0048]).
Regarding claims 27 and 37, the combination of Latterell, Yasunaga, and Worrel teaches wherein the circuit layer includes a resistive heating circuit configured to heat the energizable cutting element in response to the application of energy to the circuit layer to energize the circuit layer (Yasunaga Fig. 4 and par. [0046]).
Regarding claim 28, the combination of Latterell, Yasunaga, and Worrel teaches wherein the electrically insulative coating defines an average thickness of about 50 micrometers to about 150 micrometers (Yasunaga par. [0047] 100 micrometer layers).
Regarding claims 29 and 39, the combination of Latterell, Yasunaga, and Worrel teaches wherein a second electrically insulative material is disposed on at least a portion of the circuit layer (Yasunaga Fig. 4).
Regarding claim 31, the combination of Latterell, Yasunaga, and Worrel teaches wherein the tissue-treating plate is formed from an electrically-conductive material and is adapted to connect to a source of electrosurgical energy, the tissue-treating plate electrically isolated from the circuit layer (Latterell par. [0041]).
Regarding claims 38 and 40, the combination of Latterell, Yasunaga, and Worrel teaches wherein the energizable cutting element is configured such that, when voltage is applied across the first and second end portions to energize the circuit layer and generate heat, the generated heat is conducted toward tissue in contact with the second tissue-treating surface and away from portions of the second tissue-treating surface not in contact with tissue, thereby enhancing tissue cutting control and wherein the energizable cutting element further includes an attachment flange disposed distal to the proximal connection flange and configured to extend orthogonally relative to the longitudinal axis into the jaw housing, the attachment flange including an aperture defined therethrough configured to facilitate attachment of the energizable cutting element within the jaw housing (Yasunaga Fig. 7 122, 136, and 138 multiple contacts that extend longitudinally and perpendicular to the longitudinal axis to receive current from the generator, the end where the contacts are also extends longitudinally and perpendicular to the longitudinal axis).
Claims 26 and 36 rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Latterell, Yasunaga, and Worrel as applied to claims 21 and 30 above, and further in view of Ding US 20180250066.
Regarding claims 26 and 36, the combination of Latterell, Yasunaga, and Worrel does not explicitly teach wherein the electrically insulative coating is a Plasma Electrolytic Oxidation (PEO) coating.
Ding, in an analogous device, teaches where the middle layer is made of microarc oxidation (par. [0040]).
It would have been obvious to one of ordinary skill in the art at the time the invention was effectively filed to modify the substrate layer of Latterell, Yasunaga, and Worrel to have a PEO coating, as in Ding. The PEO coating helps with the adhesion of adjacent layer (Ding [0040]). Further, the method of application is a product by process limitation. If the end result is a coating it does not matter the manner in which it is applied.
Response to Arguments
Applicant's arguments filed 6/16/25 have been fully considered but they are not persuasive. First, the applicant argues that the rationale of the different layers and electrical contacts would create a slimmer design is flawed because Latterell relies on cutting based on voltage difference between electrodes while Yasunaga teaches using heating plates. The applicant states that this would render Latterell unsatisfactory for its intended purpose. It would seem that the applicant is trying to have three different arguments without really presenting evidence for any of them. They state that making the device slimmer is a flawed rationale but didn’t address how making it slimmer is a bad thing. Further, MPEP 2141.03 states a person of ordinary skill in the art is not an automaton that smashing pieces together. They would know general scientific principles like how to connect electrical potentials. Further to this point, Yasunaga is no simply used for heating par. [0047] the lead connection 138 is to allow electrode 110 to pass voltage through tissue. Third, it is the opinion of the examiner that the intended purpose of Latterell is to cut and treat tissue just like Yasunaga, thus the combination would not make Latterell preform an undesirable function or no function at all.
Next, applicant states element 130 in Yasunaga is not an energizable cutting element. The examiner is not using 130 in the rejection above the energizable cutting element is taught by Latterell and as stated above in par. [0047] high frequency energy is used in Yasunaga. The applicant states that Latterell only cuts and does not cauterize or coagulate while the coagulation in Yasunaga is not cutting tissue. The examiner disagrees par. [0046] of Latterell states the electrodes of the jaws seals and coagulates tissue. Yasunaga par. [0065] states cutting off living tissue. Therefore, the arguments presented by the applicant are not persuasive.
Conclusion
THIS ACTION IS MADE FINAL. 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 RYAN T. CLARK whose telephone number is (408)918-7606. The examiner can normally be reached on Monday-Friday 7AM-3PM MT.
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, Linda Dvorak can be reached on (571)272-4764. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/R.T.C./Examiner, Art Unit 3794
/LINDA C DVORAK/Primary Examiner, Art Unit 3794
Prosecution Insights