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 .
This action is in response to the documents filed on July 8, 2024 and remarks received on October 22, 2025.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Election/Restrictions
Claims 9-34 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on December 22, 2025.
Applicant’s election without traverse of claims 1-8 and 35-38 in the reply filed on December 22, 2025 is acknowledged.
Claim Rejections - 35 USC § 102
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.
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 –
Claims 1, 2, 5-7, 37 and 38 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by SHELTON, IV et al. (US 2022/0167971).
In reference to claim 1, SHELTON, IV et al. discloses a surgical instrument 10 comprising: an end tool 300a including a jaw 306a, 306b; a driving part 108a, 108b, 1904; a detection member 140, 1930, wherein the jaw 306a, 306b is formed to accommodate at least on region 278, 283, 284 of an operation member 202, 1980 movable in a direction in response to a driving force of the driving part 108a, 108b, 1904; the detection member 140, 1930 detects driving information (e.g. current draw ) of the driving part 108a, 108b, 1904 to determine position information of the operation member 202, 1980 (paragraph [0182]).
Regarding claim 2, paragraph [0191] of SHELTON, IV et al. further discloses driving information (e.g. current or voltage) of the driving part is set as reference information (e.g. table), and the position information of the operation member 202, 1980 is determined by comparing the driving information with the reference information.
In reference to claim 5, SHELTON, IV et al. discloses a surgical instrument 10 comprising: an end tool 300a including a jaw 306a, 306b; a driving part 110 including at least one motor 108a, 108b, 1904, a power switch and a power supply 106; a detection member 140, 1930, wherein the jaw 306a, 306b is formed to accommodate at least on region 278, 283, 284 of an operation member 202, 1980 movable in a direction in response to a driving force of the driving part 110 motors 108a, 108b, 1904; the detection member 140, 1930 detects driving information (e.g. current draw ) of the driving part 101 motors 108a, 108b, 1904 to determine position information of the operation member 202, 1980 (paragraph [0182]). Figure 3 of SHELTON, IV et al. further discloses the detection member 140 to be disposed inside the driving part 110.
With respect to claim 6, SHELTON, IV et al. discloses a surgical instrument 10 comprising: an end tool 300a including a jaw 306a, 306b; a driving part 108a, 108b, 1904; a detection member 140, 1930, wherein the jaw 306a, 306b is formed to accommodate at least on region 278, 283, 284 of an operation member 202, 1980 movable in a direction in response to a driving force of the driving part 108a, 108b, 1904; the detection member 140, 1930 detects driving information (e.g. current draw ) of the driving part 108a, 108b, 1904 to determine position information of the operation member 202, 1980 (paragraph [0182]). Figure 3 of SHELTON, IV et al. further discloses a manipulation part 100 configured to manipulate (e.g. orientation, or trigger actuator) operation of the end tool 300a, wherein the detection member 140 and the driving part are inside the manipulation part 100.
Regarding 37, figure 31 of SHELTON, IV et al. further discloses a method of using the claimed surgical instrument, wherein a position of the operation member 202, 1980 is determined through the detection member before performing one step (i.e. adjustment of driving part).
In reference to claim 38 paragraphs [0173-0174] of SHELTON, IV et al. further disclose the process including a step of determining through determination of the operation member , whether the operation member reaches a preset stop position (i.e. initial contact of operation member with sled), when the operation member moves forward.
Allowable Subject Matter
Claims 3, 4 and 8 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Refer to the attached PTO-892 for a notice of references cited and recommended for consideration based on their disclosure of limitations related to the claimed invention.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GLORIA R WEEKS whose telephone number is (571)272-4473. The examiner can normally be reached M-F 8am-2pm & 5pm-7pm EST.
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/GLORIA R WEEKS/Primary Examiner, Art Unit 3731
January 14, 2026