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 Objections
Claim 1 is objected to because of the following informalities: In the last line, -of- should be inserted after “vibration”. Appropriate correction is required.
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 19 is 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 19 recites the limitation "a top surface" in line 3. The antecedent basis for this limitation is confusing, since it’s unclear how/whether it’s related to the previously-recited “uneven surface”.
Claim 19 recites the limitation "an area of the bottom surface" in line 6. The scope of this limitation is confusing, since it’s unclear if this is referring to the combined area of the bottom surfaces of all of the grooves. Appropriate correction is required.
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 and 11-13 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Morisaki, U.S. 2017/0000556 (hereinafter Morisaki).
Regarding claim 1, Morisaki discloses (note figs. 1-5, 7, 8, and 13-15) a treatment tool comprising: a first jaw (33) including a first electrode (‘36’ - note paragraph 65), wherein at least a part of the first jaw includes a first portion having an uneven surface (composed of upper-facing surfaces of ‘33’ which are not all disposed on the same plane); a second jaw (60) configured to be opened and closed with respect to the first jaw, and the second jaw including a second electrode (65), wherein the first electrode and the second electrode are configured to cause a high-frequency current (note paragraph 65); and a vibration transmitter (11), a distal end of which is coupled to the first jaw, the vibration transmitter configured to treat a treatment target including by ultrasonic vibration of the first jaw including ultrasonic vibration the uneven surface (note paragraph 65).
Regarding claim 11, Morisaki discloses (see above) a treatment tool wherein the uneven surface comprises a first uneven surface, and wherein at least a part of the second jaw includes a second portion having a second uneven surface (note tissue-contacting surface of ‘60’ in figs. 13-15).
Regarding claim 12, Morisaki discloses (see above) a treatment tool wherein the second electrode comprises a first surface (93A) and a second surface (93B), wherein the first surface is configured not to contact the first jaw when the second jaw is closed with respect to the first jaw (note fig. 15), wherein the second surface configured not to contact the first jaw when the second jaw is closed with respect to the first jaw (note fig. 15), and wherein the second surface necessarily ‘has’ the second portion.
Regarding claim 13, Morisaki discloses (see above) a treatment tool further comprising: a handle (note fig. 1) configured to open and close the second jaw with respect to the first jaw.
Claim(s) 1-3, 11-13, 15, 16, and 19 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Weisenburgh, U.S. 2014/0135804 (hereinafter Weisenburgh).
Regarding claim 1, Weisenburgh discloses (note figs. 1-4, 77, and 107; paragraph 179) a treatment tool comprising: a first jaw (100/200/300/400) including a first electrode (note paragraphs 310 and 328), wherein at least a part of the first jaw includes a first portion having an uneven surface (see tissue-contacting surface); a second jaw (upper jaw depicted in figs. 77 and 107) configured to be opened and closed with respect to the first jaw, and the second jaw including a second electrode (note paragraphs 310 and 328), wherein the first electrode and the second electrode are configured to cause a high-frequency current (note paragraphs 310 and 328); and a vibration transmitter (‘5020’ in fig. 77), a distal end of which is coupled to the first jaw, the vibration transmitter configured to treat a treatment target including by ultrasonic vibration of the first jaw including ultrasonic vibration the uneven surface.
Regarding claim 2, Weisenburgh discloses (see above) a treatment tool wherein the first portion includes a plurality of grooves (see lower laterally-extending passages formed between raised surfaces on ‘100/200/300/400’ – note figs. 1-4) each extending in a direction intersecting a longitudinal direction of the first jaw.
Regarding claim 3, Weisenburgh discloses (see above) a treatment tool wherein each groove of the plurality of grooves has side surfaces (formed by raised surfaces on ‘400’) having a plurality of recesses (see longitudinally-extending medial and lateral channels between raised surfaces on ‘400’) recessed in a direction along the longitudinal direction.
Regarding claim 11, Weisenburgh discloses (see above) a treatment tool wherein the uneven surface comprises a first uneven surface, and wherein at least a part of the second jaw (see ‘64’ in fig. 109) includes a second portion having a second uneven surface (i.e. tissue-contacting surface).
Regarding claim 12, Weisenburgh discloses (see above) a treatment tool wherein the second electrode comprises a first (lateral) surface and a second (lateral) surface, wherein the first surface is configured not to contact the first jaw when the second jaw is closed with respect to the first jaw, wherein the second surface configured not to contact the first jaw when the second jaw is closed with respect to the first jaw, and wherein the second surface necessarily ‘has’ the second portion.
Regarding claim 13, Weisenburgh discloses (see above) a treatment tool further comprising: a handle configured to open and close the second jaw with respect to the first jaw (note figs. 77 and 107).
Regarding claim 15, Weisenburgh discloses (see above) a treatment tool wherein the plurality of grooves comprises a plurality of first grooves (formed along a first lateral edge of ‘100’), the direction is a first direction, wherein the first jaw includes a second portion, wherein the second portion includes a plurality of second grooves (formed along a second lateral edge of ‘100’) each extending in a second direction intersecting the longitudinal direction of the first jaw, and wherein the first direction is symmetric with the second direction with respect to a longitudinal axis of the first jaw.
Regarding claim 16, Weisenburgh discloses (see above) a treatment tool wherein the direction is orthogonal to the longitudinal direction (see above).
Regarding claim 19, Weisenburgh discloses (see above; as best understood by Examiner) a treatment tool wherein the first portion comprises a top surface (see top of teeth in fig. 2); each groove of the plurality of grooves comprises a bottom surface (see lower angled surface of teeth in fig. 2) and a side surface (see lower vertical surface of teeth in fig. 2) connecting the top surface and the bottom surface; and an area of the top surface is smaller than an area of the bottom surface.
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.
Claim(s) 4-8, 10, 17, and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Morisaki in view of Allen, U.S. 2015/0313667 (hereinafter Allen).
Regarding claim 4, Morisaki discloses (see above) a treatment tool wherein the first jaw comprises a first surface (i.e., tissue-facing surface) and a second surface (i.e., rear portion of first jaw that faces away from tissue), wherein the first surface configured to face the second jaw, and the first surface has the first portion, and wherein the second surface is configured not to face the second jaw. However, Morisaki fails to explicitly disclose that the second surface has an electrically insulating material. Allen teaches (note abstract) a similar treatment tool having jaws with surfaces that may be composed of a variety of materials, including the claimed electrically insulating material (note paragraph 46). It is well known in the art that these different jaw configurations are widely considered to be interchangeable (as can be seen in Allen). Therefore, it would have been obvious to a person having ordinary skill in the art at the time the invention was filed, to have modified the apparatus of Morisaki to comprise jaws with surfaces that may be composed of a variety of materials, including the second surface having an electrically insulating material (as taught by Allen). This is because this modification would have merely comprised a simple substitution of interchangeable jaw configurations in order to produce a predictable result (see MPEP 2143).
Regarding claims 5 and 17, Morisaki discloses (see above) a treatment tool wherein the first surface comprises a top surface (flat upper-facing surface of ‘33’ in fig. 7), a first and a second inclined surfaces (angled upper-facing surfaces of ‘33’ in fig. 7), the first and second inclined surfaces are inclined with respect to the top surface, wherein the first and second inclined surfaces have the first portion.
Regarding claims 6-8, Morisaki in view of Allen teaches (see above) a treatment tool comprising a first jaw having a first surface and a second electrically-insulative surface. However, this combination of references fails to expressly teach that these surfaces are composed of the claimed materials. It would have been obvious to one having ordinary skill in the art at the time the invention was filed to have further modified the surfaces of Morisaki accordingly, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
Regarding claim 10, Morisaki discloses (see above) a treatment tool wherein the first jaw comprises a third surface (composed of side-facing surfaces of ‘33’ in fig. 7) connecting the first surface and the second surface, wherein the third surface does not contact the second jaw when the second jaw is closed with respect to the first jaw (note fig. 7), and wherein the first surface contacts the second jaw when the second jaw is closed with respect to the first jaw (note fig. 7).
Regarding claim 20, Morisaki discloses (see above) a treatment tool wherein the second jaw is configured to move with respect to the first jaw. However, Morisaki fails to explicitly disclose a tool where the jaws are configured to move relative to each other. Allen teaches (note abstract) a similar treatment tool having jaws that could be movable in either manner (note paragraph 42). It is well known in the art that these different jaw configurations are widely considered to be interchangeable (as can be seen in Allen). Therefore, it would have been obvious to a person having ordinary skill in the art at the time the invention was filed, to have modified the apparatus of Morisaki to comprise jaws that are movable in either manner, including jaws that are configured to move relative to each other (as taught by Allen). This is because this modification would have merely comprised a simple substitution of interchangeable jaw configurations in order to produce a predictable result (see MPEP 2143).
Claim(s) 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Morisaki in view of Allen as applied to claims 4-8, 10, 17, and 20 above, and further in view of Weisenburgh.
Regarding claim 18, Morisaki in view of Allen teaches (see above) a treatment tool wherein the first surface comprises a top surface (flat upper-facing surface of ‘33’ in fig. 7), and a first and a second inclined surfaces (angled upper-facing surfaces of ‘33’ in fig. 7), wherein the first and second inclined surfaces are inclined with respect to the top surface. However, this combination of references fails to expressly teach that the top surface contains the uneven portion. Weisenburgh teaches (note figs. 1-4) a similar treatment tool comprising an ultrasonic blade/jaw having an uneven top surface. This configuration is utilized in order to “improve tissue grasping” (note paragraph 226), thereby resulting in increased safety and efficiency. Therefore, it would have been obvious to a person having ordinary skill in the art at the time the invention was filed, to have further modified the apparatus of Morisaki to comprise a first jaw with an uneven top surface (as taught by Weisenburgh) in order to increase safety and efficiency.
Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Morisaki.
Regarding claim 9, Morisaki discloses (see above) a treatment tool comprising a first and second jaw, wherein the first jaw comprises a first portion. However, Morisaki fails to explicitly disclose that this first portion has the claimed thickness. It would have been obvious to one having ordinary skill in the art at the time the invention was filed to have modified the first portion accordingly, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233. Furthermore, a change in size is generally recognized as being within the level of ordinary skill in the art. In re Rose, 105 USPQ 237 (CCPA 1955).
Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Weisenburgh.
Regarding claim 9, Weisenburgh discloses (see above) a treatment tool comprising a first and second jaw, wherein the first jaw comprises a first portion. However, Weisenburgh fails to explicitly disclose that this first portion has the claimed thickness. It would have been obvious to one having ordinary skill in the art at the time the invention was filed to have modified the first portion accordingly, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233. Furthermore, a change in size is generally recognized as being within the level of ordinary skill in the art. In re Rose, 105 USPQ 237 (CCPA 1955).
Claim(s) 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Weisenburgh in view of Allen.
Regarding claim 20, Weisenburgh discloses (see above) a treatment tool wherein the second jaw is configured to move with respect to the first jaw. However, Weisenburgh fails to explicitly disclose a tool where the jaws are configured to move relative to each other. Allen teaches (note abstract) a similar treatment tool having jaws that could be movable in either manner (note paragraph 42). It is well known in the art that these different jaw configurations are widely considered to be interchangeable (as can be seen in Allen). Therefore, it would have been obvious to a person having ordinary skill in the art at the time the invention was filed, to have modified the apparatus of Weisenburgh to comprise jaws that are movable in either manner, including jaws that are configured to move relative to each other (as taught by Allen). This is because this modification would have merely comprised a simple substitution of interchangeable jaw configurations in order to produce a predictable result (see MPEP 2143).
Response to Arguments
Applicant’s arguments with respect to the claims have been considered but are moot because they do not apply to the current rejections.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
U.S. 2017/0202609 (Shelton).
U.S. 2015/0313667 (Allen).
U.S. 11,883,058 (Netzel).
Applicant's amendment necessitated the 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to THOMAS ANTHONY GIULIANI whose telephone number is (571)270-3202. The examiner can normally be reached Mon - Fri 9:00-5:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joanne Rodden can be reached at 303-297-4276. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/THOMAS A GIULIANI/Primary Examiner, Art Unit 3794
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