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 .
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 1-6, 17 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Nott et al (2018/0280075) in view of the teaching of Batchelor et al (2022/0331498).
Regarding claim 1, Nott et al provide a method of manufacturing a surgical instrument including a tissue contacting surface comprising the steps of applying a non-stick coating to form a coating layer having a coating thickness, and removing portions of the applied coating layer to form a plurality of removed portions of coating. See Abstract, for example. The patterned coating may be a series of “dots” (Figures 3 and 5, for example) and the removal depth may be up to 100% (para. [0116], for example) and the total amount removed may be in a range from 10-50% (ratios of the patterned coating recited in the Abstract). Nott et al fails to expressly disclose a hydrophobic coating including silicone, and the use of a laser to remove portions of the coating.
The examiner maintains that the various materials used for non-conductive and non-stick coatings on surgical instruments are generally well-known in the art, as is the removal or portions of coatings using a laser. Batchelor et al disclose a similar electrosurgical device having an end effector for treating tissue, and specifically teach it is known to use non-stick coating made from a hydrophobic material made of silicone (para. [0057] and [0062], for example) and further teach that portions of the coating may be removed with a laser (para. [0065], for example). The discussion with respect to Figures 4-6 specifically discloses that a non-stick, hydrophobic layer is placed on an electrosurgery cutting device, and then asperities (i.e. holes) are created in the hydrophobic layer using laser etching (paragraph [0077] and [0081], for example). As seen in Figure 4, the device (402) has a non-stick, hydrophobic layer (410) deposited on the device, and the asperities (i.e. holes 412) are created on the hydrophobic layer, which holes may extend to a depth (416) that is less than the entire thickness of the hydrophobic layer. It is noted that the specification of Batchelor when discussing Figures 4-6 use the wrong reference numerals. For example, Figure 4 shows electrode/substrate (402) and coating (410), but the specification makes reference to substrate (302) and coating (310). However, it is clear which elements are being referenced. Figure 5 specifically shows holes (506) that are created in the non-stick layer (502), which holes extend only partially through the depth of the non-stick layer.
To have provided the Nott et al device with a hydrophobic coating comprising silicone would have been an obvious consideration for one of ordinary skill in the art at the time of the invention since Batchelor et al fairly teach the use of these materials for a non-stick coating on an analogous surgical device. To have further used a laser to remove the desired portions of the coating would have been an obvious consideration since Batchelor et al fairly teach it is known to use a laser to remove portions of the non-stick coating to create asperities on the surface of the coating.
Regarding claim 2, Batchelor et al teach of applying the coating using plasma enhanced chemical vapor deposition (para. [0064]. Regarding claim 3, both Nott et al (para. [0084]) and Batchelor et al (para. [0062-0063]) disclose these well-known coatings. Regarding claim 4, the examiner maintains one of ordinary skill in the art would recognize the various types of lasers that would be used to remove the selected portions and such a laser would be an obvious selection for one of ordinary skill in the art. Regarding claims 5 and 6, Nott et al provide patterns of circular dots (Figures 3 and 5, for example) and disclose the size of the dots may be any desired size. The specific dimensions recited in claim 6 are deemed to be obvious parameters that would be within the purview of the skilled artisan.
Regarding claim 17, Nott et al provide a surgical instrument comprising a shaft assembly (104) with an end effector (107) extending from the shaft. The end effector includes an electrode base surface configured to contact tissue, and a non-stick coating applied to the base layer. The coating has a plurality of removed portions within the claimed parameters as addressed with respect to claim 1 above. Nott et al fail to expressly disclose the non-stick coating is a hydrophobic coating comprising silicone.
As addressed previously, Batchelor et al disclose a similar electrosurgical device having an end effector for treating tissue, and specifically teach it is known to use non-stick coating made from a hydrophobic material made of silicone (para. [0057] and [0062], for example). Figures 4-6 and the associated discussion disclose the use of laser to create holes (i.e. asperities) at a depth that is less than the thickness of the coating.
To have provided the Nott et al device with a hydrophobic coating comprising silicone would have been an obvious consideration for one of ordinary skill in the art at the time of the invention since Batchelor et al fairly teach the use of these materials for a non-stick coating on an analogous surgical device.
Regarding claim 20, see discussion of claim 3 above.
Claims 9-14 are rejected under 35 U.S.C. 103 as being unpatentable over Nott et al (2018/0280075) in view of the teaching of Batchelor et al (2022/0331498) and further in view of the teaching of Boronyak et al (2022/0110673).
The combination of the Batchelor et al teaching with the Nott et al device has been addressed previously. Batchelor et al disclose the well-known use chemical vapor deposition and other knowns methods to apply a coating to a surgical instrument, but fail to expressly disclose the steps recited in claims 9 and 10. The examiner maintains that those of ordinary skill in the art are generally familiar with the steps required to provide a non-stick coating to a surgical instrument in a variety of ways.
Boronyak et al disclose another surgical device that is provided with a hydrophobic coating. See, for example, Abstract. In particular, Boronyak et al disclose the specific steps for providing such a coating including loading the device in a vacuum chamber, decreasing the pressure in the chamber and plasma treating the base surface to clean the surface prior to applying the hydrophobic coating. See, for example, Figures 24 and 25 and associated description. Boronyak et al also disclose plasma cleaning using an argon or oxygen gas (para. [0092]).
To have provided the hydrophobic coating of Batchelor et al to the Nott et al device using the specific steps taught by Boronyak et al would have been an obvious consideration for one of ordinary skill in the art since Boronyak et al fairly teach the method steps used in providing a hydrophobic non-stick coating on a surgical device.
Regarding claim 11, Boronyak et al again teach the steps of applying a hydrophobic coating to a surgical device, and Nott et al disclose providing a non-stick coating to a surgical device and removing portions of the coating as addressed with respect to claim 1 above. Again, Batchelor et al provide the teaching of using a hydrophobic material including silicone as a non-stick coating for a surgical device, as well as the use of a laser to remove portions of the coating to a depth less than the thickness of the coating (Figures 4 and 5, for example).
Regarding claim 12, Batchelor et al and Boronyak et al both disclose the use of PECVD to form a coating layer on a surgical device. Regarding claim 13, Nott et al, Batchelor et al and Boronyak et al all disclose similar materials for the coating. Regarding claim 14, see discussion of claim 4 above.
Response to Arguments
Applicant's arguments filed April 23, 2026 have been fully considered but they are not persuasive.
Applicant asserts on page 7 of the response that Batchelor is “clearly discussing the application of a non-stick coating, not its removal” with the discussion at paragraph [0065] of the Batchelor reference directed towards laser etching. The applicant continues to assert there is no clear definition of how one applies a coating via a laser etching method and suggests some possible explanations to the process that may be used. The examiner disagrees with this characterization of Batchelor and believes applicant has taken the specific wording of paragraph [0065] out of context. The discussion with respect to Figures 4 and 5 in Batchelor specifically address that a coating (i.e. hydrophobic, non-stick coating) is applied to the substrate, and then laser etching is used to create asperities (or holes) in the surface of the coating. Figure 4 clearly show the asperities (i.e. holes) extend to a depth that is less than the thickness of the coating. Figure 5 shows the pattern of holes created on the coating, including a depth less than the thickness of the coating. Paragraph [0077] expressly states the asperities (i.e. holes) are formed by laser etching or ablation of the bulk material. Paragraph [0081] also specifically addresses using laser etching to create holes in a hydrophobic structure. While this paragraph references Figure 6, it is clear that Figure 5 is the appropriate figure for this discussion. As such, the examiner maintains that Batchelor clearly disclose that laser etching is used to create a pattern of holes on the hydrophobic surface as claimed.
Regarding the amendment to claim 1 that the removed portion is less than the coating application thickness, applicant argues that there is no disclosure of this teaching in either reference. The examiner maintains that at the very least, Batchelor clearly discloses that the removed portion (i.e. asperities or holes) is less than the thickness of the coating as is clearly seen in Figures 4 and 5.
Conclusion
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 MICHAEL PEFFLEY whose telephone number is (571)272-4770. The examiner can normally be reached Mon-Fri 8 am-5 pm.
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/MICHAEL F PEFFLEY/Primary Examiner, Art Unit 3794
/M.F.P/June 14, 2026
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