DETAILED ACTION
This action is pursuant to claims filed on 5/26/2026. Claims 1-6, 9-14, 17, and 20-23 are pending. Claims 7-8, 15-16, and 18-19 have been cancelled by the applicant. Claims 21-23 are newly added by the applicant. A final action on the merits of claims 1-6, 9-14, 17, and 20-23 is as follows.
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 § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 9-10 and 11-14 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Specifically, claims 9 and 11 state that the tissue contacting surface is loaded into a vacuum chamber containing precursor gases. This limitation was not previously disclosed in the original filing of the instant application. Paragraphs [0054], [0077], [0099], [0121], and [0145] of the instant application state that “plasma is used to activate precursor gases.” These are the only instances in which “precursor gases” are mentioned. The instant application states in paragraph [0181] provides the method of “(a) loading the tissue contacting surface into a vacuum chamber; (b) decreasing a pressure of the vacuum chamber; and (c) plasma treating the base surface after decreasing the pressure of the vacuum chamber to clean and activate the tissue contacting surface” and paragraph [0183] states that the processes uses oxygen. However, the specification makes no mention of the precursor gases being present in the vacuum chamber prior to decreasing the pressure of the chamber and establishing a vacuum. The PECVD process introduces precursor/ionizable gases into the chamber after the vacuum is established (Robinson [0066]). If these gases were introduced prior to establishing the vacuum, they would be removed when the pressure is decreased, thus rendering the process inoperable. It is not common practice to introduce these gasses prior to establishing the vacuum. Therefore, claims 9 and 11 fail to meet the written description requirement because they introduce new subject matter not disclosed in the original filing.
Claims 10 and 12-14 are rejected due to their dependance on claims 9 and 11, respectively.
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.
Claims 9-10 and 11-14 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.
Claims 9 and 11 state that the tissue contacting surface is loaded into a vacuum chamber containing precursor gases. It is unclear how this step is intended to be performed because if the gases are present in the chamber prior to establishing the vacuum, the gases would be removed during depressurization rendering the process inoperable. Therefore, claims 9 and 11 are rejected because it is indefinite how this process is intended to be performed. For the purposes of compact prosecution, this will be interpreted as the gases being put into the chamber after a vacuum is established.
Claims 10 and 12-14 are rejected due to their dependance on claims 9 and 11, respectively.
Claim Rejections - 35 USC § 103
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 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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1-6, 9-14, 17, and 20-23 are rejected under 35 U.S.C. 103 as being unpatentable over Nott et al. (hereinafter ‘Nott’, US 20180280075 A1) in view of Robinson et al. (hereinafter ‘Robinson’, US 20190090934 A1), in view of Batchelor et al. (hereinafter ‘Batchelor’, 20240081892 A1), and in further view of Bits & Bits (hereinafter ‘Bits’, “WidgetWorks Unlimited Diamond Drag Bit for Engraving”, https://web.archive.org/web/20231202091138/https://bitsbits.com/product/250-cncdrag/).
Regarding independent claim 1, Nott discloses a method of manufacturing a surgical instrument (Fig. 1) that includes a tissue contacting surface (jaws in Fig. 1B) operable to apply radio frequency (RF) energy to tissue ([Abstract]: the system includes an RF generator and applied the energy to tissue), the method comprising:
applying a hydrophobic coating to a base surface of the tissue contacting surface to form an applied coating layer having a coating application thickness ([Abstract]: a non-stick material may be deposited on the energy delivering surfaces; non-stick inherently provides for hydrophobicity but Nott also discloses that the material may be PTFE which is known in the art to be hydrophobic [0084]); and
removing portions of the applied coating layer with a mechanical coating removal tool to form a plurality of removed portions of coating ([Abstract]: portions of the coating may be removed to form a pattern; [0099]: the removal can be performed by an end-mill),
wherein a removal depth of each removed portion of the plurality of removed portions can each be up to 100% of the coating application thickness ([0116]: circular portions of the coating are removed which expose the electrode – thus the removed portions are 100% of the coating thickness) such that from 10% to 50% of the applied coating layer is removed from the base surface ([Abstract]: the ratio of the of the coating to the energy delivering surface can be less than or equal to about 0.9, 0.7, or 0.5 – thus the coating can be patterned to cover between 50% and 90% of the electrode surface, which means between 10% and 50% of the coating is removed via patterning; [0117]: the surface area of the electrode covered by the coating may be adjusted by altering the number of one or more circular portions).
However, Nott is silent to the material containing silicone.
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. Robinson discloses a similar electrosurgical device having an end effector for treating tissue and specifically teach that the coating is a non-stick coating made from a hydrophobic material made of silicone ([Abstract]: a polydimethylsiloxane coating is disposed on the tissue sealing plate). Robinson further teaches that it is advantageous to utilize polydimethylsiloxane over PTFE because PTFE may interfere with the efficacy and efficiency of hemostasis ([0004]). To have provided the device of Nott 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 Robinson teaches that the use of such silicone based materials improves the efficacy and efficiency of hemostasis when compared to PTFE.
Nott further shows an alternate embodiment in which the coating is not patterned and covers the entire surface of the electrode surface as seen in Fig. 4 and described in paragraph [0102].
However, the Nott/Robinson combination is silent to the removal depth of each removed portion of the plurality of removed portions being less than the coating application thickness of the applied coating layer.
Batchelor teaches an electrosurgical instrument including a jaw member having a sealing plate with a liquiphobic structure to reduce tissue adherence during the application of electrical energy ([Abstract]). Batchelor further teaches that the liquiphobic surface can be added by a non-stick coating or forming micropillars to allow for air gaps to form under a contact liquid thereby creating a superhydrophobic property ([0010]). As seen in Fig. 16, a non-stick coating can be patterned with a hydrophobic physical structure as well ([0144]). These valleys shown in Fig. 16 do not penetrate the entire way through the coating as seen in Fig. 16. While Batchelor does state that the specific Fig. 16 embodiment is formed by the application of nanoparticles to form the asperities, a hydrophobic structure like that of Fig. 15 could easily be formed by one of ordinary skill in the art utilizing the Nott/Robinson combination to micro-machine similar pillars. Batchelor clearly states that a textured portion can be formed by micro machining ([0007]). Micromachining the coating of the Nott/Robinson combination to form micropillars will well within the level of ordinary skill in the art and would maintain functionality because Nott discloses an embodiment in which the coating is not machined to expose the electrode surface. Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to combine the texturing taught by Batchelor with the coating taught by the Nott/Robinson combination such that a patterned is formed that does not penetrate completely through the thickness of the coating to increase the hydrophobicity of the non-stick layer.
However, the Nott/Robinson/Batchelor combination is silent to the mechanical coating removal tool being resiliently biased.
Bits teaches a spring loaded engraving tool that fits any ¼” collet for engraving plastics, metals, glass, or granite ([Page 3]). The bit engraves with the spindle turned off and the spring-loaded, floating head style bit applies constant pressure on the tip which creates very precise lines on the part’s surface. While not directed to an electrode surgical instrument, the device is directed towards a device for coupling with an engraver to pattern a surface. Since Nott is directed towards utilizing an endmill to pattern a surface of the device, applying the device of Bits to the engraving tool taught by Nott would be of routine skill in the art. The bit is designed to compensate for warped materials and tables which are not perfectly flat ([Page 3]). Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to combine the spring-biased tool taught by Bits for the endmill taught by Nott in order to provide a patterning tool that provides even and constant pressure during engraving even if the surface is uneven or not parallel to the plane of motion of the machine.
Regarding claim 2, the Nott/Robinson/Batchelor/Bits combination discloses the method of claim 1 as described above. Robinson further teaches wherein the act of applying utilizes plasma enhanced chemical vapor deposition (PECVD) to form the applied coating layer ([0041]: the non-stick coating is formed by PECVD). To utilize PECVD to apply the non-stick coating would have been an obvious consideration since Robinson fairly teaches it is simply one of several known methods to apply a non-stick coating to a surface of a surgical device ([0041]).
Regarding claim 3, the Nott/Robinson/Batchelor/Bits combination discloses the method of claim 1, wherein the hydrophobic coating is a polydimethylsiloxane-like (PDMS-like) coating (Robinson [Abstract]: a polydimethylsiloxane coating is disposed on the tissue sealing plate), a polytetrafluoroethylene-like (PTFE-like) coating (Nott [0084]: the material can be PTFE), a fluoropolymer coating, a silicone dip or spray coating, and/or a parylene coating.
Regarding claim 4, the Nott/Robinson/Batchelor/Bits combination discloses the method of claim 1, wherein the resiliently biased mechanical coating removal tool is a drag bit (Bits [Page 3]: the tool is a diamond drag engraving bit).
Regarding claim 5, the Nott/Robinson/Batchelor/Bits combination discloses the method of claim 1, wherein the plurality of removed portions are selectively removed to form a pattern of removed portions (Nott [0100]: the patterned coating forms a pattern by removing portions from the coating forming a variety of geometries).
Regarding claim 6, the Nott/Robinson/Batchelor/Bits combination discloses the method of claim 5, wherein the plurality of removed portions form a pattern of lines (Nott [0100]: the patterned coating may be formed of removed portions that are linear), and wherein each line of the pattern of lines has a diameter of from about 0.001 inches to about 0.010 inches (Nott [0122]: the length and width of the elongated portions may be adjusted or altered; Bits [Page 2]: the engraved line width is 0.005 inches – thus in the combination, the lines formed by the bit of Bits would be 0.005 inches).
Regarding claim 9, the Nott/Robinson/Batchelor/Bits combination discloses the method of claim 1. Robinson further teaches the method comprising:
loading the tissue contacting surface into a vacuum chamber (Robinson [0066]: the uncoated jaws are loaded into a vacuum chamber) containing precursor gases (Robinson [0066]: ionizable oxygen is supplied into the chamber – the ionizable oxygen is the precursor gas);
decreasing a pressure of the vacuum chamber (Robinson [0066]: the chamber is pumped down and a vacuum is established); and
plasma treating the base surface after decreasing the pressure of the vacuum chamber to clean the tissue contacting surface (Robinson [0066]: plasma treating occurs to remove residual organic impurities and prepare the surface for application of the non-stick coating and improving surface coverage and enhance adhesion of the non-stick coating) and activate the precursor gases (Robinson [0019], [0066]: the ionizable media is ignited to generate a plasma to prepare the electrically conductive component to receive the coating – since “activate the precursor gases” is not specifically defined in the specification, it is interpreted as ionizing the precursor gas into plasma to receive the coating).
To utilize the method taught by Robinson prepare the surface for the application of the non-stick coating would have been an obvious consideration since Robinson fairly teaches it is a known method to prepare a surface for the application of a non-stick coating to a surface of a surgical device to improve adhesion of the non-stick coating ([0066]).
Regarding claim 10, the Nott/Robinson/Batchelor/Bits combination discloses the method of claim 9, wherein the act of plasma treating is performed prior to the act of applying the hydrophobic coating (Robinson [0066]: the plasma treating is done to prepare the surface for the application of the coating, thus it is done prior to applying the coating) and wherein the precursor gases include at least one of oxygen or argon (Robinson [0066]: the ionizable media, which is the precursor gas, is oxygen).
Regarding independent claim 11, Nott discloses a method of manufacturing a surgical instrument (Fig. 1) that includes a tissue contacting surface (jaws in Fig. 1B) operable to apply ultrasonic energy or RF energy to tissue ([Abstract]: the system includes an RF generator and applied the energy to tissue), the method comprising:
applying a hydrophobic coating to the at least one surface of the tissue contacting surface to form an applied coating layer having a coating application thickness ([Abstract]: a non-stick material may be deposited on the energy delivering surfaces; non-stick inherently provides for hydrophobicity but Nott also discloses that the material may be PTFE which is known in the art to be hydrophobic [0084]); and
removing portions of the applied coating layer with a mechanical coating removal tool to form a plurality of removed portions of coating ([Abstract]: portions of the coating may be removed to form a pattern; [0099]: the removal can be performed by an end-mill),
wherein a removal depth of each removed portion of the plurality of removed portions can each be up to 100% of the coating application thickness ([0116]: circular portions of the coating are removed which expose the electrode – thus the removed portions are 100% of the coating thickness) such that from 10% to 50% of the applied coating layer is removed from the base surface ([Abstract]: the ratio of the of the coating to the energy delivering surface can be less than or equal to about 0.9, 0.7, or 0.5 – thus the coating can be patterned to cover between 50% and 90% of the electrode surface, which means between 10% and 50% of the coating is removed via patterning; [0117]: the surface area of the electrode covered by the coating may be adjusted by altering the number of one or more circular portions).
However, Nott is silent to the material containing silicone as well as loading the tissue contacting surface into a vacuum chamber containing precursor gases; decreasing a pressure of the vacuum chamber; and plasma treating at least one surface of the tissue contacting surface after decreasing the pressure of the vacuum chamber to clean the tissue contacting surface and activate the precursor gases.
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. Robinson discloses a similar electrosurgical device having an end effector for treating tissue and specifically teach that the coating is a non-stick coating made from a hydrophobic material made of silicone ([Abstract]: a polydimethylsiloxane coating is disposed on the tissue sealing plate). Robinson further teaches that it is advantageous to utilize polydimethylsiloxane over PTFE because PTFE may interfere with the efficacy and efficiency of hemostasis ([0004]). To have provided the device of Nott 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 Robinson teaches that the use of such silicone based materials improves the efficacy and efficiency of hemostasis when compared to PTFE.
Robinson further discloses:
loading the tissue contacting surface into a vacuum chamber (Robinson [0066]: the uncoated jaws are loaded into a vacuum chamber) containing precursor gases (Robinson [0066]: ionizable oxygen is supplied into the chamber – the ionizable oxygen is the precursor gas);
decreasing a pressure of the vacuum chamber (Robinson [0066]: the chamber is pumped down and a vacuum is established); and
plasma treating the base surface after decreasing the pressure of the vacuum chamber to clean and activate the tissue contacting surface (Robinson [0066]: plasma treating occurs to remove residual organic impurities and prepare the surface for application of the non-stick coating and improving surface coverage and enhance adhesion of the non-stick coating) and activate the precursor gases (Robinson [0019], [0066]: the ionizable media is ignited to generate a plasma to prepare the electrically conductive component to receive the coating – since “activate the precursor gases” is not specifically defined in the specification, it is interpreted as ionizing the precursor gas into plasma to receive the coating).
Performing the process taught by Robinson removes any of the residual organic impurities and weakly bound organic contamination as well as prepares the jaws for the subsequent application of the non-stick coating and improves surface coverage and enhances adhesion of the non-stick coating ([0066]). Therefore, to utilize the method taught by Robinson prepare the surface for the application of the non-stick coating would have been an obvious consideration since Robinson fairly teaches it is a known method to prepare a surface for the application of a non-stick coating to a surface of a surgical device to improve surface coverage and adhesion of the non-stick coating ([0066]).
Nott further shows an alternate embodiment in which the coating is not patterned and covers the entire surface of the electrode surface as seen in Fig. 4 and described in paragraph [0102].
However, the Nott/Robinson combination is silent to the removal depth of each removed portion of the plurality of removed portions being less than the coating application thickness of the applied coating layer.
Batchelor teaches an electrosurgical instrument including a jaw member having a sealing plate with a liquiphobic structure to reduce tissue adherence during the application of electrical energy ([Abstract]). Batchelor further teaches that the liquiphobic surface can be added by a non-stick coating or forming micropillars to allow for air gaps to form under a contact liquid thereby creating a superhydrophobic property ([0010]). As seen in Fig. 16, a non-stick coating can be patterned with a hydrophobic physical structure as well ([0144]). These valleys shown in Fig. 16 do not penetrate the entire way through the coating as seen in Fig. 16. While Batchelor does state that the specific Fig. 16 embodiment is formed by the application of nanoparticles to form the asperities, a hydrophobic structure like that of Fig. 15 could easily be formed by one of ordinary skill in the art utilizing the Nott/Robinson combination to micro-machine similar pillars. Batchelor clearly states that a textured portion can be formed by micro machining ([0007]). Micromachining the coating of the Nott/Robinson combination to form micropillars will well within the level of ordinary skill in the art and would maintain functionality because Nott discloses an embodiment in which the coating is not machined to expose the electrode surface. Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to combine the texturing taught by Batchelor with the coating taught by the Nott/Robinson combination such that a patterned is formed that does not penetrate completely through the thickness of the coating to increase the hydrophobicity of the non-stick layer.
However, the Nott/Robinson/Batchelor combination is silent to the mechanical coating removal tool being resiliently biased.
Bits teaches a spring loaded engraving tool that fits any ¼” collet for engraving plastics, metals, glass, or granite ([Page 3]). The bit engraves with the spindle turned off and the spring-loaded, floating head style bit applies constant pressure on the tip which creates very precise lines on the part’s surface. While not directed to an electrode surgical instrument, the device is directed towards a device for coupling with an engraver to pattern a surface. Since Nott is directed towards utilizing an endmill to pattern a surface of the device, applying the device of Bits to the engraving tool taught by Nott would be of routine skill in the art. The bit is designed to compensate for warped materials and tables which are not perfectly flat ([Page 3]). Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to combine the spring-biased tool taught by Bits for the endmill taught by Nott in order to provide a patterning tool that provides even and constant pressure during engraving even if the surface is uneven or not parallel to the plane of motion of the machine.
Regarding claim 12, the Nott/Robinson/Batchelor/Bits combination discloses the method of claim 11 as described above. Robinson further teaches wherein the act of applying utilizes plasma enhanced chemical vapor deposition (PECVD) to form the applied coating layer ([0041]: the non-stick coating is formed by PECVD). To utilize PECVD to apply the non-stick coating would have been an obvious consideration since Robinson fairly teaches it is simply one of several known methods to apply a non-stick coating to a surface of a surgical device ([0041]).
Regarding claim 13, the Nott/Robinson/Batchelor/Bits combination discloses the method of claim 11, wherein the hydrophobic coating is a polydimethylsiloxane-like (PDMS-like) coating (Robinson [Abstract]: a polydimethylsiloxane coating is disposed on the tissue sealing plate), a polytetrafluoroethylene-like (PTFE-like) coating (Nott [0084]: the material can be PTFE), a fluoropolymer coating, a silicone dip or spray coating, and/or a parylene coating.
Regarding claim 14, the Nott/Robinson/Batchelor/Bits combination discloses the method of claim 11, wherein the resiliently biased mechanical coating removal tool is a drag bit (Bits [Page 3]: the tool is a diamond drag engraving bit).
Regarding independent claim 17, Nott discloses a surgical instrument (Fig. 1) comprising:
a shaft assembly (shaft 104); and
an end effector extending distally from the shaft assembly (end effector 108), wherein the end effector includes a tissue contacting surface (electrodes 220 on jaw members 109) configured to apply energy to treat tissue ([0063]: the electrodes of the jaw member apply RF energy), wherein the tissue contacting surface includes at least one of an ultrasonic blade or an electrode ([0063]: the electrodes deliver energy to the tissue), the tissue contacting surface comprising:
a base surface configured to contact the tissue (surface of electrode 220 in Fig. 2),
a hydrophobic coating layer on the base surface having a coating application thickness ([0096]: non-stick coating 235 which is on the surface of the electrode; [0084]: the non-stick coating may be PTFE which is known in the art to be hydrophobic), and
a plurality of removed portions of the hydrophobic coating layer removed by a mechanical coating removal tool (removed portions 340, 540, 640, 740, 1040, etc.; [Abstract]: portions of the coating may be removed to form a pattern; [0099]: the removal can be performed by an end-mill),
wherein a removal depth of each removed portion of the plurality of removed portions can each be up to 100% of the coating application thickness ([0116]: circular portions of the coating are removed which expose the electrode – thus the removed portions are 100% of the coating thickness) such that from 10% to 50% of the applied coating layer is removed from the base surface ([Abstract]: the ratio of the of the coating to the energy delivering surface can be less than or equal to about 0.9, 0.7, or 0.5 – thus the coating can be patterned to cover between 50% and 90% of the electrode surface, which means between 10% and 50% of the coating is removed via patterning; [0117]: the surface area of the electrode covered by the coating may be adjusted by altering the number of one or more circular portions).
However, Nott is silent to the material containing silicone.
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. Robinson discloses a similar electrosurgical device having an end effector for treating tissue and specifically teach that the coating is a non-stick coating made from a hydrophobic material made of silicone ([Abstract]: a polydimethylsiloxane coating is disposed on the tissue sealing plate). Robinson further teaches that it is advantageous to utilize polydimethylsiloxane over PTFE because PTFE may interfere with the efficacy and efficiency of hemostasis ([0004]). To have provided the device of Nott 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 Robinson teaches that the use of such silicone based materials improves the efficacy and efficiency of hemostasis when compared to PTFE.
Nott further shows an alternate embodiment in which the coating is not patterned and covers the entire surface of the electrode surface as seen in Fig. 4 and described in paragraph [0102].
However, the Nott/Robinson combination is silent to the removal depth of each removed portion of the plurality of removed portions being less than the coating application thickness of the applied coating layer.
Batchelor teaches an electrosurgical instrument including a jaw member having a sealing plate with a liquiphobic structure to reduce tissue adherence during the application of electrical energy ([Abstract]). Batchelor further teaches that the liquiphobic surface can be added by a non-stick coating or forming micropillars to allow for air gaps to form under a contact liquid thereby creating a superhydrophobic property ([0010]). As seen in Fig. 16, a non-stick coating can be patterned with a hydrophobic physical structure as well ([0144]). These valleys shown in Fig. 16 do not penetrate the entire way through the coating as seen in Fig. 16. While Batchelor does state that the specific Fig. 16 embodiment is formed by the application of nanoparticles to form the asperities, a hydrophobic structure like that of Fig. 15 could easily be formed by one of ordinary skill in the art utilizing the Nott/Robinson combination to micro-machine similar pillars. Batchelor clearly states that a textured portion can be formed by micro machining ([0007]). Micromachining the coating of the Nott/Robinson combination to form micropillars will well within the level of ordinary skill in the art and would maintain functionality because Nott discloses an embodiment in which the coating is not machined to expose the electrode surface. Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to combine the texturing taught by Batchelor with the coating taught by the Nott/Robinson combination such that a patterned is formed that does not penetrate completely through the thickness of the coating to increase the hydrophobicity of the non-stick layer.
However, the Nott/Robinson/Batchelor combination is silent to the mechanical coating removal tool being resiliently biased.
Bits teaches a spring loaded engraving tool that fits any ¼” collet for engraving plastics, metals, glass, or granite ([Page 3]). The bit engraves with the spindle turned off and the spring-loaded, floating head style bit applies constant pressure on the tip which creates very precise lines on the part’s surface. While not directed to an electrode surgical instrument, the device is directed towards a device for coupling with an engraver to pattern a surface. Since Nott is directed towards utilizing an endmill to pattern a surface of the device, applying the device of Bits to the engraving tool taught by Nott would be of routine skill in the art. The bit is designed to compensate for warped materials and tables which are not perfectly flat ([Page 3]). Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to combine the spring-biased tool taught by Bits for the endmill taught by Nott in order to provide a patterning tool that provides even and constant pressure during engraving even if the surface is uneven or not parallel to the plane of motion of the machine.
Regarding claim 20, the Nott/Robinson/Batchelor/Bits combination discloses the surgical instrument of claim 17, wherein the hydrophobic coating layer is a polydimethylsiloxane-like (PDMS-like) coating layer, a polytetrafluoroethylene-like (PTFE-like) coating layer, a fluoropolymer coating layer, a silicone dip or spray coating layer, and/or a parylene coating layer (Nott [0116]: circular portions of the coating are removed which expose the electrode – thus the removed portions are 100% of the coating thickness).
Regarding claims 21-23, the Nott/Robinson/Batchelor/Bits combination discloses the method and devices of claims 1, 11, and 17, respectively. Nott further states that the size and shape of the removed portions can be adjusted ([0117]). Batchelor also states that the shapes of the micropillars are not limited to those shown and contemplates a variety of different removal depths and shapes as seen in Figs. 11-17 ([0141])
However, the combination is silent to the removal depth of each removed portion of the plurality of removed portions being from 60% to about 80% of the coating application thickness.
It would have been an obvious matter of design choice to make the removal depths 60% to about 80% of the coating application thickness, since such a modification would have involved a mere change in the size of a component. 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). The instant application provides no criticality to the depth of the removed portions, even stating in paragraph [0064] that the removal depth “can be from about 50% to about 100% of the coating application thickness of coating (206). In yet other versions, the removal depth of each removed portion (202) may be from about 50% to about 90% of the coating application thickness of coating (206), from about 50% to about 80%, from about 50% to about 70%, and from about 50% to about 70%. In one or more versions, the removal depth of each removed portion (202) can have any value between any of the foregoing ranges.” Additionally, both Batchelor and Nott disclose that the shapes and sizes for the protrusions/removed portions can be altered. Therefore, because the removal depth is not critical to the invention and both Nott and Batchelor contemplates a variety of different sizes and shapes, it would be obvious to one of ordinary skill in the art to modify the removal depth to be between 60% and 80% of the coating thickness.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
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Claims 1-3, 5, 7-13, and 15-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 5, 7-13, and 15-20 of copending Application No. 18/784,247 (reference application) in view of Bits.
Although the claims at issue are not identical, they are not patentably distinct from each other because the copending claims anticipate the claims of the instant claimed invention.
Independent claims 1, 11, and 17 of both the instant application and the reference application are nearly identical. The only difference being that the instant application claims a resiliently biased mechanical coating removal tool and the reference application claims a laser for the removal tool. Selecting the method of patterning is well within the level of ordinary skill in the art. Bits teaches that a spring-biased drag bit can be used to precisely engrave various plastics with great detail ([Page 3]). Utilizing a drag bit rather than a laser to form an engraved pattern on a coating is an obvious consideration for one of ordinary skill in the art to make in order to precisely pattern a coating as taught by Bits.
Claims 2-3, 5, 7-10, 12-13, 15-16, and 18-20 are identical between the two applications.
Claims 1-3, 5, 7, 9-13, 16-18, and 20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 5, 9-13, and 17, and 20 of copending Application No. 18/784,285 (reference application) in view of Bits.
Independent claims 1, 11, and 17 of both the instant application and the reference application are nearly identical. The only differences being that the instant application claims a resiliently biased mechanical coating removal tool and the reference application claims a plasma removal tool. Selecting the method of patterning is well within the level of ordinary skill in the art. Bits teaches that a spring-biased drag bit can be used to precisely engrave various plastics with great detail ([Page 3]). Utilizing a drag bit rather than plasma removal to form an engraved pattern on a coating is an obvious consideration for one of ordinary skill in the art to make in order to precisely pattern a coating as taught by Bits.
Claims 2-3, 5, 9-10, 12-13, and 20 are identical between the two applications.
Response to Arguments
Applicant’s arguments regarding the previous 112 rejections of claims 9 and 11 have been fully considered and are persuasive in light of the amendments. The previous 112 rejections have been withdrawn. However, the amendments introduce new subject matter as described above which lead to new 112 rejections.
Applicant's arguments regarding the 103 rejections of claims 1, 11, and 17 have been fully considered but they are not persuasive. For each of these claims, the applicant argues that Nott does not teach the limitation of “the removal depth of each removed portion of the plurality of removed portions is less than the coating application thickness” and combining with Batchelor would render the device of Nott inoperable. This is not persuasive. The applicant states that Nott does not disclose an embodiment in which the coating is not machined. The examiner respectfully asserts that this is incorrect. Paragraph [0102] of Nott, as previously cited by the examiner, states that “Fig. 4 depicts a first jaw member having an electrically non-conducting non-stick coating 435 applied to a surface of an electrode. As distinguished from the non-stick coating 335 depicted in FIG. 3, the non-stick coating 435 depicted in FIG. 4 is not a patterned coating.” Additionally, as clearly seen in Fig. 4, the coating is not machined to expose the electrode surface underneath. Therefore, Nott does explicitly disclose an embodiment in which the electrode surface underneath is not exposed by machining, thus indicating that when combined with Batchelor operability of the device would be maintained.
The applicant additionally argues that the rejection of record fails to articulate a rational for combining Nott with Batchelor. However, this is not persuasive. As stated in the previous office action, Batchelor teaches that the liquiphobic surface can be added by a non-stick coating or forming micropillars to allow for air gaps to form under a contact liquid thereby creating a superhydrophobic property ([0010]). As seen in Fig. 16, a non-stick coating can be patterned with a hydrophobic physical structure as well ([0144]). Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to combine the texturing taught by Batchelor with the coating taught by the Nott/Robinson combination such that a patterned is formed that does not penetrate completely through the thickness of the coating to increase the hydrophobicity of the non-stick layer. The motivation is clearly stated in the rejection of record that forming structural pillars in the coating of Nott increases the hydrophobic properties, which is an obvious benefit to one of ordinary skill in the art.
Therefore, the rejections of claims 1, 11, and 17 are maintained. Consequently, the rejections to the dependent claims 2-6, 9-10, 12-14, and 20 are maintained.
Regarding the new dependent claims 21-23, modifying the removal depth such that it is 60% to 80% of the coating thickness is simply a change in the size of the hole. 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). The instant application provides no criticality to the depth of the removed portions, even stating in paragraph [0064] that the removal depth “can be from about 50% to about 100% of the coating application thickness of coating (206). In yet other versions, the removal depth of each removed portion (202) may be from about 50% to about 90% of the coating application thickness of coating (206), from about 50% to about 80%, from about 50% to about 70%, and from about 50% to about 70%. In one or more versions, the removal depth of each removed portion (202) can have any value between any of the foregoing ranges.” Additionally, Batchelor states that the shapes of the micropillars are not limited to those shown and contemplates a variety of different removal depths and shapes as seen in Figs. 11-17 ([0141]). Therefore, because the removal depth is not critical to the invention and since Batchelor contemplates a variety of different removal depths and shapes, it would be obvious to one of ordinary skill in the art to modify the removal depth to be between 60% and 80% of the coating thickness.
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 WILLIAM E MOSSBROOK whose telephone number is (703)756-1936. The examiner can normally be reached M-F 8-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Stoklosa can be reached at (571) 272-1213. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/W.M./Examiner, Art Unit 3794
/JOSEPH A STOKLOSA/Supervisory Patent Examiner, Art Unit 3794
