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 .
Response to Amendment
This Office action is responsive to the amendment filed 08/03/2026. Claims 1, 6, and 12-14 have been amended. Claims 15-20 have been newly added. Claims 1-20 are currently pending in the application.
Election/Restrictions
Newly submitted claims 19-20 are directed to an invention that is independent or distinct from the invention originally claimed for the following reasons:
The invention of Group I (claims 1-18) and Group II (claims 19-20) are related as product and process of use. The inventions can be shown to be distinct if either or both of the following can be shown: (1) the process for using the product as claimed can be practiced with another materially different product or (2) the product as claimed can be used in a materially different process of using that product. See MPEP § 806.05(h). In the instant case the product as claimed can be used in a materially different process of using the product (e.g., the medical device of Group I can be used to grasp an object other than tissue).
Since applicant has received an action on the merits for the originally presented invention (Group I), this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 19-20 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Response to Arguments
Applicant’s arguments, see pg. 6-7, filed 08/03/2026, with respect to the rejections of the claims under 35 U.S.C. 103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Twomey et al. (US 20130138102).
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.
Claims 1-18 are rejected under 35 U.S.C. 103 as being unpatentable over Twomey et al. (US 20130138102 A1) and Allen et al. (US 20180338792).
Regarding claims 1 and 14, Twomey discloses a medical device (see Fig. 1-3) comprising: a handpiece (2) including a housing (4); an inner shaft (38)comprising a generally cylindrical tube extending out of the handpiece along a longitudinal axis, the inner shaft rotatable with respect to the housing (inner shaft 38 is rotatable with respect to the housing by way of rotating assembly 8, see Fig. 1 and [0038]); an outer shaft (14) comprising a generally cylindrical tube located around the inner shaft, the outer shaft rotatable with respect to the housing (outer shaft 14 is rotatable with respect to the housing by way of rotating assembly 8, see Fig. 1 and [0038]); and an end effector (jaws 22,24) coupled to the outer shaft at a first longitudinal location via a pivot pin (34, see Fig. 1 and [0041]); and wherein the outer shaft is rotationally constrained to the inner shaft at a third longitudinal location proximal to the first longitudinal location via a guide (56, see Fig. 2) that extends through an aperture (54, see Fig. 3) in the inner shaft and is longitudinally fixed relative to the outer shaft (pin 56 is longitudinally fixed relative to the outer shaft since the aperture it extends through does not allow longitudinal translation, see Fig. 2). Further regarding claim 14, Twomey discloses the end effector is coupled to the inner shaft by a drive pin (44, see [0043] and Fig. 1).
Twomey fails to expressly teach the outer shaft is rotationally constrained to the inner shaft at a proximal end by way of a rotational actuator independently connected to each of the inner shaft and the outer shaft.
However, it is noted that Twomey discloses that the medical device has a rotational actuator (rotating assembly 8, see Fig. 1) at the proximal end of the device for causing the end effector to rotate about the longitudinal axis (see [0038]). Twomey is silent about how the actuator is connected to the inner and outer shafts. It is well known in the art to rotationally constrain outer and inner shafts with respect to a rotational actuator at a proximal end of the device to cause an end effector to rotate about the longitudinal axis.
Allen, in the same field of art, teaches a similar medical device (10, see Fig. 1 and 3) having a handpiece (12), an outer shaft (60), an inner shaft (80), and an end effector (jaws 30, 32). The outer shaft is rotationally constrained to the inner shaft at a proximal end of the device such that the outer and inner shafts are both rotatable with respect to the handpiece via movement of the rotation knob (28) which is independently connected to each of the inner shaft and the outer shaft (the rotational actuator 28 is connected to the outer shaft at tabs 66c and separately connected to the inner shaft where it engages with passageway 120, see col. 11, lines 4-8 and Fig. 4-5).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the device of Twomey so that the outer shaft is rotationally constrained to inner shaft at a proximal end of the device, as taught by Allen, since outer and inner shafts rotationally constrained to a rotational actuator was known in the art and one skilled in the art could have combined the elements as claimed by known methods (i.e., coupling) with no change in their respective functions and the combination would have yielded nothing more than predictable results, namely, the modification would have resulted in the inner and outer shafts being rotatable together by way of the rotational actuator. KSR International Co. V. Teleflex Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007).
Regarding claim 2, the combination of Twomey and Allen teaches the second longitudinal location is closer to the handpiece than to the end effector since the rotating assembly of Twomey (see element 8 in Fig. 1 of Twomey) is located on the handpiece.
Regarding claim 3, Twomey further discloses the third longitudinal location is closer to the end effector than to the handpiece (pin 56 is a part of the front-end assembly which is closer to the end effector than to the handpiece, see Fig. 2 and [0020]).
Regarding claim 4, Twomey further discloses the third longitudinal location is distal of the second longitudinal location and proximal of the end effector (pin 56 is distal of the handpiece and proximal of jaws 22 and 24, see Fig. 2).
Regarding claim 5, Twomey further teaches the outer shaft (14, see Fig. 1) extends from a proximal end to a distal end.
Twomey fails to expressly teach the third longitudinal location (pin 56) is located in a range between 75-95% of a distance from the proximal end to the distal end of the outer shaft.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to cause the third longitudinal location of the device of Twomey and Allen to be located in a range between 75-95% of a distance from the proximal end to the distal end of the outer shaft since it has been held that "where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device" Gardner V. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 SPQ 232 (1984). In the instant case, the device of Twomey and Allen would not operate differently with the claimed range. Further, Applicant places no criticality on the range claimed, indicating simply that the dimension "can" be within the claimed ranges (see Specification [00237]).
Regarding claim 6, Twomey further discloses the guide is configured to limit relative rotation between a distal portion of the outer shaft and a distal portion of the inner shaft (pin 56 limits relative rotation between the outer shaft 14 and inner shaft 38 when inserted into respective apertures in each, see Fig. 2-3).
Regarding claims 7 and 15, Twomey further discloses the aperture is a track that permits longitudinal motion of the inner shaft relative to the guide (slot 54 can be considered a track and permits inner shaft 38 to move relative to pin 56, see Fig. 3 and [0043]).
Regarding claim 9, Twomey further discloses the end effector includes jaws (jaws 22 and 24, see Fig. 1).
Regarding claims 10 and 17, Twomey further discloses a blade assembly (50, see Fig. 4-5) located within the inner shaft and longitudinally translatable therein (see [0055]).
Regarding claim 11, Twomey further discloses the blade assembly is rotationally constrained to the inner shaft at a fourth longitudinal location proximal of the first longitudinal location (pin 78, see Fig. 5, is proximal of pin 34 and provides a rotational constraint between the blade assembly 50 and inner shaft 38 when inserted into each, see Fig. 3-4), and wherein the blade assembly is rotationally constrained to the inner shaft at the third longitudinal location (the blade assembly is rotationally constrained to the inner shaft at pin 56 since the pin extend through both the inner shaft and the blade assembly, see Fig. 3-4).
Regarding claims 12 and 18, Twomey further discloses the guide comprises a shaft pin, wherein the blade assembly includes a blade track (57, see Fig. 4), the shaft pin extending through the blade track and configured to contact the blade track to constrain rotation of the blade assembly with respect to the shaft pin and the outer shaft (pin 56 extends through opening 57 and provides a rotational constraint between the blade assembly and the outer shaft 14 because it extends through openings in each, see Fig. 2 and 4).
Regarding claims 8, 13 and 16, Twomey further discloses the guide comprises a shaft pin (pin 56, see Fig. 2), wherein the inner shaft is engageable with the shaft pin to limit movement of the inner shaft with respect to the outer shaft (pin 56 is engaged with both the inner shaft 38 and outer shaft 14 to limit relative rotation between the two and axial translation along slot 54, see Fig. 2-3).
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 SERENITY MILLER whose telephone number is (571)272-1155. The examiner can normally be reached Monday-Friday 8:00am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Elizabeth Houston can be reached at (571)272-7134. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SERENITY A MILLER/Examiner, Art Unit 3771
/ELIZABETH HOUSTON/Supervisory Patent Examiner, Art Unit 3771
