DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after allowance or after an Office action under Ex Parte Quayle, 25 USPQ 74, 453 O.G. 213 (Comm'r Pat. 1935). Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, prosecution in this application has been reopened pursuant to 37 CFR 1.114. Applicant's submission filed on 07 July 2026 has been entered.
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.
Claims 30-34 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.
Claim 30 recites the limitation "the ultrasonic generator" in lines 8-9. There is insufficient antecedent basis for this limitation in the claim.
Claims 31-34 are rejected by virtue of their dependency upon an indefinite base claim.
Allowable Subject Matter
Claims 25-29 and 35-39 are allowed. Pursuant to the amendments agreed upon for Examiner’s Amendment on 27 March 2026.
Claims 30-34 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
The following is a statement of reasons for the indication of allowable subject matter: The closest prior art, Yates et al. (US 2016/0058492) and Giordano et al. (US 20100036405), fails to reasonably teach or suggest determine a location of tissue positioned within the end effector according to a difference between the plateau values of the ultrasonic transducer relative to a threshold when considered in combination with the additional requirements of the claims. Yates and Giordano both teach ultrasonic instruments having end effectors having blades, as well as comparison of ultrasonic impedance during varying levels of power to thresholds. However, the prior art of record is silent with regard to comparing ultrasonic impedances to a threshold in order to determine a location of tissue positioned within the end effector.
Additionally, despite the recitations of mathematical calculation and the abstract ideas of evaluation and judgement, the examiner contends that the claims are patent eligible because the mathematical concepts and mental processes are integrated into a practical application since they are judicial exceptions applied by use of a particular machine. The claims require an ultrasonic surgical instrument having an ultrasonic blade and an ultrasonic transducer impedance measurement circuit configured to collect measurements in a specific manner, in order to permit the claimed method to be performed, therefore the machine “play(s) a significant part in permitting the claimed method to be performed, rather than function(ing) solely as an obvious mechanism for permitting a solution to be achieved more quickly” and therefore provides significantly more than a judicial exception, See, e.g., Versata Development Group v. SAP America, 793 F.3d 1306, 1335, 115 USPQ2d 1681, 1702 (Fed. Cir. 2015) and MPEP 2106.05(b)(II). Additionally, the judicial exception pertains to an improvement in the technology since the claim reflects a technological solution, using first and second ultrasonic impedance measurements that attain a plateau value, to a technological problem, determining where tissue is positioned when tissue is positioned within the end effector (see Specification [0531]). This is indicative of integration into a practical application of a judicial exception under the “Improvements” consideration, see MPEP 2106.05(a).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SEAN W COLLINS whose telephone number is (408)918-7607. The examiner can normally be reached M-F 9:00 AM-5:00 PM ET.
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/SEAN W COLLINS/Primary Examiner, Art Unit 3794
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