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
As of the reply filed 7/17/2026, claims 1-11 are pending. Claims 1-2 and 9-10 have been amended, and claim 11 is new.
Response to Arguments
Applicant’s amendments to claims 2 and 9-10 have obviated most of the previously filed claim objections, therefore these objections are withdrawn. However, one objection to claim 10 was not addressed, and is maintained further below.
Applicant’s arguments regarding the previously filed rejections under 35 U.S.C. 102(a)(1) have been fully considered, but they are not persuasive.
Applicant’s argument that “there is no first electric contact in Sanai that would necessarily be disposed on an inner circumferential surface of the groove portion as claimed, the groove portion necessarily being on a housing entirely within a handle” (see Remarks page 8), the Examiner respectfully disagrees.
By reinterpreting the housing as claimed to be the internal structures/components of Sanai et al. (see annotated Fig. 6 below), the housing is entirely housed within the handle (2), and is not exposed to an outside of the treatment instrument.
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Additionally, the Examiner argues that the groove portion (stepped distal end of 3 with contacts) is radially recessed toward a distal end side since its diameter decreases in a distal direction. Applicant argues that “the alleged groove portion… is not recessed from the proximal end of 21 toward the distal end side” but the Examiner disagrees. By interpreting the entire circled inner structure above as the housing, the stepped groove portion is recessed in a distal direction, with the constant-diameter righthand side of the housing as circled being the proximal end portion of the housing.
Claim Objections
Claim 10 is objected to because of the following informalities:
Claim 10, line 5: the line “by applying the vibration to both a biological tissue;” is not a complete phrase, as the line recites “both” yet only recites the biological tissue. It is recommended that “both” be removed.
Appropriate correction is required.
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 1-11 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.
Independent claims 1, 9, and 10 each recite “a housing entirely housed within the handle”, and claim 10 further recites “wherein the housing is not exposed to an outside of the treatment device”. The Applicant points to Fig. 2 and generally to the present specification as support for this limitation, but the Examiner argues that there is insufficient support for this language in the present disclosure. Fig. 3 shows “a state in which the generator and a coupler according to the first embodiment are detached from one another” (see brief description of drawings), since the present device is contemplated to be modular, and further shows the housing (32) being detached from the handle and exposed to an outside of the treatment device. The present specification does not provide explicit support for the language used in these claims, and Fig. 2 only shows the housing (32) being internally housed within the handle (4) and the connector (5), not within the handle unit alone.
The dependent claims inherit the deficiencies of the independent claims they depend upon and are also rejected.
Claim Rejections - 35 USC § 102
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 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sanai et al. (US PGPub 2015/0051516 A1).
With respect to claim 1, Sanai et al. discloses a treatment instrument (1 in Fig. 1) having a vibration generating device (PP [0007]: “a transducer unit 3 which generates ultrasonic vibrations”) and a handle (2) for operation, the vibration generating device (1) comprising:
a housing (interior structure of 3 within 21, see also Figs. 5-6) entirely housed within the handle (2, see Fig. 5);
a generator including a transducer (3, PP [0007]: “a transducer unit 3 which generates ultrasonic vibrations”) disposed within the housing (interior structure of 3 within 21) and a first electric contact (29a) disposed on the housing (interior structure of 3 within 21, see Fig. 6 where 29a is disposed on a distal stepped structure on the housing), the transducer (3) configured to generate vibration by using electric energy (see power cable 13), the first electric contact (29a) being rotatable about a predetermined rotational axis (see Fig. 6, 3 including 29a is rotatable);
a first electric path (path from switch 11 Figs. 5-7, Fig. 7 shows a graphic which highlights the various electrical paths between components) configured to convey an ultrasonic signal via the first electric contact (29a) to the transducer (3, PP [0075]: “In the transmission path of the high-frequency signal, the cylindrical contact-point member 27a, like the above-described cylindrical contact-point member 29a, is connected via internal wiring to the horn section 22, or connected to the electrical conduction part 40 which is electrically connected to the horn section 22”, switch 11 connects to 31 and 29b to convey the signal to 29a); and
a second electric path (path from switch 12 in Fig. 7, PP [0044]: “In each of the switches 11 and 12, a trigger signal is sent to a power unit or controller side by an ON operation by depression. By this trigger signal, power for driving the ultrasonic vibration element and a high-frequency signal from the power unit 31 are output, respectively, and are applied to the treatment section 16”) configured to convey a high frequency signal via the first electric contact (29a) to the transducer (3, switch 12 controls a high frequency signal to the transducer 3); wherein
the housing (interior structure of 3 within 21) of the generator (3) includes a groove portion (see stepped groove portion including contacts 24a, 26a, 27a, and 29a), the groove portion (stepped distal end of 3 with contacts) is recessed toward a distal end side in the proximal end portion of the housing (outer shell of 3 including 21, the stepped portion of 3 is recessed as the diameter decreases distally),
the first electric contact (29a) is disposed on an inner circumferential surface of the groove portion (PP [0074]: “cylindrical contact-point members 24a, 26a, 27a and 29a are disposed stepwise in a manner to narrow from the outer peripheral side to the inner side”, see Figs. 5-6), and
when a connector (proximal righthand portion of 2 including matching stepwise receiving portion in Figs. 5-6) rotatable about the predetermined rotational axis with respect to the housing (outer shell of 3 including 21) of the generator (3) and including a second electric contact (29b) rotates about the predetermined rotational axis with respect to the first electric contact (29a) in a state where the connector (proximal righthand portion of 2 including matching stepwise receiving portion) engages with the groove portion (PP [0074]: “cylindrical contact-point members 24a, 26a, 27a and 29a are disposed stepwise in a manner to narrow from the outer peripheral side to the inner side”), an electric connection of the second electric contact (29b) to the first electric contact (29a) is maintained (the contact points are cylindrical and extend along the perimeter of the steps, rotation of 3 relative to 2 maintains contact, PP [0084]: “the cylindrical contact-point members on the transducer unit 3”).
Regarding claim 2, Sanai et al. further discloses wherein the electrical contact between the first electric contact (29a in Fig. 6) and the transducer (3) is maintained during a rotation along a rotational axis with respect to the housing (interior structure of 3 within 21) of the generator including the transducer (3, the contact points are cylindrical and extend along the perimeter of the steps, rotation of 3 relative to 2 maintains contact, PP [0084]: “the cylindrical contact-point members on the transducer unit 3”).
Regarding claim 3, Sanai et al. further discloses a rod member (4 in Figs. 5-6) connected to the transducer (3, 4 connects to 3 in Fig. 5) and configured to form a path for conveying an ultrasonic vibration and a high frequency current (PP [0038]: “A rear end side of the probe 4 is coupled to a horn section 22 of the transducer unit 3 within the handle unit 2, and is provided such that ultrasonic vibrations and a high-frequency signal (to be described later) are transmitted”).
Regarding claim 4, Sanai et al. further discloses wherein a third electric contact (18a in Figs. 5-6) that forms a third electric path (path via 30, see also Fig. 7, PP [0076]: “the cylindrical contact-point member 29a penetrates an insulative internal part of the transducer unit 3, and a contact terminal 30 is provided in a manner to project to the inner wall surface of the hole in which the horn section 22 is disposed”) is disposed in the handle (2), and the third electric contact (18a) does not rotate in accordance with the rotation of the transducer (3, PP [0077]: “This contact terminal 30 is put in contact with, and is electrically connected to, the cylindrical contact-point member 18a of the moving member 18. As regards the cylindrical contact-point member 29a and contact terminal 30, like the above-described first embodiment, when the jaw 15 is in the open state, the cylindrical contact-point member 18a advances in the longitudinal direction by the movement of the cylindrical contact-point member 18a, and the cylindrical contact-point member 18a and contact terminal 30 are separated”, 18a translates longitudinally).
Regarding claim 5, Sanai et al. further discloses a connector (proximal righthand portion of 2 including matching stepwise receiving portion in Figs. 5-6) rotatable about a predetermined rotational axis with respect to the housing (interior structure of 3 within 21) of the generator (3), wherein the connector (proximal righthand portion of 2 including matching stepwise receiving portion) includes a further electric contact (29b) disposed on an external surface of the connector (29b is located on an external surface since it is exposed to the exterior of the device when 3 is not attached, see Fig. 6), and
an electric connection is established between an operating member (11 and 12) of the handle (2) and at least one of the first electric path (path from switch 11 Figs. 5-7, Fig. 7 shows a graphic which highlights the various electrical paths between components) and the second electric path (path from switch 12 in Fig. 7) by electrically connecting the further electric contact (29b) to a third electric contact (18a, 29b connects via 29a and 30, the paths are completed when 3 is inserted into 2) disposed in the handle (2).
Regarding claim 6, Sanai et al. further discloses a connector (proximal righthand portion of 2 including matching stepwise receiving portion in Figs. 5-6) rotatable about a predetermined rotational axis with respect to the housing (interior structure of 3 within 21) of the generator (3), wherein the connector (proximal righthand portion of 2 including matching stepwise receiving portion) includes a conductive member (unmarked wires in Fig. 6) electrically connected to the second electric contact (29b) and forming a part of a power supply path through which the electric energy to be supplied to the generator (3) is transmitted (see Fig. 7, the energy is transmitted along this power supply path).
Regarding claim 7, Sanai et al. further discloses a cable (13 in Figs. 6-7) extending from the connector (proximal righthand portion of 2 including matching stepwise receiving portion) and having at least one of the first electric path (path from switch 11 Figs. 5-7, Fig. 7 shows a graphic which highlights the various electrical paths between components) and the second electric path (path from switch 12 in Fig. 7) and the power supply path (see Fig. 7) extended within the cable (13, see power unit 31 in Fig. 7 which supplies power through cable 13 to the various supply paths).
Regarding claim 8, Sanai et al. further discloses a connector (proximal righthand portion of 2 including matching stepwise receiving portion in Figs. 5-6) rotatable about a predetermined rotatable axis with respect to the housing (interior structure of 3 within 21) of the generator (3), wherein the connector (proximal righthand portion of 2 including matching stepwise receiving portion) includes an attachment (9) to be engaged with the handle (2), and the connector (proximal righthand portion of 2 including matching stepwise receiving portion) is attached to the handle (2) by engaging the attachment (9) with the handle (2, the gripping portion 8 of handle 2 is attached to the proximal portion of 2 via fulcrum attachment 9).
With respect to claim 9, Sanai et al. discloses a treatment instrument (1 in Fig. 1) comprising:
a handle unit (2) having a handle (8) for operation;
a rod member (4) supported by the handle (8) and transmitting vibration on a longitudinal axis (PP [0038]: “A rear end side of the probe 4 is coupled to a horn section 22 of the transducer unit 3 within the handle unit 2, and is provided such that ultrasonic vibrations and a high-frequency signal (to be described later) are transmitted”);
a treatment unit (16 in Fig. 2) disposed at a distal end of the rod member (4) and performing treatment by applying the vibration to a biological tissue (PP [0038]: “In the state in which the jaw 15 is closed, a high-frequency signal is transmitted from the probe distal end portion 4a to the jaw 15. Specifically, when the treatment target part is clamped by the treatment section 16, desired treatment is performed by applying the ultrasonic vibrations or high-frequency signal”); and
a vibration generating device (3) configured to be attached to the handle unit (2),
a first electric path (path from switch 11 Figs. 5-7, Fig. 7 shows a graphic which highlights the various electrical paths between components) configured to convey an ultrasonic signal via a first electric contact (29a) to the transducer (3, PP [0075]: “In the transmission path of the high-frequency signal, the cylindrical contact-point member 27a, like the above-described cylindrical contact-point member 29a, is connected via internal wiring to the horn section 22, or connected to the electrical conduction part 40 which is electrically connected to the horn section 22”, switch 11 connects to 31 and 29b to convey the signal to 29a);
a second electric path (path from switch 12 in Fig. 7, PP [0044]: “In each of the switches 11 and 12, a trigger signal is sent to a power unit or controller side by an ON operation by depression. By this trigger signal, power for driving the ultrasonic vibration element and a high-frequency signal from the power unit 31 are output, respectively, and are applied to the treatment section 16”) configured to convey a high frequency signal via the first electric contact (29a) to the transducer (3, switch 12 controls a high frequency signal to the transducer 3), wherein
the vibration generating device (3) includes
a housing (interior structure of 3 within 21) entirely housed within the handle (2),
a generator including a transducer (3, PP [0007]: “a transducer unit 3 which generates ultrasonic vibrations”) disposed within the housing (interior structure of 3 within 21)- and a first electric contact (29a) disposed on the housing (interior structure of 3 within 21), the transducer (3) being configured to generate vibration by using electric energy, the first electric contact (29a) being rotatable about a predetermined rotational axis,
the housing (outer shell of 3 including 21) of the generator (3) includes a groove portion (see stepped groove portion including contacts 24a, 26a, 27a, and 29a), the groove portion (stepped distal end of 3 with contacts) is recessed toward a distal end side in the proximal end portion of the housing (interior structure of 3 within 21, the stepped portion of 3 is recessed as the diameter decreases distally),
the first electric contact (29a) is disposed on an inner circumferential surface of the groove portion (PP [0074]: “cylindrical contact-point members 24a, 26a, 27a and 29a are disposed stepwise in a manner to narrow from the outer peripheral side to the inner side”, see Figs. 5-6), and
when a connector (proximal righthand portion of 2 including matching stepwise receiving portion in Figs. 5-6) rotatable about the predetermined rotational axis with respect to the housing (interior structure of 3 within 21) of the generator (3) and including a second electric contact (29b) rotates about the predetermined rotational axis with respect to the first electric contact (29a) in a state where the connector (proximal righthand portion of 2 including matching stepwise receiving portion) engages with the groove portion (PP [0074]: “cylindrical contact-point members 24a, 26a, 27a and 29a are disposed stepwise in a manner to narrow from the outer peripheral side to the inner side”), an electric connection of the second electric contact (29b) to the first electric contact (29a) is maintained (the contact points are cylindrical and extend along the perimeter of the steps, rotation of 3 relative to 2 maintains contact, PP [0084]: “the cylindrical contact-point members on the transducer unit 3”).
With respect to claim 10, Sanai et al. discloses a treatment system comprising:
a treatment instrument (1 in Fig. 1) including a handle unit (2), the handle unit including a handle (body of 2 including 8) for operation, a rod member (4) supported by the handle (body of 2 including 8) and transmitting vibration on a longitudinal axis (PP [0038]: “A rear end side of the probe 4 is coupled to a horn section 22 of the transducer unit 3 within the handle unit 2, and is provided such that ultrasonic vibrations and a high-frequency signal (to be described later) are transmitted”), and a treatment unit (16 in Fig. 2) disposed at a distal end of the rod member (4) and performing treatment by applying the vibration to both a biological tissue;
a cable (13 in Figs. 5-6) having one end connected to a vibration generating device (PP [0053]: “the contact terminals 24b, 27b, 26b are connected to the power cable 13 via internal wiring”, 13 connects to 3 via the terminals);
a power supply device (31 in Fig. 7) connected to an opposed end of the one end of the cable (13),
a first electric path (path from switch 11 Figs. 5-7, Fig. 7 shows a graphic which highlights the various electrical paths between components) configured to convey an ultrasonic signal via the first electric contact (29a) to the transducer (3, PP [0075]: “In the transmission path of the high-frequency signal, the cylindrical contact-point member 27a, like the above-described cylindrical contact-point member 29a, is connected via internal wiring to the horn section 22, or connected to the electrical conduction paart 40 which is electrically connected to the horn section 22”, switch 11 connects to 31 and 29b to convey the signal to 29a); and
a second electric path (path from switch 12 in Fig. 7, PP [0044]: “In each of the switches 11 and 12, a trigger signal is sent to a power unit or controller side by an ON operation by depression. By this trigger signal, power for driving the ultrasonic vibration element and a high-frequency signal from the power unit 31 are output, respectively, and are applied to the treatment section 16”) configured to convey a high frequency signal via the first electric contact (29a) to the transducer (3, switch 12 controls a high frequency signal to the transducer 3), wherein
the vibration generating device (3) includes
a housing (interior structure of 3 within 21) entirely housed within a handle (2), wherein the housing (interior structure of 3 within 21) is not exposed to an outside of the treatment instrument (see Fig. 6),
a generator including a transducer (3, PP [0007]: “a transducer unit 3 which generates ultrasonic vibrations”) disposed within the housing (outer shell of 3 including 21)- and a first electric contact (29a) disposed on the housing (outer shell of 3 including 21), the transducer (3) being configured to generate vibration by using electric energy, the first electric contact (29a) being rotatable about a predetermined rotational axis,
the housing (outer shell of 3 including 21) of the generator (3) includes a groove portion (see stepped groove portion including contacts 24a, 26a, 27a, and 29a), the groove portion (stepped distal end of 3 with contacts) is recessed toward a distal end side in the proximal end portion of the housing (interior structure of 3 within 21, the stepped portion of 3 is recessed as the diameter decreases distally),
the first electric contact (29a) is disposed on an inner circumferential surface of the groove portion (PP [0074]: “cylindrical contact-point members 24a, 26a, 27a and 29a are disposed stepwise in a manner to narrow from the outer peripheral side to the inner side”, see Figs. 5-6), and
when a connector (proximal righthand portion of 2 including matching stepwise receiving portion in Figs. 5-6) rotatable about the predetermined rotational axis with respect to the housing (outer shell of 3 including 21) of the generator (3) and including a second electric contact (29b) rotates about the predetermined rotational axis with respect to the first electric contact (29a) in a state where the connector (proximal righthand portion of 2 including matching stepwise receiving portion) engages with the groove portion (PP [0074]: “cylindrical contact-point members 24a, 26a, 27a and 29a are disposed stepwise in a manner to narrow from the outer peripheral side to the inner side”), an electric connection of the second electric contact (29b) to the first electric contact (29a) is maintained (the contact points are cylindrical and extend along the perimeter of the steps, rotation of 3 relative to 2 maintains contact, PP [0084]: “the cylindrical contact-point members on the transducer unit 3”).
Regarding claim 11, Sanai et al. further discloses wherein the first electric contact (29a in Figs. 5-6) extends over an entire circumference of the inner circumferential surface of the groove portion (stepped distal end of 3 with contacts in Fig. 6) about the predetermined rotational axis (PP [0074]: “cylindrical contact-point members 24a, 26a, 27a and 29a are disposed stepwise in a manner to narrow from the outer peripheral side to the inner side”, see Fig. 5, the contact members are cylindrical and extend around the entire circumference of the stepped groove portion).
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 Bridget E. Rabaglia whose telephone number is (571)272-2908. The examiner can normally be reached Monday - Thursday, 7am - 5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jackie Ho can be reached at (571) 272-4696. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BRIDGET E. RABAGLIA/Examiner, Art Unit 3771
/MOHAMED G GABR/Primary Examiner, Art Unit 3771
