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 .
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.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Section 33(a) of the America Invents Act reads as follows:
Notwithstanding any other provision of law, no patent may issue on a claim directed to or encompassing a human organism.
Claims 11-18 are rejected under 35 U.S.C. 101 and section 33(a) of the America Invents Act as being directed to or encompassing a human organism. See also Animals - Patentability, 1077 Off. Gaz. Pat. Office 24 (April 21, 1987) (indicating that human organisms are excluded from the scope of patentable subject matter under 35 U.S.C. 101). In the instant case, claim 11 requires “one or more cameras with a field of view that includes at least a portion of the end effector and a target tissue including a torn meniscus” which encompasses a human organism. For purposes of examination, this will be treating as the one or more cameras being configured to have a field of view that includes at least a portion of the end effector and a target tissue including a torn meniscus.
Claims 12-18 are rejected as encompassing a human organism since they incorporate the limitations of claim 11 through their dependency.
Claim Rejections - 35 USC § 102
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 1-2, 8, 11-13 and 17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Schmitz et al. (US 2017/0095264).
Regarding claim 1, Schmitz discloses an arthroscopic instrument (see use with arthroscopes, [0076], Figs. 33-36) comprising: an elongate shaft extending along a longitudinal axis (see channeled shaft of endoscope 700, Fig. 33) ; at least one of a hub or a handpiece coupled to the elongate shaft (see handpiece of the endoscope coupled to the shaft of the endoscope, Fig. 35); an end effector coupled to a distal end of the elongate shaft and having a moveable jaw component (see power shear 702 at least indirectly coupled with the distal end of the elongate shaft that is movable in multiple directions; [0076], Fig. 33); and one or more cameras coupled to the elongate shaft and positioned adjacent the end effector (see camera 710 coupled to the elongate shaft and positioned adjacent the end effector, [0076], Fig. 33).
Regarding claim 2, Schmitz discloses wherein the moveable jaw component includes an electrode at a distal end portion thereof (see electrode 514, [0060], [0076], Figs. 11-12).
Regarding claim 8, Schmitz discloses wherein the shaft includes one or more ports configured for inflow or outflow of a fluid proximal of the end effector (see irrigation port 706 and suction port 708; [0076], Fig. 33).
Regarding claims 11-13 and 17, the claims are rejected under the same citations and rationale as that applied to the rejections of claims 1, 2, and 8 above.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 3 and 4 are rejected under 35 U.S.C. 103 as being unpatentable over Schmitz in view of Woloszko et al. (US 6,896,674).
Regarding claim 3, Schmitz discloses the limitations of claim 1, however fails to further disclose an electrode coupled to a suction tube of the end effector.
Woloszko teaches an arthroscopic device (see Figs. 42A-42B) comprising a suction lumen comprising a digestion electrode (see electrode 1450 coupled to the suction lumen 1442, Fig. 42A). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the suction tube as disclosed by Schmitz to comprise an electrode coupled to the suction tube in light of Woloszko, the motivation being to provide the additional advantage of rapidly breaking down any tissue fragments that are drawn in to the lumen, ensuring the lumen remains free from blockage (see Woloszko col 45, lines 9-16).
Regarding claim 4, Schmitz further discloses wherein the suction tube is configured to be moveable proximal-distal along the end effector including being configured to be moveable to a position at or distal of a distal tip of the end effector (see the irrigation and suction being movable proximal-distal through at least proximal-distal movement of the endoscope to a position at or distal of a distal tip of the end effector dependent upon how the end effector was articulated, [0076], Fig. 33).
Claims 5-7, 9-10, 14-16 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Schmitz in view of Tojo et al. (US 2019/0328471).
Regarding claim 5, Schmitz discloses the limitations of claim 1, however Schimtz fails to further disclose wherein the one or more cameras are part of a visualization assembly that is configured to be moveable from a first position that has a first field of view including at least a portion of the end effector to a second position with a second field of view that differs from the first field of view.
Tojo teaches an instrument having an end effector and camera arrangement (see Figs. 7-9), wherein the camera is part of a visualization assembly that is configured to be moveable from a first position that has a first field of view including at least a portion of the end effector to a second position with a second field of view that differs from the first field of view (see Figs. 8A-9). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the camera as disclosed by Schmitz to be part of a visualization assembly that is configured to be moveable from a first position that has a first field of view including at least a portion of the end effector to a second position with a second field of view that differs from the first field of view in light of Tojo, the motivation being to provide the additional advantage of ensuring an adequate view of both the surgical site and surgical instrument (see Tojo [0072]-[0073] and [0090]).
Regarding claim 6, Schmitz in view of Tojo further teaches wherein the visualization assembly is at least one of rotatable relative to the end effector or extendible and retractable relative to the end effector (see Tojo: see joints 27 and 261 providing twisting/rotation, [0043]-[0044] Fig. 7, and extension/retraction in Figs. 8A-9).
Regarding claim 7, Schmitz in view of Tojo further teaches wherein the visualization assembly includes a light source (see Schmitz: illumination 712, Fig. 33 and Tojo: light guide in [0051]).
Regarding claim 9, Schmitz in view of Tojo further teaches wherein the one or more cameras and the end effector are angled relative to the longitudinal axis of the elongate shaft (see Tojo: Figs. 8C-9).
Regarding claim 10, Schmitz in view of Tojo further teaches an articular joint connecting the one or more cameras and the end effector to the elongate shaft, wherein the articular joint is configured to move the one or more cameras and the end effector relative to the longitudinal axis (Tojo: see at least wrist 27, [0044], Fig. 7).
Regarding claims 14-16 and 18, Schmitz in view of Tojo teaches the limitations of these claims under the same citations and rationale as that applied in the rejections of claims 5-7 and 9-10 above).
Claims 19 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Germain et al. (US 2017/0290602) in view of Murdeshwar et al. (US 2024/0016483).
Regarding claim 19, Germain discloses a method for performing arthroscopic meniscectomy (see [0043], Fig. 8) comprising: accessing a joint of a patient (as shown in Fig. 8); passing an arthroscopic instrument into the joint to a torn meniscus of the joint (as shown in Fig. 8); visualizing at least a portion of an end effector of the arthroscopic instrument with one or more cameras (see [0043]); and treating the meniscus with the end effector (see [0043]). However, Germain fails to further disclose the one or more cameras being coupled to the arthroscopic instrument adjacent the end effector.
Murdeshwar teaches a surgical instrument having jaws (see Fig. 5A-6B) comprising a camera lens coupled to the device adjacent the end effector to visualize the end effector (see [0075]-[0077], Figs. 5A-6B). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the endoscope camera as disclosed by Germain to be incorporated into the same device such that the one or more cameras are coupled to the arthroscopic instrument adjacent the end effector in light of Murdeshwar, the motivation being to provide the predictable advantage of reducing the number of incisions to introduce the instruments into the joint while still having all the implements and functionality necessary to accomplish the procedure (see also Murdeshwar [0045]-[0047]).
Regarding claim 20, Germain further teaches wherein treating the meniscus with the end effector includes mechanically cutting the meniscus with actuation of a moveable jaw component, wherein treating the meniscus with the end effector includes providing radiofrequency energy to the meniscus, and wherein the treating the meniscus with the radiofrequency energy includes moving a position of an electrode with respect to a stationary portion of the end effector (see shearing that occurs as the electrode 415 passes the edge 445 of the lower jaw 412 and cutting current applied, [0044]).
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joanne Rodden can be reached at 303-297-4276. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SEAN W COLLINS/Primary Examiner, Art Unit 3794
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