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.
Claim 6 is 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 6 recites “the bent part is formed…to be positioned maximally adjacent to a rotation radius of the manipulation part.” It is unclear what is meant by “maximally” adjacent, and by “rotation radius.” Maximally based on what conditions? Does “rotation radius” refer to a circle or some other shape?
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.
Claim(s) 1, 2, 4, 6-7, 9 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Lee et al. [US 2020/0237466 A1, hereinafter “Lee”].
Re. claim 1, Lee discloses:
a surgical instrument [100, Fig. 2; Par. 0008] comprising:
an end tool [120] including one or more jaws [121 and 122] formed to be rotatable [Par. 0004], and an end tool jaw pitch main pulley [J12 and J13, Fig. 90, Par. 0590] formed to be rotatable around an end tool pitch rotation shaft [1323PA, Fig. 90, Par. 0591];
a manipulation part [110] configured to control a rotation of the end tool [Par. 0110];
a power transmission part [130, Fig. 3] including one or more jaw wires [“the power transmission part 130 of the instrument 100 for surgery may include a pitch wire 130P, a first jaw wire 130J1, and a second jaw wire 130J2,” Par. 0117] that are connected to the manipulation part to transmit a rotation of the manipulation part to the one or more jaws [via pitch wire, e.g.]; and
a connection part [140, including part 141] formed to extend in a first direction (an X-axis) [Par. 0008], having one end portion to which the end tool is coupled and another end portion to which the manipulation part is coupled to connect the end tool to the manipulation part [Par. 0008], and including a bent part [141] formed to be bent at least once while connecting the end tool to the manipulation part [Fig. 2], wherein the manipulation part includes
a pitch manipulation part [111] including a manipulation part pitch main pulley [1311P1a and 1311P1b, Fig. 90] formed to be rotatable around a pitch rotation shaft [1311], and configured to control a pitch motion of the end tool [Par. 0593], and
a diameter of the manipulation part pitch main pulley is greater than a diameter of the end tool jaw pitch main pulley [“the diameter of (at least a portion of) the end tool pitch pulley may be smaller than the diameter of (at least a portion of) the manipulation part pitch pulley,” Par. 0597; and Figs. 90-91].
Re. claim 2, Lee discloses: the bent part is bent on a plane perpendicular to the pitch rotation shaft [1311] of the pitch manipulation part [see Fig. 90. Shaft 13111 extends into the page while the bent portion bends along the page, perpendicular to the shaft].
Re. claim 4, Lee discloses: the end tool jaw pitch main pulley is connected to the manipulation part pitch main pulley through the one or more jaw wires [Fig. 90], and a rotation angle of the end tool jaw pitch main pulley when the at least one or more jaw wires move is greater than a rotation angle of the manipulation part pitch main pulley when the at least one or more jaw wires move [Par. 0601].
Re. claim 6, as best understood, Lee discloses: The surgical instrument of claim 5, wherein the bent part is formed not to make contact with the manipulation part [the bent part is not shown making contact with the manipulation part] but to be positioned maximally adjacent to a rotation radius of the manipulation part, when the manipulation part is controlled to pitch-rotate the end tool at a maximum rotation angle [given the conditions, the bent part is maximally adjacent a circle with radius of the rotation radius of the manipulation part].
Re. claim 7, Lee discloses: The surgical instrument of claim 1, wherein the end tool further includes an end tool hub [123a, Figs. 4-6] formed to internally accommodate at least some of the one or more jaws, and an end tool pitch pulley [1323J21 and 1323J11, Fig. 90] formed on an end portion of the end tool hub at a proximal end side [Figs. 4-5], the power transmission part further includes a pitch wire [130J1/2, Fig. 6A/C; 13330J1/2, Fig. 91; Par. 0141] coupled to the end tool pitch pulley to rotate the end tool pitch pulley [Figs. 6A/C, Fig. 91], the manipulation part further includes a manipulation part pitch wire pulley [1311S1/2] around which the pitch wire is wound [Fig. 91], and a diameter of the manipulation part pitch wire pulley is greater than a diameter of the end tool pitch pulley [Par. 0592; Fig. 90 clearly shows the manipulation part pitch wire pulley being larger in diameter than the end tool pitch pulley].
Re. claim 9, Lee discloses: The surgical instrument of claim 7, wherein the end tool pitch pulley is connected to the manipulation part pitch wire pulley through the pitch wire [Fig. 91], and a rotation angle of the end tool pitch pulley when the pitch wire moves is greater than a rotation angle of the manipulation part pitch wire pulley when the pitch wire moves [because of the comparative sizes, this is true. See Par. 0601].
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.
Claims 3, 5, 8, 10 is/are rejected under 35 U.S.C. 103 as being obvious over Lee.
Re. claim 3, Lee discloses: The surgical instrument of claim 1, wherein a ratio of the diameter of the end tool jaw pitch main pulley to the diameter of the manipulation part pitch main pulley ranges from 1:1.5 to 1:4.5 [Par. 0599]. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Thus, given the teachings of Lee, forming the ratio of the diameter of the end tool jaw pitch main pulley to the diameter of the manipulation part pitch main pulley to range from 1:3.5 to 1:4.5 would have been obvious because this claimed range lies inside the range of the prior art.
Re. claim 5, Lee discloses: The surgical instrument of claim 4, wherein a ratio of the rotation angle of the manipulation part pitch main pulley to the rotation angle of the end tool jaw pitch main pulley ranges from 1:1.5 to 1:4.5 [Par. 0601-602]. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Thus, given the teachings of Lee, forming the ratio of the rotation angle of the manipulation part pitch main pulley to the rotation angle of the end tool jaw pitch main pulley to range from 1:3.5 to 1:4.5 would have been obvious because this claimed range lies inside the range of the prior art.
Re. claim 8, Lee discloses: The surgical instrument of claim 7, wherein a ratio of the diameter of the end tool pitch pulley to the diameter of the manipulation part pitch wire pulley ranges from 1:1.5 to 1:4.5 [Par. 0599]. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Thus, given the teachings of Lee, forming the ratio of the diameter of the end tool pitch pulley to the diameter of the manipulation part pitch wire pulley to range from 1:3.5 to 1:4.5 would have been obvious because this claimed range lies inside the range of the prior art.
Re. claim 10, Lee discloses: The surgical instrument of claim 9, wherein a ratio of the rotation angle of the manipulation part pitch wire pulley to the rotation angle of the end tool pitch pulley ranges from 1:1.5 to 1:4.5 [Par. 0601-602]. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Thus, given the teachings of Lee, forming the ratio of the rotation angle of the manipulation part pitch wire pulley to the rotation angle of the end tool pitch pulley to range from 1:3.5 to 1:4.5 would have been obvious because this claimed range lies inside the range of the prior art.
Claims 11-16 is/are rejected under 35 U.S.C. 103 as being obvious over Lee in view of Walen [US 2017/0027597 A1].
Re. claim 11, Lee discloses:
a surgical instrument [100, Fig. 2; Par. 0008] comprising:
an end tool [120] including one or more jaws [121 and 122] formed to be rotatable [Par. 0004],
a manipulation part [110] including a pitch manipulation part [111] configured to control a pitch motion of the end tool[Par. 0593] and a rotation of the end tool [Par. 0110];
a power transmission part [130, Fig. 3] including one or more jaw wires [“the power transmission part 130 of the instrument 100 for surgery may include a pitch wire 130P, a first jaw wire 130J1, and a second jaw wire 130J2,” Par. 0117] that are connected to the manipulation part to transmit a rotation of the manipulation part to the one or more jaws [via pitch wire, e.g.]; and
a connection part [140, including part 141] formed to extend in a first direction (an X-axis) [Par. 0008], having one end portion to which the end tool is coupled and another end portion to which the manipulation part is coupled to connect the end tool to the manipulation part [Par. 0008], and including a bent part [141] formed to be bent at least once while connecting the end tool to the manipulation part [Fig. 2],
However, Walen teaches, in a surgical instrument with an end tool and a connection part in a first (x) direction: in a state in which the end tool is parallel to the first direction, the manipulation part is in a pitch-rotated state at a predetermined rotation angle with respect to the first direction [“In some versions of the invention, owing to the design of the links, the dimensions of the steering cables or other design feature, a tool of this invention may be constructed so that when the steering unit is in the neutral position, the working member is centered on an axis that is angled relative to the longitudinal axis of the shaft. Upon the actuation of the steering unit, the cables may be tensioned and slacked to at least one of bend the working member back towards the shaft longitudinal axis or bend the working member is oriented along an axis that is angled further away from the longitudinal axis of the shaft,” Par. 0288]. It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the apparatus of Lee by configuring the tension of the wires of the device so that , in a state in which the end tool is parallel to the first direction, the manipulation part is in a pitch-rotated state at a predetermined rotation angle with respect to the first direction, as taught by Walen, because this allows the default configuration to be altered so that it may be customized to a specific task.
Re. claim 12, the combined Lee-Whalen reasonably conveys to one of ordinary skill the ability to adjust the tension on the wires so that in a neutral state in which the manipulation part is parallel to the first direction, the end tool is in a pitch-rotated state at a maximum rotation angle with respect to the first direction because this amounts to optimizing the tension which is a result-effective variable [see Walen Par. 0288]. Given the above teachings, one of ordinary skill would reasonably be expected, through routine experimentation, to arrive at a default angle of any one pitch angle in the range of motion of the tool.
Re. claim 13, the modified Lee teaches the apparatus as set forth with respect to claim 7 above.
Re. claim 14, the modified Lee teaches the apparatus as set forth with respect to claim 8 above.
Re. claim 15, the modified Lee teaches the apparatus as set forth with respect to claim 9 above.
Re. claim 16, the modified Lee teaches the apparatus as set forth with respect to claim 10 above.
Conclusion
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/ERIN MCGRATH/ Primary Examiner, Art Unit 3771
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