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 § 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 1-10 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 1 recites the limitation “the conductive tissue treating surface” in lines 5-6. It is unclear whether this limitation is referring to the first conductive tissue treating surface recited previously in line 3, the second conductive tissue treating surface recited previously in line 4, or a different conductive tissue treating surface.
Claims 2-10 are rejected as being dependent upon a rejected base claim.
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- is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Batchelor et al., (US 20240081892; hereinafter Batchelor).
Regarding claim 1, Batchelor (Figure 1) discloses a method of manufacturing a surgical tool (110), the method comprising: forming, using plasma enhanced chemical vapor deposition with a precursor material ([0150]: hexamethyldisiloxane), a coating (127) on a first conductive tissue treating surface (tissue sealing surface of one jaw) of an end effector (120) of an electrosurgical tool (110) and/or on a second conductive tissue treating surface (tissue sealing surface of another jaw) of the end effector (120) of the electrosurgical tool (110), ([0134]), the coating (127) comprising a silicone material (polydimethylsiloxane) that is effective to prevent tissue sticking to the conductive tissue treating surface (tissue sealing surface of the jaw members) during an electrosurgical procedure ([0135], [0148]-[0150]); wherein the coating (127) has a thickness between 7 and 17 nm or 220 and 300 nm ([0147]).
Regarding claim 2, Batchelor (Figure 1) further discloses wherein the precursor material used for plasma enhanced chemical vapor deposition is hexamethyldisiloxane ([0148]-[0150]).
Regarding claim 3, Batchelor (Figure 1) further discloses wherein the silicone material is a polydimethylsiloxane-like material ([0148]-[0150]).
Regarding claim 4, Batchelor (Figure 1) further discloses wherein the silicone material comprises polydimethylsiloxane ([0148]-[0150]).
Regarding claim 5, Batchelor (Figure 1) further discloses wherein the coating has a thickness of approximately 15 nm ([0147]).
Regarding claim 6, Batchelor (Figure 1) further discloses wherein the coating has a thickness between approximately 220 and 300 nm ([0147]).
Regarding claim 7, Batchelor (Figure 1) further discloses wherein the coating has a thickness between approximately 7 and 17 nm ([0147]).
Regarding claim 8, Batchelor (Figure 1) further discloses creating gaps or holes in the coating (127), ([0147]: the coating can be discontinuous, creating gaps/holes).
Regarding claim 11, Batchelor (Figure 1) discloses an end effector (120) of an electrosurgical device (110), comprising: a first jaw component (first jaw 121) having a first conductive tissue treating surface (tissue sealing surface); a second jaw component (second jaw 121) operatively coupled to the first jaw component (first jaw 121) in a hinged configuration as shown in Fig. 1, the second jaw component (second jaw 121) having a second conductive tissue treating surface (tissue sealing surface), ([0052]); and a coating (127) on the first conductive tissue treating surface (tissue sealing surface of first jaw 121) and the second conductive tissue treating surface (tissue sealing surface of first jaw 121), ([0134]-[0135], [0148]-[0150]), the coating (127) comprising a silicone-based material (polydimethylsiloxane) having a thickness between 7 and 17 nm or 220 and 300 nm ([0147]).
Regarding claim 12, Batchelor (Figure 1) further discloses wherein the silicone material is derived from hexamethyldisiloxane ([0148]-[0150]).
Regarding claim 13, Batchelor (Figure 1) further discloses wherein the silicone material is a polydimethylsiloxane-like material ([0148]-[0150]).
Regarding claim 14, Batchelor (Figure 1) further discloses wherein the silicone material comprises polydimethylsiloxane ([0148]-[0150]).
Regarding claim 15, Batchelor (Figure 1) further discloses wherein the coating has a thickness of approximately 15 nm ([0147]).
Regarding claim 16, Batchelor (Figure 1) further discloses wherein the coating has a thickness between approximately 7 and 17 nm ([0147]).
Regarding claim 17, Batchelor (Figure 1) further discloses wherein the coating has a thickness between approximately 220 and 300 nm ([0147]).
Regarding claim 18, Batchelor (Figures 1 and 14) further discloses wherein the first jaw component (first jaw) and the second jaw component (second jaw) have a curved shape ([0132]-[0133]).
Regarding claim 19, Batchelor (Figures 1 and 14) further discloses wherein the first jaw component (first jaw) and the second jaw component (second jaw) have a straight shape ([0128]-[0129]).
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.
Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Batchelor, as applied to claim 1 above, and further in view of Boucher et al., (US 20210007789; hereinafter Boucher).
Regarding claim 9, Batchelor (Figure 1) discloses the method of claim 1, but fails to disclose, after forming the coating, assembling the end effector using a first jaw component and a second jaw component. However, Boucher teaches a method of manufacturing a surgical tool (10), the method comprising assembling an end effector (130) using a first jaw component (310) and a second jaw component (320) after forming a non-stick coating (400), ([0049]-[0052]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the known base method disclosed by Batchelor with the known method taught by Boucher (assembling the end effector using a first jaw component and a second jaw component after forming the coating) since the known methods of Batchelor and Boucher achieve the same result of providing an end effector for the surgical tool. Therefore, the combined method including the teachings of Batchelor and Boucher, as mentioned above, would yield the same predictable result of providing an end effector for the surgical tool, and it has been held that combining known methods which yield the same predictable result is obvious to one of ordinary skill in the art. MPEP2143.I.A.
Claim(s) 10 and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Batchelor, as applied to claims 1 and 11 above, and further in view of Goble et al., (US 20030139741; hereinafter Goble).
Regarding claim 10, Batchelor discloses the method of claim 1, but fails to disclose wherein the surgical tool is configured to deliver approximately 20 to 210 joules of energy to the tissue. However, Goble teaches a surgical tool which is configured to deliver approximately 20 to 210 joules of energy to the tissue for sealing ([0025]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Batchelor to include the surgical tool configured to deliver approximately 20 to 210 joules of energy to the tissue, as taught by Goble, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. MPEP 2144.05(I).
Regarding claim 20, Batchelor discloses the end effector of claim 11, but fails to disclose wherein the end effector is configured to deliver approximately 20 to 210 joules of energy to tissue. However, Goble teaches a surgical tool which is configured to deliver approximately 20 to 210 joules of energy to the tissue for sealing ([0025]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Batchelor to include the surgical tool configured to deliver approximately 20 to 210 joules of energy to the tissue, as taught by Goble, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. MPEP 2144.05(I).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CATHERINE PREMRAJ whose telephone number is (571)272-8013. The examiner can normally be reached Monday - Friday: 8:00 AM - 5:00 PM.
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/C.C.P./Examiner, Art Unit 3794
/EUN HWA KIM/Primary Examiner, Art Unit 3794
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