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 .
Election/Restrictions
Applicant’s election without traverse of Group I (Claims 1-19) in the reply filed on 7/6/2026 is acknowledged.
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 3 and 19 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.
Regarding claim 3, the phrase "polydimethylsiloxane-like" renders the claim indefinite because the claim includes elements not actually disclosed, thereby rendering the scope of the claims unascertainable. See MPEP § 2173.05(d).
In Claim 19, “the sealing surface area” has no antecedent basis. Examiner assume in should be “a sealing surface area.”
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.
Claim(s) 1-7 and 8-12 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Boronyak et al. (US 2022/0110673).
Regarding Claims 1, 2, 5 and 6, Boronyak et al. teaches a method of manufacturing a surgical tool (See Abstract), the method comprising:
forming, using plasma enhanced chemical vapor deposition with a precursor material, a first coating [222] on a conductive tissue treating surface [194],[196] of a component of an end effector [180] of the surgical tool [110], the first coating [220] comprising a first material, wherein the first material is a first silicone material (See page 4, paragraphs [0056] and [0059], page 5, paragraph [0064], page 9, paragraphs [0091]-[0093], wherein an energized feature of an end effector [180] includes electrode surfaces [194],[196], i.e. a conductive tissue treating surface that has tissue release feature [210], and is coated with a hydrophobic coating [222] such as hexamethyldosiloxane (HMDSO) as in Claim 2, a silicone material, and applying via low-pressure plasma coating in a vacuum, which is also known as plasma enhanced chemical vapor deposition, or PECVD); and
applying a second coating on top of the first coating on the conductive tissue treating surface, the second coating comprising a second material (See page 10, paragraph [0094], teaching polydimethylsiloxane (PDMS), a silicone material as in Claim 6), wherein the first coating and the second coating form a multi-layer coating that is effective to prevent tissue sticking to the conductive tissue treating surface during an electrosurgical sealing procedure (See page 4, paragraphs [0053] and [0058], wherein the surgical tool [110] is an electrosurgical tool used to seal and/or cut tissue, i.e. perform an electrosurgical sealing procedure, wherein the energized feature electrode surfaces [194],[196] may stick and thus has the hydrophobic coating applied, which may have multiple layers, such as a phospholipid second layers as in Claim 5, see page 9, paragraph [0091]).
Regarding Claim 3-4, Boronyak et al. teaches the plasma coated layer may be PDMS as an alternative to HMDSO, each coverable by an anti-stick phospholipid (See page 9, paragraph [0091]).
Regarding Claims 8-11, Boronyak et al. teaches wiping via a saturated sponge, ultrasonic spraying, brushing, and dip coating are all suitable method for applying the coatings (See page 11, paragraph [0104]).
Regarding Claim 12, Boronyak et al. teaches jaws [182] and [184] carry electrode surfaces [194],[196] (See Fig. 4 and page 4, paragraphs [0055]-[0056]).
Claim Rejections - 35 USC § 103
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 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) 13-16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Boronyak et al. as applied to Claim 1 above.
Regarding Claims 13 and 14, Boronyak et al. teaches the method of Claim 1, as described above. Boronyak et al. further teaches the end effect may be separately coated in the vacuum chamber, i.e. PECVD (See page 9, paragraph [0092]), and also teaches the coating may be applied on various subassemblies or the full device assembly (See page 11, paragraph [0101]), and further teaches coupling coated portions of the jaw to the end effector to assemble it (See page 13, paragraph [0127]). It is clear the order of assembly when applying the coatings is highly variable and coating while unassembled in various states or while fully assembled for various coatings is clearly obvious based on the coating method or desired coating to be applied. The holdings in Ex parte Rubin, 128 USPQ 440 (Bd. App. 1959), In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946), and In re Gibson, 39, F.2d 975, 5 USPQ 230 (CCPA 1930) indicate that the selection of any order or sequence in the steps of a process is prima facie obvious in the absence of new or unexpected results. See MPEP 2144(IV)(C).
Regarding Claims 15-16, Boronyak et al. teaches the method of Claim 1, as described above. Boronyak et al. further teaches the first coating is 1-10 nm, rendering the claimed range of 7-17 nm prima facie obvious (See page 10, paragraph [0093]).
Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Boronyak et al. as applied to Claim 6 above, and further in view of Roby et al. (US 2008/0277448).
Regarding Claims 7, Boronyak et al. teaches the method of Claim 6, as described above. Boronyak et al. teaches a second coating of PDMS (See page 10, paragraph [0094]), but fails to teach amino-functional silicone. However, in similar PDMS-like exterior coating of surgical tools, amino-functional silicones, such as dimethoxysilyidimethyl aminoethylaminopropyl silicone polymer (MDX Fluid), are known to be suitable alternative or mixtures to increase lubricity, i.e. increase wear resistance and non-stick (See, for example, Roby et al., page 5, paragraphs [0090]-[0091] and [0097], and page 6, paragraphs [0099]-[0101], wherein the MDX fluid, the amino-functional silicone, is mixed into the coating for reducing sticking to tissue, said coating applied via common method, such as dipping etc.). Thus, it would have been obvious to a person having ordinary skill in the art at the time of invention to utilize or incorporate amino-functional silicones. Doing so would have predictably been a suitable non-stick coating to increase lubricity of tissue contacting surgical tools as an alternative to in a mixture with PDMS.
Claim(s) 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Boronyak et al. as applied to Claim 1 above, and further in view of Allen, IV et al. (US 2021/0177488).
Regarding Claims 17, Boronyak et al. teaches the method of Claim 1, as described above. Boronyak et al. fails to teach the claimed thickness, but indicates the hydrophobic coating can wear over time (See page 4, paragraph [0058]). Further, in similar devices for similar PECVD applied non-stick silicone coatings (See, for example, Allen, IV et al., page 2, paragraphs [0023], [0027]-[0028], teaching electrosurgical sealing instruments with PECVD coated HMDSO), the thicknesses of such coatings are known to be suitable up to 250 nm (See Allen, IV et al., page 7, paragraph [0069]). Thus, it would have been obvious to a person having ordinary skill in the art at the time of invention to utilize a 250 nm PECVD applied coating as in Boronyak et al. Doing so would have predictably enabled more wear protection before a coating needs re-application.
Claim(s) 18-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Boronyak et al. as applied to Claim 1 above, and further in view of Bastian (US 2008/0234672) and/or Del Cid et al. (US 2021/0145507).
Regarding Claim 18, Boronyak et al. teaches the method of Claim 1, as described above. Boronyak et al. teach lipid coating over the PECVD coating as described above (See page 9, paragraph [0091], applying a phospholipid as a second coating), but is silent as to specific coating thicknesses. However, similar lipid coatings of electrosurgical tools are known to be suitable within a wide ranges of thicknesses (See, for example, Bastian, page 3, paragraph [0026], teaching lipid coatings as being suitable as 0.5 to 400 microns). Thus, it would have been obvious to a person having ordinary skill to adapt the phospholipid coating in Boronyak et al. as desired within known ranges to balance durability and cost as needed.
Regarding Claim 19, Boronyak et al. teaches the method of Claim 1, as described above. Boronyak et al. fails to specifically teach a non-uniform coating as in Claim 19. However, outer coatings are known to have a wide range of potential thicknesses on electrosurgical instruments (See, for example, Bastian, page 3, paragraph [0026], teaching lipid coatings as being suitable as 0.5 to 400 microns). Further, non-uniform coatings are known on the electrodes of electrosurgical tool to allow RF energy to pass through while creating a desired gap between the electrodes (See, for example, Del Cid, page 3, paragraph [0037]), and wherein the amount of non-uniformity and thicknesses are known to be varied as desired to control conductivity and spacing as desired (See Del Cid et al., page 4, paragraph [0042]). Note Applicant also teaches coating thickness is highly controllable and well-known in the prior art (See instant PgPub 2025/0107841, page 3, paragraph [0055]). Thus, it would have been obvious to a person having ordinary skill in the art at the time of invention to implement the second coating in a non-uniform fashion, such as is claimed, in order to balance gap and conductivity as desired within known coating thickness ranges. Where the general conditions of a claim (i.e. coating thickness and coverage of thicker and thinner portion of a non-uniform coating) are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation (See MPEP 2144.05 (II)(A)). It would have been prima facie obvious to one of ordinary skill in the art at the time the invention was made to use routine experimentation to arrive at the desired thicker range and coverage and thinner range and coverage, such as that which is claimed, in order to meet customer specifications or consumer demands.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SCOTT W DODDS whose telephone number is (571)270-7653. The examiner can normally be reached M-F 10am-6pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Orlando can be reached at 5712705038. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/SCOTT W DODDS/Primary Examiner, Art Unit 1746
Prosecution Insights