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 .
Election/Restrictions
Applicant’s election without traverse of group I in the reply filed on 07/06/2026 is acknowledged.
Claims 34-40 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected group II, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 07/06/2026.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
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Claims 21-26 and 28-32 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 8, and 9 of U.S. Patent No. 12,156,674 B2 in view of Beaupre (US 20070016236 A1).
Regarding claim 21, claim 1 of 12,156,674 claims a surgical instrument, comprising: and an ultrasonic blade (col. 14 ln. 18), wherein the ultrasonic blade comprises:
a base; a longitudinal axis extending parallel through the base (col. 14 ln. 19-20); and
a curved body extending distally from the base, wherein the curved body comprises (col. 14 ln. 21-22):
a distal end offset from the longitudinal axis in a first direction and a second direction different than the first direction (col. 14 ln. 24-27);
a proximal end opposite the distal end (col. 14 ln. 23);
a first side; a second side opposite the first side (col. 14 ln. 28-31); and
a curved edge extending on the second side, wherein the curved edge comprises (col. 14 ln. 30):
a first portion curving away from the longitudinal axis at a point adjacent the proximal end (col. 14 ln. 32-33);
a second portion curving toward the longitudinal axis at a point adjacent the distal end (col. 14 ln. 34-36); and
a balancing feature comprising a contour line that defines an asymmetry in the curved body (col. 14 ln. 37-40).
claim 1 of 12,156,674 fails to claim an ultrasonic transmission waveguide; and the ultrasonic blade acoustically coupled to the ultrasonic transmission waveguide.
However Beaupre, in the same field of endeavor, teaches (fig. 1) an ultrasonic transmission waveguide 150; and the ultrasonic blade 152 acoustically coupled to the ultrasonic transmission waveguide 150 (see fig. 1 and [0031]).
Therefore it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify claim 1 of 12,156,674 to have an ultrasonic transmission waveguide; and the ultrasonic blade acoustically coupled to the ultrasonic transmission waveguide as taught by Beaupre, for the purpose of being able to transmit the ultrasonic vibrations to the blade.
Regarding claim 22, claim 2 of 12,156,674 claims the curved body further comprises: a blunt tip adjacent the distal end and extending laterally beyond the base (col. 14 ln. 41-42).
Regarding claim 23, claim 1 of 12,156,674 claims the curved body further comprises: a tissue-treating surface extending on the first side (col. 14 ln. 28-29).
Regarding claim 24, claim 3 of 12,156,674 claims the tissue- treating surface is tapered toward the distal end (col. 14 ln. 43-44).
Regarding claim 28, claim 8 of 12,156,674 claims a surgical instrument, comprising: and an ultrasonic blade (col. 14 ln. 65), wherein the ultrasonic blade comprises:
a base; a longitudinal axis extending parallel through the base (col. 14 ln. 66-67); and
a curved body extending distally from the base, wherein the curved body comprises (col. 14 ln. 21-22):
a distal end offset from the longitudinal axis in a first direction and a second direction different than the first direction (col. 15 ln. 11-14);
a proximal end opposite the distal end (col. 15 ln. 7);
a first side; a second side opposite the first side (col. 15 ln. 3-5); and
a blunt tip adjacent the distal end and extending laterally beyond the base; a height gradually tapered toward the blunt tip; a width gradually tapered toward the blunt tip (col. 15 ln. 25-28);
a curved edge extending on the second side, wherein the curved edge comprises (col. 15 ln. 4-6):
a first portion curving away from the longitudinal axis at a point adjacent the proximal end (col. 15 ln. 15-17);
a second portion curving toward the longitudinal axis at a point adjacent the distal end (col. 15 ln. 18-20); and
a balancing feature comprising a contour line that defines an asymmetry in the curved body (col. 15 ln. 21-24).
claim 21 of 12,156,674 fails to claim an ultrasonic transmission waveguide; and the ultrasonic blade acoustically coupled to the ultrasonic transmission waveguide.
However Beaupre, in the same field of endeavor, teaches (fig. 1) an ultrasonic transmission waveguide 150; and the ultrasonic blade 152 acoustically coupled to the ultrasonic transmission waveguide 150 (see fig. 1 and [0031]).
Therefore it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify claim 1 of 12,156,674 to have an ultrasonic transmission waveguide; and the ultrasonic blade acoustically coupled to the ultrasonic transmission waveguide as taught by Beaupre, for the purpose of being able to transmit the ultrasonic vibrations to the blade.
Regarding claim 29, claim 8 of 12,156,674 claims the curved body further comprises: a tissue-treating surface extending on the first side (col. 15 ln. 1-3).
Regarding claim 30, claim 9 of 12,156,674 claims the tissue- treating surface is tapered toward the distal end (col. 15 ln. 29-30).
Regarding claims 25 and 31, claims 1 and 8 of 12,156,674 claims the limitations of claims 23 and 29 above. Claims 1 and 8 are of 12,156,674 are silent regarding the tissue- treating surface is curved convexly.
However Beaupre, in the same field of endeavor, further teaches (fig. 1) the tissue- treating surface is curved convexly (see fig. 1 and 3).
Therefore it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify claims 1 and 8 of 12,156,674 to have the tissue- treating surface is curved convexly as taught by Beaupre, for the purpose of creating an out and around shape to aid in medical procedures (see Beaupre [0034]).
Regarding claims 26 and 32, claim 8 of 12,156,674 claims a clamp member movable relative to the tissue-treating surface to capture tissue therebetween.
However Beaupre, in the same field of endeavor, further teaches (fig. 4-6) a clamp member 203 movable relative to the tissue-treating surface to capture tissue therebetween (see fig. 4-5 and [0042]).
Therefore it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify claims 1 and 8 of 12,156,674 to have a clamp member movable relative to the tissue-treating surface to capture tissue therebetween as taught by Beaupre, for the purpose of being able to cut and/or coagulate tissue between the clamp arm and the blade (see Beaupre [0042]).
Claims 21-33 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5 and 7-10 of U.S. Patent No. 11,020,140 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding claim 21, 11,020,140 claim 1 claims a surgical instrument comprising: an ultrasonic transmission waveguide and an ultrasonic surgical blade acoustically coupled to the ultrasonic transmission waveguide (col. 14 ln. 61-66), wherein the ultrasonic blade comprises:
a base; a longitudinal axis extending parallel through the base (col. 15 ln. 1-2); and
a curved body extending distally from the base (col. 15 ln. 3-4), wherein the curved body comprises:
a distal end offset from the longitudinal axis in a first direction and a second direction different than the first direction (col. 15 ln. 20-24);
a proximal end opposite the distal end (col. 15 ln. 5);
a first side; a second side opposite the first side; and a curved edge extending on the second side (col. 15 ln. 7-10), wherein the curved edge comprises:
a first portion curving away from the longitudinal axis at a point adjacent the proximal end (col. 15 ln. 10-15);
a second portion curving toward the longitudinal axis at a point adjacent the distal end (col. 15 ln. 10-15); and
a balancing feature comprising a contour line that defines an asymmetry in the curved body (col. 15 ln. 16-19).
Regarding claim 22, 11,020,140 claim 2 claims a blunt tip adjacent the distal end and extending laterally beyond the base (col. 15 ln. 25-28).
Regarding claim 23, 11,020,140 claim 1 claims the curved body further comprises: a tissue-treating surface extending on the first side (col. 15 ln. 7-9).
Regarding claim 24, 11,020,140 claim 3 claims the tissue-treating surface is tapered toward the distal end (col. 15 ln. 29-31).
Regarding claim 25, 11,020,140 claim 5 claims the tissue- treating surface is curved convexly (col. 15 ln. 35-38).
Regarding claim 26, 11,020,140 claim 4 claims a clamp member movable relative to the tissue-treating surface to capture tissue therebetween (col. 15 ln. 32-34).
Regarding claim 27, 11,020,140 claim 5 claims the contour line is curved concavely and intersects the tissue-treating surface (col. 15 ln. 35-38).
Regarding claim 28, 11,020,140 claim 7 claims a surgical instrument comprising: an ultrasonic transmission waveguide and an ultrasonic surgical blade acoustically coupled to the ultrasonic transmission waveguide (col. 15 ln. 43-46), wherein the ultrasonic blade comprises:
a base; a longitudinal axis extending parallel through the base (col. 15 ln. 50-51); and
a curved body extending distally from the base (col. 15 ln. 52), wherein the curved body comprises:
a distal end offset from the longitudinal axis in a first direction and a second direction different than the first direction (col. 16 ln. 5-6);
a proximal end opposite the distal end (col. 15 ln. 59);
a first side; a second side opposite the first side (col. 15 ln. 55-58); and
a blunt tip adjacent the distal end and extending laterally beyond the base; a height gradually tapered toward the blunt tip; a width gradually tapered toward the blunt tip (col. 16 ln. 7-11);
a curved edge extending on the second side (col. 15 ln. 55), wherein the curved edge comprises:
a first portion curving away from the longitudinal axis at a point adjacent the proximal end (col. 15 ln. 60-67);
a second portion curving toward the longitudinal axis at a point adjacent the distal end (col. 15 ln. 60-67); and
a balancing feature comprising a contour line that defines an asymmetry in the curved body (col. 16 ln. 1-4).
Regarding claim 29, 11,020,140 claim 7 claims the curved body further comprises: a tissue-treating surface extending on the first side (col. 15 ln. 54-56).
Regarding claim 30, 11,020,140 claim 9 claims the tissue-treating surface is tapered toward the distal end (col. 16 ln. 17-19).
Regarding claim 31, 11,020,140 claim 10 claims the tissue- treating surface is curved convexly (col. 16 ln. 21-24).
Regarding claim 32, 11,020,140 claim 8 claims a clamp member movable relative to the tissue-treating surface to capture tissue therebetween (col. 16 ln. 14-16).
Regarding claim 33, 11,020,140 claim 10 claims the contour line is curved concavely and intersects the tissue-treating surface (col. 16 ln. 21-24).
Allowable Subject Matter
Claims 21-33 would be allowable if a terminal disclaimer is filed to overcome the double patenting rejections set forth herein.
The following is a statement of reasons for the indication of allowable subject matter:
Regarding claim 21, the prior art, alone or in combination, fails to teach or render obvious (in addition to the other limitations of claim 21): an ultrasonic blade having a curved body with the distal end is offset from the longitudinal axis in a first direction and a second direction, wherein the second direction is different than the first direction; a curved edge on a second side of the curved body, wherein the curved edge comprises: a first portion curving away from the longitudinal axis at a point adjacent the proximal end; and a second portion curving towards the longitudinal axis at a point adjacent the distal end; and a balancing feature comprising a contour line that defines an asymmetry in the curved body.
Regarding claim 28, the prior art, alone or in combination, fails to teach or render obvious (in addition to the other limitations of claim 28): an ultrasonic blade having a curved body, wherein the curved body comprises: a proximal end; and a distal end offset from the longitudinal axis in a first direction and a second direction, wherein the second direction is different than the first direction, a first portion curving away from the longitudinal axis at a point adjacent the proximal end; and a second portion curving toward the longitudinal axis at a point adjacent the distal end; and a balancing feature comprising a contour line that defines an asymmetry in the curved body.
The closest prior art references include Akagane (US 2016/0058465 A1), Beaupre-236 (US 2007/0016236 A1), Young (US 2010/0204721 A1), Yoshimine (US 2010/0106173 A1), and Beaupre-981 (US 6,283,981 B1).
Akagane teaches of an ultrasonic blade with a curved body/portion, a curved edge/cutting edge; wherein the distal end is offset from the longitudinal axis in a first direction, wherein the distal end is offset from the longitudinal axis in a second direction, and wherein the first direction is perpendicular to the second direction (see fig. 3-10). Akagane fails to teach the curved edge curving away from the longitudinal axis at a first point adjacent the distal end and then curving back toward the longitudinal axis at a second point adjacent distal end; and a balancing feature positioned between the proximal end and a midway point to the distal end, the balancing feature comprising a contour line that defines an asymmetry in the curved body.
Beaupre-236 teaches of an ultrasonic blade with a curved body/portion, curved edge curving away from the longitudinal axis at a first point adjacent the distal end and then curving back toward the longitudinal axis at a second point adjacent distal end; wherein the distal end is offset from the longitudinal axis in a first direction (see fig. 1-3). Beaupre-236 fails to teach a balancing feature comprising a contour line that defines an asymmetry in the curved body; wherein the distal end is offset from the longitudinal axis in a second direction, and wherein the first direction is perpendicular to the second direction.
Young teaches of an ultrasonic blade with a curved body/portion, the distal end is offset from the longitudinal axis in a second direction (see fig. 1-3). Young fails to teach the curved edge curving away from the longitudinal axis at a first point adjacent the distal end and then curving back toward the longitudinal axis at a second point adjacent distal end; and a balancing feature comprising a contour line that defines an asymmetry in the curved body; wherein the distal end is offset from the longitudinal axis in a first direction, the first direction is perpendicular to the second direction.
Yoshimine and Beaupre-981 both teach proximal balancing features (see Yoshimine fig. 3 and Beaupre-981 fig. 2).
It would not be obvious to one of ordinary skill in the art to combine the above references to achieve the claimed invention because all of the ultrasonic blades of the references are balanced and shaped to reduce unwanted vibrational motion. Modifying any one of the above references to include all of the other claimed limitations would significantly change the shape and the mass of the ultrasonic blades rendering them unusable. Furthermore, the only motivation for such modifications would be to reduce the unwanted vibrational motion, and as stated the references already teach that the blades reduce unwanted vibrational motion.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KATHERINE H MENDEZ whose telephone number is (571)272-9503. The examiner can normally be reached Monday - Friday 8 am-4:00 pm.
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/KATHERINE H MENDEZ/Primary Examiner, Art Unit 3771
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