CTNF 18/902,152 CTNF 87508 DETAILED ACTION A complete action on the merits of claims 1-20 follows below. Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. 07-06 AIA 15-10-15 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 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. Information Disclosure Statement Applicant should note that the large number of references in the attached IDS have been considered by the examiner in the same manner as other documents in Office search files are considered by the examiner while conducting a search of the prior art in a proper field of search. See MPEP 609.05(b). Applicant is requested to point out any particular references in the IDS which they believe may be of particular relevance to the instant claimed invention in response to this office action. Claim Rejections - 35 USC § 102 07-07-aia AIA 07-07 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 – 07-08-aia AIA (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. 07-15 AIA Claim s 1-10 and 13 are rejected under 35 U.S.C. 102( a)(1 ) as being anticipated by Strobl (US Pub. No. 2016/0074095 ) . Regarding Claim 1, Strobl teaches a jaw member 420A (Figs. 1 and 4) comprising: a support base (similar to those shown in Figs. 2A-3); an insulator 410/410’ supported within the support base (Figs. 4-4B); and a sealing plate 412/412’ supported on the insulator (Figs. 4-4B), the sealing plate having a length, a width, and a height, the height varying between a minimal height and a maximum height along the width of the sealing plate (Figs. 4A-4B). Regarding Claim 2, Strobl teaches wherein the sealing plate 412’ includes a sealing surface (bottom surface shown in Figs. 4A-4B) and an outwardly facing surface positioned adjacent to the insulator 410’, the outwardly facing surface having at least one apex, and the maximum height of the sealing plate extends from the sealing surface to the at least one apex (Figs. 4A-4B). Regarding Claim 4, Strobl teaches wherein the sealing plate includes two apexes. PNG media_image1.png 298 397 media_image1.png Greyscale Regarding Claim 5, Strobl teaches wherein the jaw member includes a knife slot disposed between the two apexes (space 418 similar to the knife slots shown in Figs. 2A-3). Regarding Claim 6, Strobl teaches wherein the outwardly facing surface of the sealing plate includes two sets of legs, each set of the two sets of legs extending to one of the two apexes (see the following annotated drawing). PNG media_image2.png 302 400 media_image2.png Greyscale Regarding Claim 7, Strobl teaches wherein a first leg of each of the two sets of legs extends from an outer edge of the sealing plate to the respective apex, and a second leg of each of the two sets of legs extends from a central portion of the sealing plate to the respective apex (see the annotated drawing above). Regarding Claim 8, Strobl teaches wherein the first and second legs have different lengths (see the annotated drawing above). Regarding Claim 9, Strobl teaches wherein at least one of the first or second legs is non-linear ([0018]-[0020]). Regarding Claim 10, Strobl teaches wherein at least one of the first or second legs is curved ([0018]-[0020] when the thickness varies in a curved configuration). Regarding Claim 13, Strobl teaches wherein a tissue contacting surface of the jaw member defines a length and a width, and the width of the sealing plate is less than the width of the jaw member (Figs. 2A-3) . 07-15 AIA Claim s 1-3 and 11-13 are rejected under 35 U.S.C. 102( a)(1 ) as being anticipated by Johnson (US Patent No. 7,686,804 ) . Regarding Claim 1, Johnson teaches a jaw member 120 (Figs. 2A-5) comprising: a support base 126; an insulator supported within the support base (the inner surface of insulator 124 “Jaw member 120 includes similar elements to jaw member 110 such as jaw housing 126 having an insulator 124” Col. 7, ll. 61-62); and a sealing plate 122 supported on the insulator (Fig. 2A), the sealing plate having a length, a width, and a height, the height varying between a minimal height and a maximum height along the width of the sealing plate (Figs. 2A-5). Regarding Claim 2, Johnson teaches wherein the sealing plate includes a sealing surface and an outwardly facing surface positioned adjacent to the insulator, the outwardly facing surface having at least one apex, and the maximum height of the sealing plate extends from the sealing surface to the at least one apex (Figs. 2A and 3A). Regarding Claim 3, Johnson teaches wherein the apex is disposed in a central portion of the sealing plate (Figs. 2A and 3A). Regarding Claim 11, Johnson teaches wherein the sealing surface is nonplanar (the sealing surface comprises stop members 140 and thus is nonplanar, see Fig. 2A). Regarding Claim 12, Johnson teaches wherein the sealing plate is offset in a height direction relative to the insulator (“jaw member 120 includes a rotatable electrode 122” Col. 7, ll. 63; thereby as it rotates there is a configuration where the sealing plate is offset in a height direction relative to the insulator, see Fig. 4). Regarding Claim 13, Johnson teaches wherein a tissue contacting surface 122 of the jaw member defines a length and a width, and the width of the sealing plate is less than the width of the jaw member (Fig. 2A) . 07-15 AIA Claim s 14-20 are rejected under 35 U.S.C. 102( a)(1 ) as being anticipated by Chojin (US Pub. No. 2009/0216229 ) . Regarding Claim 14, Chojin teaches a jaw member 100 (Figs. 1A and 5) comprising: a support base 116 (insulating cover 116 [0034]); an insulator 114 supported within the support base (“support member 114 and may be formed from any suitable material, such as plastic, epoxy, resin, gel, polymer-based materials, so-called cool polymers, etc” [0034] and Fig. 5); and a sealing plate (a combination of plate 112 and filler 118 “filler material 118 may be conductive and may be formed from any suitable conductive material” [0035] and Fig. 5) supported on the insulator (Fig. 5), the sealing plate having a length, a width, and a height, the height varying along the length of the sealing plate and being consistent across the width of the sealing plate (Fig. 5). Regarding Claim 15, Chojin teaches wherein the sealing plate includes a sealing surface 112 and an outwardly facing surface 118 positioned adjacent to the insulator 114 (Fig. 5), the outwardly facing surface having an apex at a distal portion of the sealing plate such that a thickness of the sealing plate is greatest at the distal portion of the sealing plate (see the following annotated drawing). PNG media_image3.png 284 548 media_image3.png Greyscale Regarding Claim 16, Chojin teaches wherein the outwardly facing surface includes a first leg that extends from a proximal end of the sealing plate and a second leg that extends from a distal end of the sealing plate, wherein the first leg and second leg taper towards the apex (see the following annotated drawing). PNG media_image4.png 343 617 media_image4.png Greyscale Regarding Claim 17, Chojin teaches wherein the height varies from a minimum height to a maximum height across the length of the sealing plate (Fig. 5). Regarding Claim 18, Chojin teaches wherein the minimum height is at a proximal portion of the sealing plate and the maximum height is at a distal portion of the sealing plate (for the purpose of this claim the left side is hereby interpreted to be a distal end and the right side is interpreted to be a proximal end, see Fig. 5). Regarding Claim 19, Chojin teaches wherein a tissue contacting surface of the jaw member (the bottom surface of 112) defines a length and a width, and and the width of the sealing plate is less than the width of the jaw member (“insulative cover 116 protects surrounding tissue from electrical currents” [0034] and “Cover 116 is then overmolded or limited to encapsulate the support member 114 ( and sealing plate 112/filler material 118 assembly ) to electrically insulate surrounding tissue from the outer periphery of the jaw member 110” [0037]; therefore although the drawings do not show the limitation, examiner takes the position that by encapsulating the sealing plate and the filler material and to have the cover protect the surrounding tissue from electrical current that the width of the sealing plate and the filler has to be less than the width of the jaw member). Regarding Claim 20, Chojin teaches wherein the sealing plate is offset in a height direction relative to the insulator (Fig. 5) . Claim Rejections - 35 USC § 103 07-20-aia AIA 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. 07-23-aia AIA The factual inquiries set forth in Graham v. John Deere Co. , 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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. 07-21-aia AIA Claim s 11-12 are rejected under 35 U.S.C. 103 as being unpatentable over Chojin . Regarding Claim 11, Strobl seems to show wherein the sealing surface is planar in the embodiment of Figs. 4A-B and not nonplanar; however, teaches that it is known in the art to provide slits 212/214 in Fig. 2A or slits 302 in Fig. 3 in order to “create thermal breaks in the electrode that prevent the transfer of thermal energy between the inner, or medial, portions 216 of the electrode and the outer, or lateral, portions 218 of the electrode. The longitudinal slits 212, 214 can be effective to substantially thermally isolate adjacent portions of the electrode from one another” [0056], “create a different pattern of thermal zones over the area of the electrode 306” [0061] and “a ridge 226 formed on the electrical insulator 210B that is configured to be disposed within the slits 212, 214 formed in the electrode 206, and can be disposed proud of the surface of the electrode 206 …The ridge 226 can provide further assurance of electrical and/or thermal insulation between the adjacent portions of the electrode, thereby improving performance” [0058]. It would have been obvious to one having ordinary skill in the art prior to the effective filing date of the current invention to add similar slits and ridge in the sealing plate of the embodiment of Fig. 4 in order to provide assurance of electrical and/or thermal insulation between the adjacent portions of the electrode, thereby improving performance. Regarding Claim 12, Strobl teaches wherein the sealing plate is offset in a height direction relative to the insulator (Figs. 4-4B). Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to KHADIJEH A VAHDAT whose telephone number is (571)270-7631. The examiner can normally be reached M-F 9-6 EST. 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, Linda Dvorak can be reached on (571) 272-4764. 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. /KHADIJEH A VAHDAT/Primary Examiner, Art Unit 3794 Application/Control Number: 18/902,152 Page 2 Art Unit: 3794 Application/Control Number: 18/902,152 Page 4 Art Unit: 3794 Application/Control Number: 18/902,152 Page 5 Art Unit: 3794 Application/Control Number: 18/902,152 Page 6 Art Unit: 3794 Application/Control Number: 18/902,152 Page 7 Art Unit: 3794 Application/Control Number: 18/902,152 Page 8 Art Unit: 3794 Application/Control Number: 18/902,152 Page 9 Art Unit: 3794 Application/Control Number: 18/902,152 Page 10 Art Unit: 3794
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