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, claims 1-17 in the reply filed on June 10, 2026 is acknowledged.
Claims 18-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on June 10, 2026.
Claim Objections
Claims 7, 13, and 15 is objected to because of the following informalities:
Claim 7 and 13 recite “the aperture engageable with a pulley operable to rotate the upper jaw about the pivot axis” and “engaging a pulley to the aperture” respectively. It is unclear how an aperture is engageable with anything since an aperture is a negative space. For purposes of this action, Examiner will interpret it to mean that the aperture provides a method of rotation to rotate the upper jaw about the pivot axis.
Claim 15 recites “first and component parts along the mated interface” which should recite “first and second component parts along the mated interface”. Appropriate correction is required.
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.
Claims 1, 3-8, 15-17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Garrison (US 20120259331 A1).
Regarding claim 1, Garrison discloses a method of setting a jaw gap for an end effector (paras. [0041]-[0098]), comprising: moving opposing upper and lower jaws of the end effector toward a closed position (para. [0061]), the upper jaw including a first component part (i.e., hinge 450) matable with a second component part (i.e., jaw 610) at a mated interface (Fig. 7; para. [0061]); placing a shim having a predetermined thickness between at least a portion of the upper and lower jaws such that the shim engages the lower jaw (para. [0061] discloses using shims); progressively closing the upper and lower jaws until the second component part of the upper jaw engages the shim (i.e., para. [0061] discloses using shims such that at least a portion of the jaw would engage with the shim) to define the jaw gap between the lower jaw and the second component part of the upper jaw (para. [0061]); and joining the first and second component parts at the mated interface while the lower jaw and the second component part of the upper jaw are engaged with the shim (para. [0061] discloses mating the hinge to the upper jaw).
Regarding claim 3, Garrison discloses the method of claim 2. Garrison also discloses wherein closing the upper and lower jaws comprises engaging a distal end of the second component part of the upper jaw with a distal end of the lower jaw to define an angle between the upper and lower jaws (i.e., Fig. 7 shows setting a jaw jap such that each of the top and bottom jaws are aligned and includes aligning the ends of the jaws by 782).
Regarding claim 4, Garrison discloses the method of claim 2. Garrison also discloses further comprising sliding the second component part longitudinally with respect to the first component part to thereby adjust a magnitude of the jaw gap at the proximal end of the upper and lower jaws prior to joining the first and second component parts (para. [0060] discloses setting a gap between 610 and 450 to reduce friction and/or wear such that in order to set the gap, the second component part would be slid longitudinally with respect to the first component part at the proximal end of the jaws prior to joining).
Regarding claim 5, Garrison discloses the method of claim 1. Garrison also discloses wherein closing the upper and lower jaws comprises pivoting the first component part about a pivot axis to thereby apply a downward force on the second component part toward the shim (para. [0061]).
Regarding claim 6, Garrison discloses the method of claim 5. Garrison also discloses comprising engaging a fixture (i.e., pin 603) with the first component part to maintain a rotational orientation of the first component part while joining the first and second component parts (para. [0060]).
Regarding claim 7, Garrison discloses the method of claim 6. Garrison also discloses wherein engaging the fixture comprises inserting a locating pin into an aperture 451 defined on the first component part (para. [0060]; Fig. 7), the aperture engageable with a pulley operable to rotate the upper jaw about the pivot axis (i.e., see above with regards to 112, Examiner is interpreting the aperture 451 to be a space to enable 603 to provide rotation of upper jaw).
Regarding claim 8, Garrison discloses a method of manufacturing a surgical instrument (paras. [0041]-[0098]), comprising: pivotally coupling a first component part (i.e., hinge 450) of an upper jaw to a lower jaw (Fig. 7); mating a second component part (i.e., jaw 610) of the upper jaw with the first component part at a mated interface (i.e., see Fig. 7 and para. [0061]); placing a shim between the lower jaw and the second component part (i.e., para. [0061] such that at least a portion of 610 engages the shim); pivoting the first and second component parts toward a closed position with respect to the lower jaw (para. [0061]) such that the second component part and the lower jaw engage the shim to define a jaw gap between the lower jaw and the second component part (para. [0061]); and joining the first and second component parts while the lower jaw and the second component part are engaged with the shim, and thereby forming the upper jaw (para. [0061]).
Regarding claim 15, Garrison discloses the method of claim 8. Garrison also discloses wherein joining the first and second component parts comprises welding the first and component parts along the mated interface (para. [0061]), the mated interface being defined longitudinally and vertically along an upper surface of the upper jaw (Fig. 7).
Regarding claim 16, Garrison discloses the method of claim 8. Garrison also discloses further comprising adjusting the second component part in pitch angle orientation with respect to the first component part to define a magnitude of the jaw gap along a longitudinal length of the lower jaw (para. [0060] discloses setting a gap in which 610 would need to be positioned relative to the hinge).
Regarding claim 17, Garrison discloses the method of claim 8. Garrison also discloses wherein placing the shim comprises engaging the shim with an electrode defined on the lower jaw (para. [0007] discloses that the jaws may include electrodes such that engaging the shim between the upper and lower jaws includes engaging the shim with an electrode).
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.
Claims, 2, 9-14 are rejected under 35 U.S.C. 103 as being unpatentable over Garrison.
Regarding claims 2 and 9, Garrison discloses the method of claims 1 and 8. Garrison doesn’t directly disclose wherein placing the shim comprises placing the shim at a proximal end of the upper and lower jaws.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention, as a matter of being obvious to try - choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success (see KSR International Co. v. Teleflex Inc., 550 U.S. 398, 82 USPQ2d 1385, 1395-97 (2007)), to obtain the predictable result of placing the shim comprises placing the shim at a proximal end of the upper and lower jaws since the only three choices are [1) placing the shim comprises placing the shim at a proximal end of the upper and lower jaws, 2) placing the shim comprises placing the shim at a distal end of the upper and lower jaws, or 3) placing the shim comprises placing the shim between the proximal and distal ends off the upper and lower jaws]. These are the only three options apparent to one of ordinary skill in the art, with there being no undue experimentation and there being a reasonable expectation of success at arriving at placing the shim comprises placing the shim at a proximal end of the upper and lower jaws, especially since one of ordinary skill in the art would want to control the gap along the entire length of the jaws.
Regarding claim 10, Garrison discloses the method of claim 9. Garrison also discloses wherein pivoting the first and second component parts comprises engaging a distal end of the second component part (i.e., the tip of the top jaw) with a distal end of the lower jaw to define a magnitude of the jaw gap at the distal end (Fig. 7). Garrison doesn’t directly disclose wherein the magnitude of the jaw gap at the proximal end is greater than the magnitude of the jaw gap at the distal end.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention, as a matter of being obvious to try - choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success (see KSR International Co. v. Teleflex Inc., 550 U.S. 398, 82 USPQ2d 1385, 1395-97 (2007)), to obtain the predictable result of wherein the magnitude of the jaw gap at the proximal end is greater than the magnitude of the jaw gap at the distal end since the only three choices are [1) wherein the magnitude of the jaw gap at the proximal end is greater than the magnitude of the jaw gap at the distal end, 2) wherein the magnitude of the jaw gap at the proximal end is less than the magnitude of the jaw gap at the distal end, or 3) wherein the magnitude of the jaw gap at the proximal end is the same as the magnitude of the jaw gap at the distal end]. These are the only three options apparent to one of ordinary skill in the art, with there being no undue experimentation and there being a reasonable expectation of success at arriving at wherein the magnitude of the jaw gap at the proximal end is greater than the magnitude of the jaw gap at the distal end.
Regarding claim 11, Garrison discloses the method of claim 10. Garrison also discloses wherein pivoting the first and second component parts further comprises applying a downward force on the shim with the second component part while joining the first and second component parts (para. [0061]).
Regarding claim 12, Garrison discloses the method of claim 11. Garrison also discloses further comprising engaging a fixture (i.e., pin 603) to an aperture 451 defined on the first component part (Fig. 7) to maintain a rotational orientation of the first component part while joining the first and second component parts (para. [0061]).
Regarding claim 13, Garrison discloses the method of claim 12. Garrison also discloses further comprising engaging a pulley to the aperture subsequent to joining the first and second component parts such that rotation of the pulley rotates the upper jaw with respect to the lower jaw (i.e., pin 403 allows for the rotation through aperture 451 as disclosed in para. [0059]).
Regarding claim 14, Garrison discloses the method of claim 13. Garrison also discloses further comprising extending a drive member proximally from the pulley to an actuation system operable to longitudinally move the drive member and rotate the pulley (paras. [0047], [0049]-[0050] describe the drive assembly although not shown and a different embodiment, the same features are assumed to be evident in the embodiment of Fig. 7).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RACHAEL LYNN GEIGER whose telephone number is (571)272-6196. The examiner can normally be reached Mon-Fri 8:00am-5:00pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Darwin Erezo can be reached at 5712724695. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RACHAEL L GEIGER/ Examiner, Art Unit 3771
/BROOKE LABRANCHE/ Primary Examiner, Art Unit 3771
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