DETAILED ACTION
Election/Restrictions
Applicant’s election without traverse of Group 1, claims 1-9 in the reply filed on 5/15/2026 is acknowledged.
Claims 10-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 5/15/2026.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
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) 1,2,8 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Denzinger et al U.S 2018/0132884.
Claim 1: Denzinger et al disclose a surgical instrument as best seen in figures 2-4, comprising: a housing 100 having an elongated body 112 extending distally therefrom, the elongated body including: an outer tube 132 defining an articulating portion and an inner tube 138 defining a lumen therein, wherein the outer tube is configured to rotate about the inner tube (see fig., 13b, paragraph 108); an end effector assembly 12 supported at a distal end portion of the elongated body, the end effector assembly including an ultrasonic blade 150 and a jaw 220 configured to rotate about the ultrasonic blade, the jaw 220 supported by the outer tube 132, the ultrasonic blade 150 and the jaw configured to capture and treat tissue therebetween in plural rotational orientations of the jaw relative to the ultrasonic blade (see paragraph 105), wherein rotation of the outer tube about the inner tube correspondingly rotates the jaw about the ultrasonic blade 150; and a flexible waveguide 140 extending through the lumen of the inner tube, a distal end portion of the flexible waveguide connected with the ultrasonic blade of the end effector assembly, the flexible waveguide rotatably fixed to the inner tube (see paragraph 94).
Claims 2, 8: Denzinger et al disclose wherein the outer tube 132 is configured to
articulate in any direction, and wherein the inner tube 138 is configured to articulate substantially along a single plane as best seen in figures 2-4.
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.
Claim(s) 3-6, 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Denzinger et al.
Claim 3: Denzinger et al. disclose the claimed invention substantially as claimed but is silent regarding wherein the outer tube includes at least one spiral cutout configured to allow articulation in any direction and apply a rotational force to the jaw. However, Denzinger et al disclose a housing 100 having an elongated body 112 extending distally therefrom, the elongated body including: an outer tube 132 defining an articulating portion and an inner tube 138 defining a lumen therein, wherein the outer tube is configured to rotate about the inner tube (see fig., 13b, paragraph 108). However, it is well known to have the device that including the outer tube includes at least one spiral cutout configured to allow articulation in any direction and apply a rotational force to the jaw in order to allow articulation of the inner tube substantially along a single plane. It is evidence in the same field of invention- U.S 2012/0199632 (Spivey et al), fig. 3a, paragraphs 179-180 teach the outer tube includes at least one spiral cutout so that the Denzinger et al would too have this advantage.
Claims 4-5: Spivey et al teach wherein the inner tube includes a plurality
of cutouts spaced apart from each other, the plurality of cutouts configured to allow articulation of the inner tube substantially along a single plane (fig. 3a, paragraphs 179,180); wherein the plurality of cutouts includes a plurality of pairs of opposed cutouts (see figure 9a, paragraph 92).
Claims 6, 9: Spivey et al teach further including a direct drive including
at least two links 103, fig. 19 extending along the outer tube, the direct drive configured to drive opening and closing of the jaw (see paragraph 216); further comprising a cable extending within a channel of the outer tube, the cable configured to enable articulation of the outer tube (see paragraphs 7-9, fig. 10).
Allowable Subject Matter
Claim 7 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
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/VI X NGUYEN/Primary Examiner, Art Unit 3771
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