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 .
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.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 19 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. In the instant case, the claim recites “determining a force applied to the tissue based on the ratio and compression of tissue” which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the applicant had possession of the claimed invention. The specification describes determining force, compression, and the ratio of collagen to elastin separately, but fails to describe determining force based on the ratio and compression of tissue as required by claim 19.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 13-32 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Houser et al. (US 2019/0201037).
Regarding claim 13, Houser discloses a surgical instrument comprising: an ultrasonic blade coupled to an ultrasonic transducer (see Figs. 20, 22-23, 55, 59, 61-62, [0377]); a sensor to sense sensor data (see electrical and ultrasonic transducer impedance sensors, IR sensors, [0376], Fig. 62), wherein sensor data comprises at least one of a tissue parameter or an operational parameter of the surgical instrument (see ultrasonic transducer impedance, electrical conductivity, elastin ratios, tissue type, location, or compressibility; [0376]); a control circuit (see generator module 240, [0377], see also [0392]) to: receive the sensor data; operate a control algorithm for the surgical instrument; adjust the control algorithm of the surgical instrument based on the sensor data (see [0376], [0650], and Fig. 63); and change a device parameter based on the adjusted control algorithm (see [0376], [0653]-[0656], Fig. 63).
Regarding claim 14, Houser further discloses wherein the sensor data comprises a type of tissue in contact with the ultrasonic blade (see [0638]).
Regarding claim 15, Houser further discloses wherein changing the device parameters of the surgical instrument are based on a location of the tissue within jaws of an end effector of the surgical instrument (see [0638]).
Regarding claim 16, Houser further discloses wherein the control circuit is to determine an impedance of the ultrasonic transducer to differentiate what percentage of the tissue is located in a distal or proximal end of the end effector ([0648], Figs. 55-57).
Regarding claim 17, Houser further discloses a first jaw and a plurality of electrodes along the jaw (see [0687]), wherein the control circuit is to determine electrical continuity across electrodes may be employed to determine a percentage of the jaw is covered with tissue (see [0376]).
Regarding claim 18, Houser further discloses wherein the control circuit is to determine a compressibility of the tissue (see [0683]).
Regarding claim 19, Houser further discloses determining a ratio of collagen to elastin tissue; and determining a force applied to the tissue based on the ratio and compression of tissue (see [0376]).
Regarding claim 20, Houser further discloses wherein the ratio of collagen to elastin tissue is detected by infrared (IR) surface reflectance and emissivity (see [0661]-[0662]).
Regarding claim 21, Houser discloses a surgical network comprising: a hub (see surgical hub 106 or 206, 130160, Figs. 2, 10, 20, 22-23, 55, 59, 61-62) comprising a processor and a memory, wherein the memory stores data of a surgical procedure; a plurality of data sources (see [0735]); a surgical instrument comprising: a control circuit (see Figs. 12-15 and 20, see also [0392]) to: receive data from the plurality of data sources (se [0392]); operate a control algorithm for the surgical instrument (see [0392]); adjust the control algorithm of the surgical instrument based on the data (see [0376], [0650], and Fig. 63); and change a device parameter based on the adjusted control algorithm (see [0376], [0653]-[0656], Fig. 63).
Regarding claims 22-32, Houser discloses the limitations of these claims under the same rationale and citations as those relied upon above in the rejection of claims 13-21.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SEAN W COLLINS whose telephone number is (408)918-7607. The examiner can normally be reached M-F 9:00 AM-5:00 PM ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joanne Rodden can be reached at 303-297-4276. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SEAN W COLLINS/Primary Examiner, Art Unit 3794
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