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.
Specification
The disclosure is objected to because the first paragraph does not provide the most current status for the related application. That is, the parent application is referenced as a U.S. application even though it has issued as a patent. The paragraph should be amended to include the appropriate patent number.
Furthermore, the lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 14 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 14 recites the limitation "the conductor adapter" in line 1. There is insufficient antecedent basis for this limitation in the claim.
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) 10 and 12 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Burbank, U.S. 2010/0016853 (hereinafter Burbank).
Regarding claim 10, Burbank discloses (note figs. 2A-B, 4B, and 7A) a method of operating a surgical tool, comprising: necessarily positioning the surgical tool adjacent a patient for operation, the surgical tool including: a drive housing (note figs. 5B-6); an elongate shaft (110) that extends from the drive housing; an end effector arranged at a distal end of the elongate shaft and including first (242) and second (244) jaws; a wrist that interposes the end effector and the elongate shaft and includes a distal clevis (230) that rotatably mounts the first and second jaws at a first axle, and a proximal clevis (220) operatively coupled to the elongate shaft and coupled to the distal clevis at a second axle; and an electrical conductor (772/774) extending through and electrically bypassing the proximal clevis (note paragraphs 62 and 65) and necessarily terminating ‘at’ the distal clevis to supply electrical energy to at least one of the first and second jaws via conduction (via ‘782/784’); necessarily supplying electrical energy ‘to’ (i.e., toward) the distal clevis via the electrical conductor and thereby energizing at least one of the first and second jaws via conduction, wherein a portion of the electrical conductor provides a conductive spring member (782/784); and articulating the distal clevis (i.e., rotating the jaws therein) and allowing the electrical conductor to necessarily flex (i.e., deform) at the conductive spring member as the distal clevis articulates.
Regarding claim 12, Burbank discloses (see above) a method further comprising preventing electrical discharge between the electrical conductor and the proximal clevis with an insulative covering partially covering the electrical conductor (note paragraphs 62 and 65).
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) 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Burbank in view of Slater, U.S. 5,396,900 (hereinafter Slater).
Regarding claim 11, Burbank discloses (see above) a method utilizing a surgical tool, wherein an electrical conductor of the surgical tool supplies electrical energy directly to an end effector via a distal conductor adapter (782/784) during movement of the jaws or wrist. However, Burbank fails to explicitly disclose wherein the electrical conductor is in electrical communication with the distal clevis via the conductor adapter, wherein this electrical communication is maintained during movement of the jaws or wrist. Slater teaches (note figs. 9a-b) a similar method utilizing a surgical tool, wherein an electrical conductor of the surgical tool is in electrical communication with a clevis via a conductor adapter (note col. 7, line 41), wherein this electrical communication is necessarily maintained during movement of the jaws. It is well known in the art that these different conductor configurations (i.e., conductive clevis vs. conductive jaws) are widely considered to be interchangeable. Therefore, it would have been obvious to a person having ordinary skill in the art at the time the invention was filed, to have modified the method of Burbank to utilize a tool wherein the electrical conductor is in electrical communication with the distal clevis via the conductor adapter (as taught by Slater), wherein this electrical communication is maintained during movement of the jaws or wrist. This is because this modification would have merely comprised a simple substitution of interchangeable conductor configurations in order to produce a predictable result (see MPEP 2143).
Claim(s) 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Burbank in view of Riza, U.S. 5,843,122 (hereinafter Riza).
Regarding claim 13, Burbank discloses (see above) a method utilizing a surgical tool, wherein an electrical conductor of the surgical tool supplies electrical energy to an end effector via a conductive spring member (sliding electrical contact ‘782/784’). However, Burbank fails to explicitly disclose that the conductive spring member comprises a tightly wound coil of a conductive material. Riza teaches (note figs. 3 and 6) a similar method utilizing a surgical tool, wherein an electrical conductor of the surgical tool supplies electrical energy to an end effector via a sliding electrical contact composed of a tightly wound coil of conductive material (‘109’ – note col. 10, line 57). It is well known in the art that these different sliding electrical contact configurations are widely considered to be interchangeable. Therefore, it would have been obvious to a person having ordinary skill in the art at the time the invention was filed, to have modified the method of Burbank to utilize a tool wherein the conductive spring member comprises a tightly wound coil of a conductive material (as taught by Riza). This is because this modification would have merely comprised a simple substitution of interchangeable sliding electrical contact configurations in order to produce a predictable result (see MPEP 2143). It should also be noted that a change in form or shape is generally recognized as being within the level of ordinary skill in the art, absent any showing of unexpected results. In re Dailey et al., 149 USPQ 47.
Claim(s) 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Burbank in view of Johnson, U.S. 2003/0199869 (hereinafter Johnson).
Regarding claim 14, Burbank discloses (see above) a method utilizing a surgical tool, wherein an electrical conductor of the surgical tool is necessarily ‘coupled’ to the distal clevis via a ‘conductor adapter’ (i.e., the conductor is secured relative to the distal clevis). However, Burbank fails to explicitly disclose that this coupling comprises at least one of a crimp, a solder, a weld, and any combination thereof. Johnson teaches (note fig. 8) a similar method utilizing a surgical tool, wherein this tool has components therein that are coupled via a crimp (note paragraph 50). It is well known in the art that these different coupling configurations are widely considered to be interchangeable. Therefore, it would have been obvious to a person having ordinary skill in the art at the time the invention was filed, to have modified the method of Burbank to utilize a tool having an electrical conductor that is coupled to the distal clevis at a ‘conductor adapter’ via a crimp. This is because this modification would have merely comprised a simple substitution of interchangeable coupling configurations in order to produce a predictable result (see MPEP 2143).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
U.S. 2019/0105099 (Murrell).
U.S. 2006/0079884 (Manzo).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to THOMAS ANTHONY GIULIANI whose telephone number is (571)270-3202. The examiner can normally be reached Mon - Fri 9:00-5:00.
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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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/THOMAS A GIULIANI/Primary Examiner, Art Unit 3794
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