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 .
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 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 1-12, 14, and 17-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hermes et al., US 20160317216, herein referred to as “Hermes”.
Regarding claim 1, Hermes discloses a surgical instrument (Figures 1-4B), comprising: a shaft assembly (Figures 2A-B: wrist assembly 110); and an end effector distally extending from the shaft assembly in a distal direction (Figures 2A-B: jaw assembly 150), wherein the end effector comprises: a first jaw (Figure 2B: jaw member 174) having a first inner portion (Figure 2B: opposing grasping surface 184) and an opposing, first outer portion (Figure 2C: back side of jaw member 174), a second jaw (Figure 2B: jaw member 172) having a second inner portion (Figure 2C: grasping surface 194) and an opposing, second outer portion (Figure 2B: back side of jaw member 172) and configured to selectively move relative to the first jaw from a closed configuration toward an open configuration wherein the first and second inner portions face toward each other in the closed configuration (Figures 2A-B), a first bipolar electrode secured to the first inner portion of the first jaw or the second inner portion of the second jaw (Figure 2B: return electrode 180a and [0062]: “It is to be understood that return electrodes 180a, 180b, and 181 may perform electrosurgical procedures or functions other than acting as a return electrode, and may operate collectively or independently in a bipolar, monopolar, sealing, ground electrode, passive electrode, or any other mode.”), a second bipolar electrode secured to the first inner portion of the first jaw or the second inner portion of the second jaw (Figure 2C: first electrode 190a and [0059]: “It should be understood that sealing electrodes 190a, 190b may perform electrosurgical procedures or functions other than sealing, and may operate collectively or independently in a bipolar, monopolar, return electrode, ground electrode, passive electrode, or any other mode.”), and a first monopolar electrode secured to the first outer portion of the first jaw or the second outer portion of the second jaw (Figure 2C: cutting electrode assembly 188 and [0066]).
Regarding claim 2, Hermes discloses the surgical instrument of claim 1, wherein the first bipolar electrode is secured to the first inner portion of the first jaw (Figure 2B: return electrode 180a and [0062]: “It is to be understood that return electrodes 180a, 180b, and 181 may perform electrosurgical procedures or functions other than acting as a return electrode, and may operate collectively or independently in a bipolar, monopolar, sealing, ground electrode, passive electrode, or any other mode.”), wherein the second bipolar electrode is secured to the second inner portion of the second jaw (Figure 2C: first electrode 190a and [0059]: “It should be understood that sealing electrodes 190a, 190b may perform electrosurgical procedures or functions other than sealing, and may operate collectively or independently in a bipolar, monopolar, return electrode, ground electrode, passive electrode, or any other mode.”), and wherein the first monopolar electrode is secured to the first outer portion of the first jaw (Figure 2C: cutting electrode assembly 188 and [0066]).
Regarding claim 3, Hermes discloses the surgical instrument of claim 1, wherein the first monopolar electrode is secured to the first outer portion of the first jaw (Figure 2C: cutting electrode assembly 188 and [0066]), wherein the first outer portion of the first jaw includes a first outer surface, wherein the first monopolar electrode distally extends along the first outer surface (Figure 2C and [0064]).
Regarding claim 4, Hermes discloses the surgical instrument of claim 3, wherein the first monopolar electrode defines a fin shape (Figure 2C and [0064]).
Regarding claim 5, Hermes discloses the surgical instrument of claim 3, wherein the first monopolar electrode includes an electrode height and an electrode width, wherein the electrode height upwardly extends from the first outer surface in an upward direction, wherein the electrode width laterally extends along the first outer surface in a lateral direction transverse to the upward and distal directions, and wherein the electrode height is greater than the electrode width (Figures 2C and 4C: the height of cutting electrode assembly 188 is greater than the width at electrode 186).
Regarding claim 6, Hermes discloses the surgical instrument of claim 1, wherein the first monopolar electrode includes a bulbous tip at a distal end thereof (Figure 4C: the distal end of cutting electrode assembly 188 is rounded, thus it has a bulbous tip).
Regarding claim 7, Hermes discloses the surgical instrument of claim 1, wherein the first jaw is pivotable relative to the shaft assembly ([0054]: “Turning now to FIGS. 2A-2C, end effector 100 connects to robot arms 2, 3 and is manipulatable by control device 4 and includes a wrist assembly 110, and a jaw assembly 150 pivotally connected to the wrist assembly 110.” And [0056]).
Regarding claim 8, Hermes discloses the surgical instrument of claim 7, wherein the second jaw is pivotable relative to the shaft assembly ([0054]: “Turning now to FIGS. 2A-2C, end effector 100 connects to robot arms 2, 3 and is manipulatable by control device 4 and includes a wrist assembly 110, and a jaw assembly 150 pivotally connected to the wrist assembly 110.” And [0056]).
Regarding claim 9, Hermes discloses the surgical instrument of claim 1, wherein the first monopolar electrode is fixedly secured to the first jaw (Figure 2C and [0064]).
Regarding claim 10, Hermes discloses the surgical instrument of claim 1, wherein the end effector is sized to fit within a trocar ([0067]: “In some embodiments, the gap distance between opposing sealing surfaces during tissue treatment may range from about 0.001 inches to about 0.006 inches.” Thus the whole assembly can fit within a trocar).
Regarding claim 11, Hermes discloses a surgical instrument (Figures 1-4B), comprising: a shaft assembly (Figures 2A-B: wrist assembly 110); and an end effector distally extending from the shaft assembly in a distal direction (Figures 2A-B: jaw assembly 150), wherein the end effector comprises: a first jaw (Figure 2B: jaw member 174) having a first inner surface (Figure 2B: opposing grasping surface 184) and an opposing, first outer surface (Figure 2C: back side of jaw member 174), a second jaw (Figure 2B: jaw member 172) having a second inner surface (Figure 2C: grasping surface 194) and an opposing, second outer surface (Figure 2B: back side of jaw member 172) and configured to selectively pivot relative to the first jaw ([0054]: “Turning now to FIGS. 2A-2C, end effector 100 connects to robot arms 2, 3 and is manipulatable by control device 4 and includes a wrist assembly 110, and a jaw assembly 150 pivotally connected to the wrist assembly 110.” And [0056]) from a closed configuration toward an open configuration, wherein the first and second inner surfaces face toward each other in the closed configuration (Figures 2A-B), a first bipolar electrode secured to the first inner surface of the first jaw (Figure 2B: return electrode 180a and [0062]: “It is to be understood that return electrodes 180a, 180b, and 181 may perform electrosurgical procedures or functions other than acting as a return electrode, and may operate collectively or independently in a bipolar, monopolar, sealing, ground electrode, passive electrode, or any other mode.”), a second bipolar electrode secured to the second inner surface of the second jaw (Figure 2C: first electrode 190a and [0059]: “It should be understood that sealing electrodes 190a, 190b may perform electrosurgical procedures or functions other than sealing, and may operate collectively or independently in a bipolar, monopolar, return electrode, ground electrode, passive electrode, or any other mode.”), and a first monopolar electrode secured to the first outer surface of the first jaw (Figure 2C: cutting electrode assembly 188 and [0066]) and distally extends along the first outer surface (Figure 2C), wherein the first monopolar electrode defines a fin shape (Figure 4C).
Regarding claim 12, Hermes discloses a surgical instrument of claim 11, further comprising a power supply (Figure 1: electrosurgical generator 14) having a bipolar power supply and a monopolar power supply ([0052]), wherein the bipolar power supply is configured to supply energy to the first bipolar electrode and to the second bipolar electrode ([0062]: “It is to be understood that return electrodes 180a, 180b, and 181 may perform electrosurgical procedures or functions other than acting as a return electrode, and may operate collectively or independently in a bipolar, monopolar, sealing, ground electrode, passive electrode, or any other mode.” And [0059]: “It should be understood that sealing electrodes 190a, 190b may perform electrosurgical procedures or functions other than sealing, and may operate collectively or independently in a bipolar, monopolar, return electrode, ground electrode, passive electrode, or any other mode.”), wherein the monopolar power supply is configured to supply energy to the first monopolar electrode ([0066]).
Regarding claim 14, Hermes discloses the surgical instrument of claim 12, wherein the power supply is configured to selectively operate the bipolar power supply or the monopolar power supply ([0052]).
Regarding claim 17, Hermes discloses the surgical instrument of claim 11, wherein the first jaw includes an elongate length, wherein the first monopolar electrode is in a shape of a fin that extends along the elongate length of the first jaw (Figure 2C: cutting electrode assembly 188).
Regarding claim 18, Hermes discloses a method of applying at least one of a monopolar energy and a bipolar energy to a tissue (Abstract and [0052]) with a surgical instrument (Figures 1-4B)), the surgical instrument including a shaft assembly (Figures 2A-B: wrist assembly 110); and an end effector distally extending from the shaft assembly in a distal direction (Figures 2A-B: jaw assembly 150), wherein the end effector comprises: a first jaw (Figure 2B: jaw member 174) having a first inner portion (Figure 2B: opposing grasping surface 184) and an opposing, first outer portion (Figure 2C: back side of jaw member 174), a second jaw (Figure 2B: jaw member 172) having a second inner portion (Figure 2C: grasping surface 194) and an opposing, second outer portion (Figure 2B: back side of jaw member 172) and configured to selectively move relative to the first jaw from a closed configuration toward an open configuration wherein the first and second inner portions face toward each other in the closed configuration (Figures 2A-B), a first bipolar electrode secured to the first inner portion of the first jaw or the second inner portion of the second jaw (Figure 2B: return electrode 180a and [0062]: “It is to be understood that return electrodes 180a, 180b, and 181 may perform electrosurgical procedures or functions other than acting as a return electrode, and may operate collectively or independently in a bipolar, monopolar, sealing, ground electrode, passive electrode, or any other mode.”), a second bipolar electrode secured to the first inner portion of the first jaw or the second inner portion of the second jaw (Figure 2C: first electrode 190a and [0059]: “It should be understood that sealing electrodes 190a, 190b may perform electrosurgical procedures or functions other than sealing, and may operate collectively or independently in a bipolar, monopolar, return electrode, ground electrode, passive electrode, or any other mode.”), and a first monopolar electrode secured to the first outer portion of the first jaw or the second outer portion of the second jaw (Figure 2C: cutting electrode assembly 188 and [0066]), the method comprising: selectively energizing the first monopolar electrode or the first and second bipolar electrodes thereby applying at least one of the monopolar energy and the bipolar energy to the tissue ([0052]).
Regarding claim 19, Hermes discloses the method of claim 18, wherein selectively energizing further includes: selectively energizing the first monopolar electrode thereby applying the monopolar energy to the tissue (Figure 2C: cutting electrode assembly 188 and [0052]); and selectively energizing the first and second bipolar electrodes thereby applying the monopolar energy to the tissue (Figures 2B-C: return electrode 180a and first electrode 190a and [0052]).
Regarding claim 20, Hermes discloses the method of claim 18, further comprising electrically isolating the monopolar electrode from each of the first and second bipolar electrodes ([0060]).
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 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Hermes in view of Shelton, IV et al., US 20210196362, herein referred to as “Shelton”.
Regarding claim 13, Hermes discloses the surgical instrument of claim 12, but does not explicitly disclose a surgical instrument wherein the bipolar power supply and the monopolar power supply are electrically isolated from one another.
However, Shelton teaches a surgical instrument wherein the bipolar power supply and the monopolar power supply are electrically isolated from one another ([0121]: “Furthermore, the bipolar and monopolar energies are delivered using electrically isolated generators.”).
It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to modify the surgical instrument of Hermes so that the bipolar power supply and the monopolar power supply are electrically isolated from one another as taught by Shelton to monitor unexpected power crossover (Shelton [0121]).
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Hermes in view of Batchelor et al., US 20140276794, herein referred to as “Batchelor”.
Regarding claim 15, Hermes discloses the surgical instrument of claim 11, but does not explicitly disclose a surgical instrument wherein the end effector further includes a second monopolar electrode positioned along a second outer surface of the second jaw.
However, Batchelor teaches a surgical instrument (Figure 14) wherein the end effector further includes a second monopolar electrode positioned along a second outer surface of the second jaw (Figure 14: electrodes 20 and 48 and [0087]: “electrodes 20 and 48 would act as a common monopolar electrode”).
It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to modify the surgical instrument of Hermes so that the end effector further includes a second monopolar electrode positioned along a second outer surface of the second jaw as taught by Batchelor so that the instrument can function as a two sided scalpel (Batchelor [0087]).
Regarding claim 16, Hermes in view of Batchelor discloses the surgical instrument of claim 15, and Batchelor further discloses a surgical instrument wherein the second monopolar electrode is shaped the same as the first monopolar electrode (Figure 14: electrodes 20 and 48 and [0087]: “electrodes 20 and 48 would act as a common monopolar electrode”).
It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to modify the surgical instrument of Hermes so that the second monopolar electrode is shaped the same as the first monopolar electrode as taught by Batchelor so that the instrument can function as a two sided scalpel (Batchelor [0087]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Nora W Rhodes whose telephone number is (571)272-8126. The examiner can normally be reached Monday-Friday 10am-6pm EST.
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/NORA W RHODES/Examiner, Art Unit 3794
/JOANNE M RODDEN/Supervisory Patent Examiner, Art Unit 3794
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