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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 12/17/2024 was filed after the mailing date of the application on 12/17/2024. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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.
Claims 1-2 and 9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Lyons (US 2024/0032987), herein after “Lyons”.
Regarding claim 1, Lyons teaches “An ultrasonic treatment instrument (abstract) comprising: an ultrasonic blade (blade 162) configured to supply ultrasonic vibration and a high frequency current to a living tissue, respectively (p.[0003]); a jaw (jaw 164) configured to open and close with respect to the ultrasonic blade (p.[0036]); an abutment portion (jaw liner 184/584) provided in the jaw (Fig. 3C) and made of a first resin material (PTFE, p.[0063]), the abutment portion being configured to abut against the ultrasonic blade when the jaw is closed with respect to the ultrasonic blade (Fig. 3C, p.[0061-0064]); at least a part of the jaw being made of a second resin material (overmolded plastic, p.[0061-0062]); the jaw including an electrode (first and second electrically-conductive plates 586a, 586b, Fig. 3C) configured to supply the high frequency current on at least a part of a contact surface that is included in the jaw (conductive plates, p.[0061-0062]) the contact surface being configured to be in contact with the living tissue (p.[0006], p.[0053], p.[0061]).”
Regarding claim 2, the limitations of claim 1 are taught as described above. Lyons teaches “the abutment portion is provided at a center portion of the jaw in a width direction, and the electrode is provided on at least a part of each of contact surfaces located on both sides of the abutment portion in the width direction (Fig. 3C)”.
Regarding claim 9, the limitations of claim 1 are taught as described above. Lyons teaches “a metal portion for securing rigidity of the jaw is provided inside the jaw (p.[0061-0062], Fig. 3C, spacer-apart upright supports 588)”.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
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 3 is rejected under 35 U.S.C. 103 as being unpatentable over Lyons in view of Legaspi (US 2022/0079652), herein after “Legaspi”.
Regarding claim 3, the limitations of claim 1 are taught as described above. Lyons does not teach that the second resin material is polyether ether ketone or polyphenyl sulfone, but Legaspi does in an analogous medical device. Legaspi teaches "wherein the second resin material is polyether ether ketone or polyphenyl sulfone" in p.[0044] which states that " The first support member 11 is an elongated flat plate extending in the longitudinal direction of the grip portion 7, and is made of, for example, a resin material having low thermal conductivity such as polyether ether ketone (PEEK)". It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use PEEK in the Lyons as taught in Legaspi. PEEK is known for use in the art for low thermal conductivity and produces predictable results of limiting the flow of heat from the jaw to the tissue during use.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Lyons in view of Toth (US 2015/0224326), herein after “Toth”.
Regarding claim 4, the limitations of claim 1 are taught as described above. Lyons does not explicitly teach "wherein the electrode is formed by three-dimensional plating processing", however Toth does in an analogous electrosurgical device. Toth teaches "wherein the electrode is formed by three-dimensional plating processing" in p.[0198]. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the electrode of Toth in Lyons. As taught in Toth, the use of plating "may be advantageous to ensure that each electrode applies adequate pressure to the adjacent tissues and/or to improve the changes of tissue contact with a plurality of the electrodes" and produces predictable results of improving tissue contact with the electrodes.
Claims 5-7 are rejected under 35 U.S.C. 103 as being unpatentable over Lyons in view of Morisaki (WO 2015/0137139), herein after “Morisaki”.
Regarding claim 5, the limitations of claim 1 are taught as described above. Lyons does not teach "a cylindrical pin" or "a pipe to which the pin is attached, the pipe rotatably supporting the jaw by the pin, where the electrode is electrically coupled to the pipe via the pin" but Morisaki does in an analogous jaw-based electrosurgical device. Morisaki teaches "a cylindrical pin (connection pin 56)" and "a pipe (moveable pipe 52) to which the pin is attached ("the movable pipe 52 is connected to the jaw 60 via the connection pin 56 which is a connection member"), the pipe rotatably supporting the jaw by the pin (Fig. 5), wherein the electrode is electrically coupled to the pipe via the pin ("The high frequency energy transmitted to the movable pipe 52 is transmitted to the jaw 60 through the connection pin 56")". It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the system of Morisaki in Lyons. The use of the pin and pipe produce predictable results of allowing the jaw to flex and deliver electrical energy to the electrode.
Regarding claim 6, the limitations of claim 5 are taught as described above. Lyons does not teach "wherein the the jaw is provided with an insertion hole through which the pin is inserted, and an inner surface of the insertion hole is provided with a first electrically conductive surface configured to electrically couple the pin and the electrode", however, Morisaki does in an analogous electrosurgical device. Morisaki teaches "wherein the jaw is provided with an insertion hole through which the pin is inserted (connection holes 73A, 73B, 103A, 103B), and an inner surface of the insertion hole (inner surface of connection holes 103A, 103B) is provided with a first electrically conductive surface configured to electrically couple the pin and the electrode ("The movable protrusion 54 is formed with a through hole 59 that penetrates the movable protrusion 54 in the width direction. The connection pin 56 is inserted through the connection hole 73A of the jaw projection piece 71A, the through hole 59 of the movable projection 54, and the connection hole 73B of the jaw projection piece 71B. The connection pin 56 comes into contact with the movable pipe 52 at the movable protrusion 54 and also comes into contact with the support main body 68 inside the support portion 61 at the jaw protruding piece 71A and the jaw protruding piece 71B. For this reason, high-frequency energy is transmitted from the movable pipe 52 (high-frequency transmission unit) to the inside of the support unit 61 without passing through the surface (insulating coating unit 68) of the support unit 61 by the connection pin 56 that is a connection member.")". It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the system of Morisaki in Lyons. The use of the insertion hole and pin to electrify the electrode produces predictable results of providing the electrode with electricity.
Regarding claim 7, the limitations of claim 6 are taught as described above. Lyons does not teach "wherein the jaw is provided with a second electrically conductive surface configured to electrically couple the first electrically conductive surface and the electrode", but Morisaki does in an analogous electrosurgical device. Morisaki teaches "wherein the jaw is provided with a second electrically conductive surface configured to electrically couple the first electrically conductive surface and the electrode (relay member 101, the second electrode surface 93B on the electrode member 65)." It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the system of Morisaki in Lyons. The use of the second electrically conductive surface of the jaw is known in the art and produces predictable results of applying electrical energy to the tissue clamped within the jaw.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Lyons in view of Kasai (US 2020/0205880), herein after “Kasai”.
Regarding claim 8, the limitations of claim 1 are taught as described above. Lyons does not explicitly teach "wherein a coating material having non-adhesiveness to the living tissue is provided on the electrode", however, Kasai does. Kasai teaches "wherein a coating material having non-adhesiveness to the living tissue is provided on the electrode (p.[0004])". It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use a coating material with non-adhesiveness to the living tissue on the electrode, as taught in Kasai, in Morisaki. As stated in Kasai, "coating of a non-adhesive substance on the electrode surface may be used in order to prevent the living tissue from adhering to the electrode surface" and produces predictable results of preventing adhesion of the electrode to the tissue surface.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Abigail M Bock whose telephone number is (571)272-8856. The examiner can normally be reached M-F 7:30am - 5:00pm.
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/ABIGAIL BOCK/Examiner, Art Unit 3794
/JOANNE M RODDEN/Supervisory Patent Examiner, Art Unit 3794
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