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 03/21/2025 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitations are: “a generator unit for generating radiofrequency or microwave electromagnetic energy” in claim 14 and “the generator unit is further configured to simultaneously or alternatively generate microwave electromagnetic energy” in claim 15.
Because these claim limitations are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
The specification discloses on [page 19: lines 9-17] that the generator unit is a generator “the generator unit includes a generator”. The language in claims 14 and 15 will be interpreted as requiring the disclosed structure in [page 19: lines 9-17] which is a generator.
If applicant does not intend to have these limitations interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitations recite sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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.
Claims 1-15 are 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.
Regarding claim 1, line 16 recites “wherein the first blade element or the second blade comprises” it is unclear whether the “second blade” is the same as the “second blade element” mentioned prior.
Regarding claims 2-15, the claims are also seen as unclear as they inherit the deficiencies of independent claim 1.
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.
Claims 1-5, and 7-15 are rejected under 35 U.S.C. 103 as being unpatentable over Livneh (US20080015566A1) herein referred to as “Livneh” in view of Hancock et al (US20160331455A1) herein referred to as “Hancock”.
Regarding claim 1, An electrosurgical instrument for sealing and cutting tissue, ([Abstract] an electrosurgical instrument for cutting and sealing tissue) comprising: an instrument shaft ([0066] contains a shaft 68) comprising a transmission line for conveying radio frequency electromagnetic energy; ([0064] the feed 56 is seen as the transmission line for conveying the radiofrequency energy) a first jaw attached to the instrument shaft and including a first surface, ([0049] the first jaw 60 is attached to the shaft) a second jaw attached to the instrument shaft and including a second surface, ([0049] the second jaw 62 is attached to the shaft) a first blade element, ([0067] a first blade 150) and a second blade element, ([0067] a second blade) wherein the first jaw and the second jaw can be moved between an open position, in which the tissue can be inserted between the first surface and the second surface, and a closed position, in which the first and second surfaces are brought together to clamp the tissue there between, ([0046] the jaw can be moved between an open and closed position and tissue can be inserted then clamped between the first and second surfaces, which is seen as the part of the jaw which contacts tissue) wherein the first jaw includes a first recessed portion in which the first blade element can be received in a rest position, ([0068] the first recessed portion is seen as the channel 61) wherein the second jaw includes a second recessed portion in which the second blade element can be received in the rest position, ([0068] the second recessed portion is seen as the channel 63) wherein the first blade element and the second blade element lie alongside each other in a cutting position, (See FIG 26 where the first blade 150 and the second blade 152 lie alongside each other in a scissors-like configuration which is seen as being in a cutting position; [0067]) wherein, in the cutting position, the second blade element lies adjacent to the first laterally facing surface of the first blade element (See FIG 26 where the second blade is adjacent to the first lateral facing surface of the first blade). Although Livneh does disclose the blades 150 and 152 connected to the wire 110 which can be seen as a transmission line and which can be electrified with RF energy ([0069] blades 150 and 152 are connected to the wire 110 and [0065] the wire can be electrically connected to the blade for conducting electric current to the blade), Livneh does not explicitly disclose: a transmission line for microwave energy and a longitudinally extending planar dielectric body having a first electrode on a first laterally facing surface thereof; and a second electrode spaced away from the first electrode and electrically isolated therefrom by at least the planar dielectric body; and wherein the first electrode and the second electrode are operable: as active and return electrodes for delivering radiofrequency electromagnetic energy and as microwave electrodes for emitting microwave electromagnetic energy.
Hancock discloses: a transmission line for microwave energy ([0058] contains a transmission line for microwave energy) and a longitudinally extending planar dielectric body having a first electrode on a first laterally facing surface thereof; (See FIG 10 where 208 is the dielectric body and 210 is seen as the first electrode on the laterally facing surface of the dielectric body) and a second electrode spaced away from the first electrode and electrically isolated therefrom by at least the planar dielectric body; (See FIG 10 where piece 212 is seen as the second electrode body which is spaced away from the first electrode and isolated by the dielectric body; See also [0095] the first conductive wire, 210 is isolated from the second conductive wire 212, which are seen as the first and second electrodes respectively) and wherein the first electrode and the second electrode are operable: as active and return electrodes for delivering radiofrequency electromagnetic energy and as microwave electrodes for emitting microwave electromagnetic energy ([0006] the electrodes act as an active electrode and a return electrode for delivering RF energy and microwave energy).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the electrosurgical instrument as disclosed in Livneh to include microwave energy as disclosed in Hancock. The motivation being that using both microwave energy together with RF energy creates a more effective seal when coagulating tissue since microwave energy can add depth control, as opposed to using RF energy alone. (Hancock [0055]).
Regarding claim 2, Livneh discloses: The electrosurgical instrument according to claim 1, further comprising a joint having a pivot axis, wherein the first jaw, the second jaw, the first blade element or the second blade element are rotatable around the pivot axis (See annotated FIG 22 where the first jaw containing the first blade and the second jaw containing the second blade is rotatable about the pivot axis of the pin 94; See also [0053] and FIG 26).
Regarding claim 3, Livneh discloses: The electrosurgical instrument according to claim 2, wherein the first blade element is movable relative to the first jaw, or the second blade element is movable relative to the second jaw (See FIG 24 where the first blade 150 moves relative to the first jaw 60 and the second blade 152 moves relative to the second jaw 62).
Regarding claim 4, Livneh discloses: The electrosurgical instrument according to claim 1, wherein, in the rest position, the first blade element is flush the first surface or the second blade element is flush with the second surface (See FIG 22 where the first blade 150 is flush to the first surface or the second blade 152 is flush with the second surface).
Regarding claim 5, Livneh discloses: The electrosurgical instrument according to claim 1, wherein the first jaw is point-symmetrical to the second jaw (See FIG 22 where the first jaw, 60 is seen as point-symmetrical to the second jaw, 62).
Regarding claim 7, Livneh discloses: The electrosurgical instrument according to claim 6, however, Livneh does not explicitly disclose: wherein, in the rest position, the first electrode is completely exposed and configured to contact tissue.
Hancock discloses: wherein, in the rest position, the first electrode is completely exposed and configured to contact tissue ([0014] the conductive element such as the conductive wire which is seen as the electrode is exposed to contact and deliver energy to tissue).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the electrosurgical instrument as disclosed in Livneh to include microwave energy as disclosed in Hancock. The motivation being that using both microwave energy together with RF energy creates a more effective seal when coagulating tissue since microwave energy can add depth control, as opposed to using RF energy alone. (Hancock [0055]).
Regarding claim 8, Livneh discloses: The electrosurgical instrument according to claim 7, however, Livneh does not disclose: wherein, in the rest position, a portion of the planar dielectric body protrudes from the filler portion and the first electrode is arranged on the protruding portion of the planar dielectric body.
Hancock discloses: wherein, in the rest position, a portion of the planar dielectric body protrudes from the filler portion and the first electrode is arranged on the protruding portion of the planar dielectric body (See FIG 10 where in the rest position, the planar dielectric body 208 protrudes from the filler portion 206 and has the first electrode 210 arranged on this protruding dielectric body).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the electrosurgical instrument as disclosed in Livneh to include microwave energy as disclosed in Hancock. The motivation being that using both microwave energy together with RF energy creates a more effective seal when coagulating tissue since microwave energy can add depth control, as opposed to using RF energy alone. (Hancock [0055]).
Regarding claim 9, Livneh discloses: The electrosurgical instrument according to claim 1, however, Livneh does not disclose: wherein the second electrode is located on the second laterally facing surface of the planar dielectric body of the first blade element or the second blade element.
Hancock discloses: wherein the second electrode is located on the second laterally facing surface of the planar dielectric body of the first blade element or the second blade element (See FIG 9 where the second electrode 212 is located on the laterally facing surface of the planar dielectric body).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the electrosurgical instrument as disclosed in Livneh to include microwave energy as disclosed in Hancock. The motivation being that using both microwave energy together with RF energy creates a more effective seal when coagulating tissue since microwave energy can add depth control, as opposed to using RF energy alone. (Hancock [0055]).
Regarding claim 10, Livneh discloses: The electrosurgical instrument according to claim 1, wherein the first blade element is point-symmetrical to the second blade element in the rest position and the closed position (See FIG 23 where the first blade 150 is seen as point-symmetrical to the second blade 152, in the rest and closed positions).
Regarding claim 11, Livneh discloses: The electrosurgical instrument according to claim 1, wherein the first blade element or the second blade element each include a support arm, (See FIG 25 where the wire 110 is seen as the support arm that connects to the blades [0059]) however, Livneh does not disclose: a support arm to which the planar dielectric body is attached, the support arm forming a part of an electrical connection between the transmission line and the second electrode.
Hancock discloses: a support arm to which the planar dielectric body is attached, ([0096] the hinge element 214 is seen as the support arm which attaches the shell containing the dielectric body and therefore also seen as attaching to the dielectric body) the support arm forming a part of an electrical connection between the transmission line and the second electrode ([0097] the hinge element 214 can be made of conductive material and be connected to the coaxial cable 202 which is connected to the first and second electrodes and therefore seen as forming part of an electrical connection).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the electrosurgical instrument as disclosed in Livneh to include microwave energy as disclosed in Hancock. The motivation being that using both microwave energy together with RF energy creates a more effective seal when coagulating tissue since microwave energy can add depth control, as opposed to using RF energy alone. (Hancock [0055]).
Regarding claim 12, Livneh discloses: The electrosurgical instrument according to claim 11, wherein the support arm is attached to a joint rotatably around a pivot axis (See FIG 25 where the support arm 110 is attached to joint 156 which is rotatable about the pivot axis of the pin 94).
Regarding claim 13, Livneh in view of Hancock discloses: The electrosurgical instrument according to claim l1, however, Livneh in view of Hancock does not disclose: wherein the second electrode is arranged between the planar dielectric body and the support arm and is exposed between the planar dielectric body and the support arm so that the second electrode is configured to contact tissue.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the electrosurgical instrument as disclosed in Livneh in view of Hancock to rearrange the second electrode to be between the planar dielectric body and the support arm since there is no criticality placed on the arrangement of the second electrode claimed in the Applicant specification and it has been held that rearranging parts of an invention involves only routine skill in the art. In re Japikse, 86 USPQ 70.
Regarding claim 14, Livneh discloses: An electrosurgical apparatus for sealing and cutting tissue, ([Abstract] for sealing and cutting tissue) comprising; a generator unit for generating radiofrequency or microwave electromagnetic energy, ([0045] the power supply 54 is seen as a generator unit which generated radiofrequency energy) however, Livneh does not explicitly disclose: and the electrosurgical instrument according to claim 1, wherein the transmission line for conveys the radiofrequency or microwave electromagnetic energy from the generator unit to the first electrode or the second electrode.
Hancock discloses: and the electrosurgical instrument according to claim 1, wherein the transmission line for conveys the radiofrequency or microwave electromagnetic energy from the generator unit to the first electrode or the second electrode ([0097] the coaxial cable which is seen as the transmission line conveys the radiofrequency energy to the conductive wire 210, which is seen as the first electrode).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the electrosurgical instrument as disclosed in Livneh to include microwave energy as disclosed in Hancock. The motivation being that using both microwave energy together with RF energy creates a more effective seal when coagulating tissue since microwave energy can add depth control, as opposed to using RF energy alone. (Hancock [0055]).
Regarding claim 15, Livneh discloses: The electrosurgical apparatus according to claim 14, however, Livneh does not explicitly disclose: wherein the generator unit is further configured to simultaneously or alternatingly generate microwave electromagnetic energy of the first frequency and radiofrequency electromagnetic energy of a second frequency.
Hancock discloses: wherein the generator unit is further configured to simultaneously or alternatingly generate microwave electromagnetic energy of the first frequency and radiofrequency electromagnetic energy of a second frequency ([0061] the generator can generate both RF and microwave energy, both of which comprise different frequencies and is therefore seen as a first frequency and a second frequency).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the electrosurgical instrument as disclosed in Livneh to include microwave energy as disclosed in Hancock. The motivation being that using both microwave energy together with RF energy creates a more effective seal when coagulating tissue since microwave energy can add depth control, as opposed to using RF energy alone. (Hancock [0055]).
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Livneh in view of Hancock in further view of Jones (US20160199122A1) herein referred to as “Jones.”
Regarding claim 6, Livneh in view of Hancock discloses: The electrosurgical instrument according to claim 1, wherein the first jaw or the second jaw includes a shell and a filler portion, (Hancock [0095] the support body 206 is an insulating fill which is seen as the filler portion) wherein the filler portion is arranged in a cavity defined by the shell, (Hancock [0095] the fill is located between the metal shell 204 which is seen as being arranged in a cavity) however, Livneh in view of Hancock does not explicitly disclose: wherein the shell and the filler portion define the first recessed portion or the second recessed portion, respectively.
Jones discloses: wherein the shell and the filler portion define the first recessed portion or the second recessed portion, respectively ([0047] the flowable plastic which is seen as the filler portion flows around the insert to form a U-shaped groove which is seen as a recessed portion).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the filler portion as disclosed in Livneh in in view of Hancock to include the filler around the recessed portion as disclosed in Jones. The motivation being that having a groove allows for a member such as an electric lead to pass through. (Jones [0048]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTINA M GANAN-SINGH whose telephone number is (571)272-3194. The examiner can normally be reached Monday to Friday 7:30am to 5:00pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joanne M Rodden can be reached at 3032974276. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/C.G.S/Examiner, Art Unit 3794
/JOANNE M RODDEN/Supervisory Patent Examiner, Art Unit 3794
Prosecution Insights