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 .
This action is in response to the application filed on 05/28/25.
Claims 1-20 have been canceled. New claims 21-40 are pending and have been examined.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 01/05/26 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Double Patenting Rejection
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969). A timely filed terminal disclaimer in compliance with 37 CFR 1.321 (c) or 1.321 (d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP §§ 706.02(l)(1) - 706.02(l)(3) for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/process/file/efs/guidance/eTD-info-l.jsp. 4.
Claims 21 and 32 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 12 and 16 of U.S. Patent No. 11,957,342 B1; and, claims 21, 32 and 36 of Pub. No. 2024/0277336 A1. Although the claims at issue are not identical, they are not patentably distinct from each other because the only differences between the claims are either minor grammatical changes or notoriously obvious design choices. The claims are substantially co-extensive in scope, at least in regards to the novel subject matter, and differ merely in the terminology used. For example, independent claims 1, 12 and 16 of patent 11,957,342 recite the electrodes for detecting “a position of the detected media"; and, independent claims 21, 32 and 36 of Pub. No. 2024/0277336 recite the electrodes for detecting “a foreign object”;
Whereas, independent claims 21 and 32 of the current application recite the electrodes for detecting a "characteristic of the media”, which is deemed to be equivalent to the position of the media, as recited in the patented claims.
Claims 1, 12 and 16 of patent 11,957,342 additionally determining a position of the "media" by the electrodes and controller. However, it is inherent in operation that sensed data received by the electrodes would be indicative of a "characteristic" of the sensed object. Therefore, it would have been obvious to alternately substitute phraseology such as a "position of the media" for a "characteristic", as well as to provide the functional language of the electrodes sensing positions of the sensed objects, since such sensed data is typical operation and provides nothing new or unexpected.
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required: the written description fails to make use of the term “physical trait”, as disclosed in claims 23 and 33.
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 23 and 33 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.
In claims 23 and 33, the limitation of “a physical trait” renders the claim indefinite in that it is unclear what limits and bounds are? For the purposes of examination, the limitation has been interpreted as tissue thickness or type, i.e. blood vessels, veins, etc.
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) 21-30 and 32-39 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Shelton, IV et al. (2019/0201020).
Regarding claims 21, Shelton discloses a method of assessing media (i.e. tissue) engaged by an end effector of a surgical instrument of a surgical system, comprising: with a control circuit (710; pars. 362-363, 373, 389) of the surgical system, receiving signals from a plurality of electrodes (152260a-d; Fig. 66) of the end effector while the electrodes contact the media (i.e. tissue); based on the signals from the electrodes, determining with the control circuit an electrical impedance of the media (pars. 7-8, 363-364, 373,389, 602); based on the determined electrical impedance, determining with the control circuit that the end effector has made initial contact with the media (i.e. clamping; pars. 363-364, 374, 389-390); based on the determination of initial contact (clamp of tissue), evaluating with the control circuit signals received from the electrodes and thereby determining a characteristic of the media (i.e. tissue location; par. 363); and outputting the determined characteristic to a computing device of the surgical system communicably coupled with the surgical instrument (i.e. display on console 118; Fig. 2).
Regarding claim 22. Shelton discloses wherein the media comprises tissue (par. 7).
Regarding claims 23 and 33, Shelton discloses wherein the characteristic comprises at least location of the tissue relative to the end effector (par. 363).
Regarding claim 24, Shelton discloses wherein determining the characteristic includes comparing, with the control circuit, a sensed value to a stored value (pars. 345, 416, 473, 481, 515-516).
Regarding claims 25 and 35, Shelton discloses wherein the electrodes are arranged along a longitudinal axis of the end effector (Fig. 64, 66), further comprising determining with the control circuit a position of the media along the longitudinal axis based on the signals received from the electrodes (Fig. 79).
Regarding claims 26 and 38, Shelton discloses wherein the surgical instrument comprises the control circuit (par. 7).
Regarding claim 27, Shelton discloses wherein the surgical instrument includes a first jaw and a second jaw that cooperate to grasp the media, wherein the first jaw includes the electrodes (152260a-d; Fig. 66).
Regarding claims 28 and 36, Shelton discloses wherein the first jaw includes a surgical fastener cartridge (152256) that houses a plurality of surgical fasteners, further comprising deploying the surgical fasteners into the media (Fig. 66).
Regarding claims 29 and 34, Shelton discloses further comprising generating an alert based on the determined characteristic and communicating the alert to a user of the surgical system (pars. 491, 681, 686).
Regarding claims 30 and 39, Shelton discloses wherein the surgical instrument comprises a first surgical instrument of the surgical system, wherein the surgical system further includes a second surgical instrument communicably coupled with the computing device, the method further comprising communicating the determined characteristic to the second surgical instrument (par. 242).
Regarding claim 32, Shelton discloses a surgical system, comprising: a computing device (210; Fig. 8); a surgical instrument (112) communicably coupled with the computing device, the surgical instrument including an end effector having: first and second jaws configured to cooperate to grasp tissue (Fig. 66), and a plurality of electrodes (152260a-d) presented by at least one of the first or second jaws; and a control circuit (710) operably coupled with the electrodes and configured to: receive signals from the electrodes while the electrodes contact tissue (pars. 363-364), based on the signals, determine an electrical impedance of the tissue (par. 364), based on the electrical impedance, determine that the end effector has made initial contact with the tissue (i.e. clamping), based on the determination of initial contact, evaluate signals received from the electrodes and thereby determine a characteristic of the tissue (pars. 363-364, 373), and output the determined characteristic to the computing device (via console 118; Fig. 2).
Regarding claim 37, Shelton discloses wherein the first jaw includes a pair of sidewalls and a surgical fastener cartridge removably seated between the sidewalls (as best shown in Fig. 28 and 66), wherein the electrodes (152260a) are secured to the sidewalls (Fig. 66).
Allowable Subject Matter
Claims 31 and 40 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
The prior art does not disclose or make obvious the claimed combination including the following features:
Regarding claim 31, performing an action with a second surgical instrument based on the determined characteristics.
Regarding claim 40, wherein the surgical system is configured to transmit the determined characteristic from the first surgical instrument to the second surgical instrument and thereby affect operation of the second surgical instrument.
The combinations of the claimed limitations are novel and found to be allowable over prior art. The cited references taken singly or in combination do not anticipate or make obvious the Applicant’s claimed invention.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHELLE LOPEZ whose telephone number is (571)272-4464. The examiner can normally be reached Monday thru Friday 8:30 am to 4:30 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Anna Kinsaul can be reached at (571) 270 - 1926. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHELLE LOPEZ/ Primary Examiner, Art Unit 3731