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 § 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 10-13 and 21-26 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 10, “wherein axial movement in a distal direction effects firing of fasteners from the surgical instrument” is indefinite because it is unclear what element is moving axially to effect firing of fasteners. For examination purposes, “wherein axial movement in a distal direction effects firing of fasteners from the surgical instrument” is being interpreted to mean “wherein axial movement of the engagement member in a distal direction effects firing of fasteners from the surgical instrument”.
Regarding claims 11-13 and 21-26, claims 11-13 and 21-26 are rejected because they depend from rejected claim 10.
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.
Claims 1-9 are rejected under 35 U.S.C. 103 as being unpatentable over Contini et al (US 2016/0310134), hereinafter Contini, in view of Smith et al (US 2012/0071796), hereinafter Smith.
Regarding claim 1, Contini discloses a surgical fastener applier (Fig. 1) comprising:
A housing (Fig. 1, item 10) containing a compartment therein;
An elongated member (Fig. 1, item 200) extending distally from the housing;
A first jaw (Fig. 53, item 408) and a second jaw (Fig. 53, item 406) adjacent a distal portion of the elongated member, at least the first jaw movable with respect to the second jaw to clamp tissue between the first and second jaws (Para. 0312);
A fastener firing mechanism (Fig. 26, item 248) positioned within the housing, the firing mechanism movable between a first position and a second position, wherein in the second position, the firing mechanism effects firing of fasteners into the tissue clamped between the first and second jaws (Para. 0336);
A power pack (Fig. 5, item 101) removably loadable into the compartment (Para. 0336-0339), the power pack having a motor (Fig. 12, item 152, 154, 156) and an engagement member (Fig. 16, items 152a, 154a, 156a) removably engageable with the firing mechanism when the power pack is loaded into the compartment (Para. 0336), to effect movement of the firing mechanism from the first position to the second position (Para. 0339).
An interchangeable battery (Fig. 12, item 144) removably connectable with the power pack for powering the motor (Para. 0336-0339), the interchangeable battery pack preloadable onto or into the power pack (Fig. 13, batteries 144 are loaded into power pack 101 before power pack is inserted into tool) before loading of the power pack into the fastener applier (Para. 0336-0339).
Contini does not expressly disclose the interchangeable battery pack removeable and replaceable with another battery pack.
However, Smith teaches an interchangeable battery pack (Smith, Fig. 1, item 301) removeable and replaceable with another battery pack (Smith, Para. 0298).
It would have been obvious to a person of ordinary skill in the art at the effective filing date of the invention having the teachings of Contini and Smith to modify the surgical fastener applier of Contini to include the removable and replaceable interchangeable battery pack of Smith. A person of ordinary skill in the art would have been motivated to make such change in order to permit the battery assembly to be easily replaced during complex surgical procedures (Smith, Para. 0298).
Regarding claim 2, Contini discloses the surgical fastener applier further comprising a cover (Fig. 5, item 10a) on the housing openable to access the compartment within the housing, wherein the cover includes a first seal to seal about the cover in a closed position of the cover to protect the power pack positioned within the housing (Para. 0280).
Regarding claim 3, Contini discloses the surgical fastener applier further comprising a second seal to block passage of body fluids from the elongated member into the compartment (Para. 0298).
Regarding claim 4, Contini discloses the surgical fastener applier wherein the battery pack is slidable into a cavity in the power pack (Para. 0296).
Regarding claim 5, Contini discloses the surgical fastener applier wherein the battery pack is mountable to an outer surface of the power pack (Fig. 5 and 6, battery pack 101 is mountable to outer surface 10 of power pack via insertion into cavity 10c).
Regarding claim 6, Contini discloses the surgical fastener applier wherein the battery pack has an engagement tab (Fig. 13, item 144) for gripping by a user to facilitate removal from the power pack (Para. 0306).
Regarding claim 7, Contini discloses the surgical fastener applier wherein the power pack includes a second engagement member (Fig. 16, items 152a, 154a, 156a), the second engagement member removably engageable with an articulating mechanism (Fig. 26, item 258) in the housing of the surgical fastener applier to effect articulation of the first and second jaws from a linear position to a position angled with respect to a longitudinal axis of the elongated member (Para. 0343).
Regarding claim 8, Contini discloses the surgical fastener applier wherein the power pack includes a second motor (Fig. 12, items 152, 154, 156) and the second motor effects linear movement of the articulation mechanism.
Regarding claim 9, Contini discloses the surgical fastener applier further comprising a handle manually movable (Fig. 54, item 464 and 460) to move a jaw clamping mechanism to clamp tissue between the first and second jaws (Para. 0327).
Response to Arguments
Applicant’s arguments, see page 5, filed 06/19/2026, with respect to the 35 USC 101 double patenting rejection of claims 10-13 have been fully considered and are persuasive, as Applicant has amended the claims to include subject matter not disclosed by US 11,331,099. The 35 USC 101 rejection of claims 10-13 has been withdrawn.
Applicant’s arguments with respect to claims 1-9 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Prior Art Rejection
Claims 10-20 are currently free from prior art. However, a subsequent prior art rejection may be made in view of Applicant’s amendments submitted to overcome the above rejections.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VERONICA MARTIN whose telephone number is (571)272-3541. The examiner can normally be reached Monday-Thursday 8:00-6:00.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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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/VERONICA MARTIN/Primary Examiner, Art Unit 3731
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