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 .
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 (i.e., changing from AIA to pre-AIA ) 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.
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.
Claim 24 is 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.
Claim 24 recites the limitation "the at least one slider". There is insufficient antecedent basis for this limitation in the claim since only a singular “slider disposed on the other of the first arm or the second arm” in the preceding claims.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-3, 10 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Garito et al. (US 6,926,717) (“Garito”) in view of Trees et al. (US 2015/0080879).
Regarding claim 1, Garito discloses an apparatus for surgical cauterizing (see Figs. 1-3) comprising: an elongate body member having a first arm and a second arm (see first and second arms 12 and 14, Fig. 2); the elongate body member further comprising a hollow passageway between the first arm and the second arm (see hollow tube 22 positioned between the arms, Figs. 1 and 2), wherein the hollow passageway is disposed exteriorly to each of the first arm and the second arm (see tube 22 disposed exterior to each arm, Figs. 1 and 2); each of the first arm and the second arm having a cauterizing tip (see working ends 36 of electrode 10, Fig. 1); a first smoke intake port (see end opening 26 of tube 22, Fig. 1) and a second intake port (see additional opening 28, Fig. 1) having openings formed in the elongate body (as shown in Fig. 1); and the first smoke intake port defining a smoke evacuation pathway between a region proximate the cauterizing tips and the hollow passageway (openings 26 and 28 provide a smoke evacuation pathway between the region proximate the electrode tips and the lumen of tube 22). However, Garito fails to teach each of the first and second smoke intake ports comprising a tapered opening.
Trees teaches a surgical aspiration apparatus (see Fig. 24) comprising a fluid intake opening (see fluid ports 1724a, 1724b; [0099], Fig. 24) that is tapered toward the distal tip of the device to a rounded end (see Fig. 24). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the first and second smoke intake ports as taught by Garito to each comprise tapered openings that taper toward the cauterizing tips positioned at the distal tip of the device in light of Trees, the motivation being to provide the advantage of exhausting steam or smoke from the surgical area in a controlled and predictable manner as desired (see Trees: [0099]), and further since a change in form or shape is generally recognized as being within the level of ordinary skill in the art, absent any showing of unexpected results. In re Dailey et al., 149 USPQ 47. See MPEP 2144(IV)(B).
Regarding claim 2, Garito further discloses wherein the hollow passageway exits the elongate body member at an outlet (see the hollow passageway exits at fitting 30, Fig. 2).
Regarding claim 3, Garito further discloses a connector for attaching a tube to said outlet (see connection end of fitting 30 configured to attachment to tubing, Fig. 2; see also col. 3, lines 41-44).
Regarding claim 10, Garito further discloses wherein the first arm and the second arm are operable between an open and closed position (see col. 3, lines 9-13).
Regarding claim 19, Garito further discloses a monopolar generator electrically connected to the cauterizing tips (see electrosurgical apparatus supplying unipolar energy, Abstract, Fig. 1).
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Garito in view of Trees and in further view of Cosmescu (US 2007/0129722).
Regarding claim 4, Garito in view of Trees the limitations of claim 3, however Garito in view of Trees fails to further disclose wherein the connector is a swivel connector or a jointed connector.
Cosmescu teaches an electrosurgical device (see Figs. 4A-4C) including a swivel connector for attaching a vacuum tube to a smoke evacuation pathway of the device (see swivel connector 10, Figs. 1-4C). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the connector as taught by Garito in view of Trees to be a swivel connector in light of Cosmescu, the motivation being to allow the vacuum tube to rotate freely without rotating the rest of the device (see Cosmescu: [0008]).
Claims 7-9, 15 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Garito in view of Trees and in further view of Batchelor et al. (US 2014/0276795) (“Batchelor”).
Regarding claims 7-9, Garito in view of Trees teaches the limitations of claim 1, however Garito in view of Trees fails to teach at least one switch for selecting one of a monopolar and a bipolar mode, for selecting one of a bipolar cut mode and a monopolar coagulation mode, or for selecting a bipolar coagulation mode.
Batchelor teaches a combination electrosurgical device (see Figs. 1-2D2) including switches (see 40 and 42, Fig. 2A) located on the body of the device for switching the surgical energy between a bipolar cut or coagulation mode and a monopolar cut or coagulation mode (see [0078]-[0079] and [0118]-[0119]). Therefore, it would have been obvious to one of ordinary skill in the art before the time of filing to have modified the device as taught by Garito in view of Trees with at least one switch for selecting one of a monopolar and a bipolar mode, for selecting one of a bipolar cut mode and a monopolar coagulation mode, or for selecting a bipolar coagulation mode in light of Batchelor, the motivation being to provide the additional benefit of switching energy configurations as required by the procedure to be performed, such as delicate or less delicate procedure (see Batchelor [0078]-[0079]).
Regarding claims 15 and 20, Garito in view of Trees teaches the limitations of claim 1, however Garito in view of Trees fails to further teach a switch for selectively connecting the cauterizing tips to one of a monopolar generator and a bipolar generator or a bipolar generator electrically connected to the cauterizing tips. Batchelor further teaches a switches (see 40 and 42, Fig. 2A) located on the body of the device for switching the surgical energy between a bipolar cut or coagulation mode and a monopolar cut or coagulation mode (see [0078]-[0079] and [0118]-[0119]) which includes connecting the electrodes to either monopolar or bipolar generator configuration (see Figs. 21-22C) and would be obvious to combine with the device of Garito in view of Trees under the same rationale as that provided above in the rejection of claims 7-9.
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Garito in view of Trees and in further view of Scheller et al. (US 2015/0374429) (“Scheller”).
Regarding claim 14, Garito in view of Trees teaches the limitations of claim 1, however Garito in view of Trees fails to teach wherein the first arm and the second arm each have an interior concave portion.
Scheller teaches electrosurgical forceps (see Figs. 1A-2) comprising channels disposed on the interior of each arm of the forceps (see channels 160; [0027], Figs. 1B and 2) such that the fluid transport tubes fit within the channels (see [0027]). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the interior of each arm as taught by Garito in view of Trees such that they each comprise an interior concave portion in light of Scheller, the motivation being to securely fix the convex suction/irrigation tubing of Garito to the interior of each the arms to provide the predictable advantage of preventing unwanted movement of the tubing during a procedure (see Scheller [0027]).
Claims 16 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Garito in view of Trees and in further view of Batchelor and Woloszko et al. (US 20010020167) (“Woloszko”).
Regarding claim 16, Garito in view of Trees the limitations of claim 1, however Garito in view of Trees fails to teach wherein the cauterizing tips are selectively operable between a cutting voltage and a coagulation voltage.
Batchelor teaches a combination electrosurgical device (see Figs. 1-2D2) including switches (see 40 and 42, Fig. 2A) located on the body of the device for switching the surgical energy between a bipolar cut or coagulation mode and a monopolar cut or coagulation mode (see [0078]-[0079] and [0118]-[0119]). Therefore, it would have been obvious to one of ordinary skill in the art before the time of filing to have modified the cauterizing tips as taught by Garito in view of Trees to be operable between cutting and coagulation in light of Batchelor, the motivation being to provide the additional benefit of switching energy configurations as required by the procedure to be performed, such as delicate or less delicate procedure (see Batchelor [0078]-[0079]). However, Garito in view of Trees and Batchelor fails to specifically teach a specific cutting voltage and coagulation voltage.
Woloszko teaches an electrosurgical device using a range of 10 volts to 2000 volts for cutting and a lower range of 50 to 1500 volts for tissue coagulation (see [0105]). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the cutting and coagulation modes as taught by Garito in view of Trees and Batchelor to have included particular cutting and coagulation voltage, respectively, in light of Woloszko, the motivation being to fine tune the application of energy to achieve the desired electrosurgical effect based on active electrode size, the operating frequency, and the operation mode of the particular procedure (see Woloszko [0105]).
Regarding claim 17, Garito in view of Trees, Batchelor, and Woloszko teaches the limitations of claim 16, however Garito in view of Trees and Batchelor fails to teach wherein the cutting voltage is between 150-250 VAC.
Woloszko further teaches a range of 10 volts to 2000 volts for cutting and a lower range of 50 to 1500 volts for tissue coagulation (see [0105]). Therefore, it would have been obvious to one having ordinary skill in the art before the time of filing to use a cutting voltage between 150-250 VAC to fine tune the application of energy to achieve the desired electrosurgical effect based on active electrode size, the operating frequency, and the operation mode of the particular procedure (see Woloszko [0105]), and further since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233. See MPEP 2144.05.
Response to Arguments
Applicant’s arguments with respect to the rejected claims 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. Specifically, the updated rejections rely on a newly cited Trees reference with additional obviousness rationale that has not been addressed in the current arguments.
Allowable Subject Matter
Claims 21-23 and 25 are allowed.
Claim 24 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
The following is a statement of reasons for the indication of allowable subject matter: The closest prior art of record, Garito et al. (US 6,926,717) and Smith (US 2017/0360465), fails to teach wherein the lock comprises a rail disposed on one of the first arm or the second arm and a slider disposed on the other of the first arm or the second arm when considered in combination with the additional requirements of the claim. Applicant’s argument with respect to this feature filed 29 January 2025 are found persuasive.
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.
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/SEAN W COLLINS/Primary Examiner, Art Unit 3794