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 .
Response to Amendment
The Amendment filed 06/26/26 has been entered. Claims 1 and 5-7 have been amended, claim 2 has been cancelled, and claims 9-10 have been withdrawn. Claims 1, 3-8, and 11-12 are addressed in the following office action.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1, 3-8, and 11-12 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Concerning claims 1 and 7, applicant’s original disclosure fails to detail “the control oscillation has a first oscillation component at a first control frequency, and a first electrical amplitude”, “adjust the first electrical amplitude based on the first ratio of the mechanical deflection amplitude of the treatment needle to the electrical control variable at the first control frequency”, “provide the control oscillation of the electrical control variable with at least one further oscillation component at a further control frequency… and a further electrical amplitude,”, and “adjust the further electrical amplitude based on the further ratio of the further mechanical deflection amplitude of the treatment needle to the electrical control variable at the respective further control frequency”. Specifically, applicant’s original disclosure states “The first oscillation component, for example a first amplitude, can be set by means of a generator” see page 5, lines 6-7. So, the first oscillation component is the first electrical amplitude. However, applicants claim describes the first oscillation component and first electrical amplitude as different elements, and at least one further oscillation component and further electrical amplitude as different elements. Also, there is no disclosure of adjusting the first electrical amplitude or further electrical amplitude. Therefore, the limitations are considered new matter. Claims 3-6 and 11-12 are rejected for the same reasons as claim 1 a by virtue of dependency on claim 1. Claim 8 is rejected for the same reasons as claim 1 a by virtue of dependency on claim 1.
NO PRIOR ART REJECTION
Response to Arguments
Applicant’s arguments, see pages 8-10, filed 06/26/26, with respect to the rejection of claims under 35 USC § 102 and 103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new grounds of rejection is made in view of new matter.
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 Examiner Chima Igboko whose telephone number is (571)272-8422. The examiner can normally be reached on Monday-Friday 9:00am-6:00pm.
If attempts to reach the examiner by telephone are unsuccessful, please contact the examiner’s supervisor, Jackie Ho, at (571) 272-4696. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/C.U.I/ Examiner, Art Unit 3771
/KATHLEEN S HOLWERDA/Primary Examiner, Art Unit 3771
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