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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Response to Amendment
The amendment filed 10/06/2025 has been entered. Claims 1, 4-5, 8-21 remain pending in the application. Claims 1, 5, 8-10, 13, 16-18 are amended with claims 2, 3, 6 and 7 canceled in the application. The claim amendments made to claim 1 and all relevant dependent claims do overcome the previous 112 rejection set forth in the prior non-final rejection.
Claim Rejections - 35 USC § 103
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.
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.
Claim(s) 1,4-5, 8,10,13,15-18 and 21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Markel et al. (US Patent No 6544260) in view of Brommersma et al. (US Patent No 20010053908) further in view of Brockmann (US Patent No 20180344382).
Regarding claim 1, Markel teaches a device comprising a radiofrequency electrode (first electrode, column 3, line 50) for use in a resectoscope, wherein the radiofrequency electrode is configured to be supplied with electric power by way of two electrical conductors (coupled to first and second electrode with a cable, column 6, line 22), wherein the radiofrequency electrode has the shape of a toroid (first and second electrodes can have various geometries including… toroidal, column 8, lines 56-60), wherein said two electrical conductors each contacting an electrical pole of the radiofrequency electrode (Markel, first electrode 22 on first surface 18, and second electrode 24 on second surface 20, column 6, lines 19-20), and being configured to be coupled to the radiofrequency generator (Markel, RF Generator 26, fig 16), wherein the electrical poles of the radiofrequency electrode are electrically insulated from one another by an insulator element (Markel, insulator 16, column 6, line 21), and wherein a cross section parallel to a radial axis of the toroid has a shape that is elliptical, oval, circular, triangular, quadrilateral, square, trapezoidal, or polygonal (Markel, first and second electrodes can have various geometries including cylindrical, semi-cylindrical, rectangular, cubic, irregularly shaped, toroidal, column 8, lines 56-60).
Markel does not teach wherein the conductors are configured to be coupled to a radiofrequency generator.
However, the analogous high frequency electrode implement of Brommersma does teach the electrical conductors are configured to be coupled to a radiofrequency generator (high frequency implement 1 powered by a high frequency generator, para [0034]).
Therefore, it would have been obvious for one skilled in the art prior to the effective filing date to combine the electrode taught by Markel with the specific high frequency electrode set-up as taught by Brommersma in order to maintain high frequency connection for tissue cutting and to keep the electrode substantially insulated as disclosed by Brommersma, para [0034] and [0038].
Furthermore, the combination does not teach radiofrequency electrode is configured to generate a plasma, and wherein the two electrical conductors contact the toroid at an inner side.
However, the analogous high frequency electrosurgical device taught by Brockmann does teach both the radiofrequency electrode is configured to generate a plasma (Brockmann, the conventional electrodes are operated with an active RF energy such that a plasma ignites on the active electrode, [0006]) and wherein the two electrical conductors contact the toroid at an inner side (Brockmann, see figs 1A-2, in which conductive supply lines 22 and 23, equated to the conductors, contact the electrode body 2 on an inner side. See also in which electrode body 2 is in the form of a ring electrode or equivalent toroidal electrode in the working end, [0028]).
Therefore, in combination with the Markel which teaches that the treatment electrode may be toroidal in shape, one skilled in the art prior to the effective filing date would arrive at the obvious configuration of a toroidal treatment electrode taught by Markel with the conductive arms contacting at an inner side as disclosed by Brockmann in order to deliver the treatment energy in the right form and capacity to achieve efficient delivery to the treatment tissue as taught by Brockmann, [0028].
Regarding claim 4, the combination teaches the radiofrequency electrode as claimed in claim 1, wherein at least one electrical pole is formed by a support arm or a fork tube of the electrode (Markel, see fig 5, element 22 or 24 as a support arm).
Regarding claim 5, the combination teaches the radiofrequency electrode as claimed in claim l, wherein the electrode is fastened, to the resectoscope, via the two electrical conductors and/or at least on a holding element (Markel, first electrode 22 are connected to a primary side of transformer windings).
Regarding claim 8, the combination teaches the radiofrequency electrode as claimed in claim 1, wherein an outer circumference of the toroid has a shape that is elliptical, oval or circular (Markel, see fig 8-12 for various circular and ovular embodiments).
Regarding claim 10, the combination teaches the radiofrequency electrode as claimed in claim 1, wherein a first electrical conductor of the two conductors is assigned to a lower section of the toroid and this section forms a first electrical pole (Markel, see figure 8, second electrode 24 formed on the bottom side of the toroid) and a second electrical conductor of the two conductors is assigned to an upper section of the toroid and this section forms a second electrical pole (Markel, see figure 8, first electrode formed on the upper side of the toroid), wherein the lower and the upper section have the same embodiment in terms of area (Markel, in this embodiment both sections contain an area of embodiment).
Regarding claim 13, the combination teaches an electrode instrument for use in a surgical handheld device, wherein the electrode instrument section (Markel, probe means 12, fig 1) with two support arms (Markel, see fig 5, element 22 or 24 as a support arm), through which the two conductors
Regarding claim 15, the combination teaches the radiofrequency electrode as claimed in claim 4, wherein the at least one electrical pole is a neutral electrode or a return electrode (from Brommersma, neutral electrode 9 creates an electrical pole, para [0037]).
Regarding claim 16, the combination teaches the radiofrequency electrode as claimed in claim 1, wherein a cross section parallel to a radial axis of the toroid has a shape that is square, trapezoidal, or polygonal (Markel, first and second electrodes can have various geometries including cylindrical, semi-cylindrical, rectangular, cubic, irregularly shaped, toroidal, column 8, lines 56-60).
Regarding claim 17, the combination teaches the radiofrequency electrode as claimed in claim 1, wherein a first electrical conductor of the two electrical conductor is assigned to a lower section of the toroid and this section forms a first electrical pole (Markel, see figure 8, second electrode 24 formed on the bottom side of the toroid), and a second electrical conductor of the two conductors is assigned to an upper section of the toroid and this section forms a second electrical pole (Markel, see figure 8, first electrode formed on the upper side of the toroid), wherein the lower section is larger than the upper section in terms of area (see Markel, fig 6 for lower section with electrode 24 being larger than upper section with electrode 22).
Regarding claim 18, the combination teaches the radiofrequency electrode as claimed in claim 1, wherein a first electrical conductor of the two conductors is assigned to a lower section of the toroid and this section forms a first electrical pole (Markel, see figure 8, second electrode 24 formed on the bottom side of the toroid), and a second electrical conductor of the two conductors is assigned to an upper section of the toroid and this section forms a second electrical pole (Markel, see figure 8, first electrode formed on the upper side of the toroid), wherein the lower section is smaller than the upper section in terms of area (see Markel, fig for lower section with electrode 24 being smaller than upper section with electrode 22).
Regarding claim 21, the combination teaches the radiofrequency electrode as claimed in claim 1 wherein a first electrical conductor of the two electrical conductors is assigned to a lower section of the toroid and this section forms a first electrical pole (Markel, see figure 8, second electrode 24 formed on the bottom side of the toroid), and a second electrical conductor of the two electrical conductors is assigned to an upper section of the toroid and this section forms a second electrical pole (Markel, see figure 8, first electrode formed on the upper side of the toroid), wherein the lower and the upper section have a different embodiment in terms of area (see Markel, fig 6 for lower section with electrode 24 being larger than upper section with electrode 22 and therefore being a different embodiment in terms of area).
Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Markel et al. (US Patent No 6544260) in view of Brommersma et al. (US Patent No 20010053908) further in view of Brockmann (US Patent No 20180344382) further in view of Woloszko (US Patent No 20030216725).
Regarding claim 9, Markel teaches the radiofrequency electrode as claimed in claim 1,
Markel does not teach wherein a ring-like protrusion, is formed around an external circumference of the toroid.
However, Woloszko an analogous electrosurgical apparatus teaches a ring-like protrusion, is formed around an external circumference of the toroid (distal edge 2716, para [0200]).
Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date to have modified the radiofrequency electrode disclosed by Markel with the distal edge or ring like protrusion disclosed by Woloszko in order to generate relatively high current densities and promote plasma formation as stated by Woloszko (para [0200]).
Claim(s) 11,19-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Markel et al. (US Patent No 6544260) in view of Brommersma et al. (US Patent No 20010053908) further in view of Brockmann (US Patent No 20180344382) further in view of Pellegrino Et Al. (US Patent No 20190038345).
Regarding claim 11, the combination teaches the radiofrequency electrode as claimed in claim 1.
Markel does not teach wherein an outer diameter of the toroid is 2 to 5 times the inner diameter of the toroid.
However, the analogous radiofrequency ablation apparatus of Pellegrino does teach an outer diameter of the toroid is 2 to 5 times the inner diameter of the toroid (an outer diameter between 1mm and 2mm and an inner diameter between 0.5mm to 1.5mm and therefore falls in the required range, para [0269]).
Therefore, it would have been obvious for one skilled in the art before the effective filing date to have modified the radiofrequency electrode disclosed by Markel with the correct inner and outer diameter ratios disclosed by Pellegrino in order to apply electrical energy selectively while limiting unwanted electrical energy noise as stated by Pellegrino (para [0270]).
Regarding claim 19, the combination teaches the radiofrequency electrode as claimed in claim 1, wherein a mean outer diameter of the toroid is 2 to 5 times larger than a mean inner diameter of the toroid (Pellegrino, an outer diameter between 1mm and 2mm and an inner diameter between 0.5mm to 1.5mm and therefore falls in the required range, para [0269]).
Regarding claim 20, the combination teaches the radiofrequency electrode as claimed in claim 1, wherein an outer diameter of the toroid is 2.5 to 4 times larger than an inner diameter of the toroid (Pellegrino, an outer diameter between 1mm and 2mm and an inner diameter between 0.5mm to 1.5mm and therefore falls in the required range, para [0269]).
Claim(s) 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Markel et al. (US Patent No 6544260) in view of Brommersma et al. (US Patent No 20010053908) further in view of Brockmann (US Patent No 20180344382) further in view of Davison et al (US Patent No 20040054366).
Regarding claim 12, Markel teaches the radiofrequency electrode as claimed in claim 1, wherein an insulator element consists of a ceramic or a plastic (variety of insulated material to ones skilled in the art, column 6, lines 25-26).
Markel does not teach the toroid substantially consists of stainless steel, titanium, platinum iridium or platinum tungsten.
However, the analogous instrument for electrosurgical treatment disclosed by Davison teaches the toroid as previously disclosed substantially consists of stainless steel, titanium, platinum iridium or platinum tungsten (electrosurgical probe comprises platinum or platinum iridium alloy electrodes, para [0013]).
Therefore, it would have been obvious for one skilled in the art before the effective filing date to have modified the radiofrequency electrode disclosed by Markel with the material composition disclosed by Davison in order to have more efficient ionization and overall superior ablation as stated by Davison (para [0013]).
Claim(s) 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Markel et al. (US Patent No 6544260) in view of Brommersma et al. (US Patent No 20010053908) further in view of Brockmann (US Patent No 20180344382) further in view of Brockmann et al. (US Patent No 20190038341) herein referred to as Brockmann R2.
Regarding claim 14, Markel teaches an electrode instrument as claimed in claim 13.
Markel does not teach the electrode instrument being a resectoscope.
However, the analogous electrode unit for cutting and ablating of Brockmann R2 does teach the electrode instrument being used in a resectoscope (electrode unit for a medical resectoscope, para [0001]).
Therefore, it would have been obvious for one skilled in the art before the effective filing date to have modified the electrode instrument as disclosed by Markel, with the resectoscope disclosed by Brockmann R2, as the electrode instrument disclosed by Brockmann R2 can perform the same function of cutting and ablating in the resectoscope disclosed by Brockmann R2, (para [0004]).
Response to Arguments
Applicant’s arguments, see remarks, filed 10/06/2025, with respect to the rejection(s) of the amended claim(s) 1 under Markel in view of Brommersma further in view of Sixto have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Markel in view of Brommersma further in view of Brockmann. In which the new prior art of record of Brockmann teaches or discloses the limitations not previously taught by the former prior art of record rejection.
As agreed upon previously in the interview dated 10/28/2025, the examiner agrees that the previous prior art of record rejection of Markel in view of Brommersma further in view of Sixto does not reasonably teach that the prior art device contains two conductor arms which are configured to contact the toroidal electrode at an inner side. However, upon further search and consideration necessitated by the amendment it has been found that the new prior art of record rejection of Markel in view of Brommersma further in view of the new prior art of record Brockmann does reasonably teach wherein the two electrical conductors contact the toroid at an inner side (Brockmann, see figs 1A-2, in which conductive supply lines 22 and 23, equated to the conductors, contact the electrode body 2 on an inner side. See also in which electrode body 2 is in the form of a ring electrode or equivalent toroidal electrode in the working end, [0028]). Therefore, the amended claim 1 remains rejected by the new prior art of record rejection set forth in the present office action of Markel in view of Brommersma further in view of Brockmann.
Furthermore, regarding the new claim 21, as the new prior art of record of Markel in view of Brommersma further in view of Brockmann teaches all the new limitations presented within the claim, it remains rejected under the new prior art of record rejections set forth in the present office action.
All other claims remain rejected as they are dependent on the rejected limitations of the independent claim 1.
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 KYLE M BROWN whose telephone number is (703)756-4534. The examiner can normally be reached 8:00-5:00pm EST, Mon-Fri, alternating Fridays off.
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/LINDA C DVORAK/ Primary Examiner, Art Unit 3794
/KYLE M. BROWN/Examiner, Art Unit 3794