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.
Continued Examination Under 37 CFR 1.114
Receipt is acknowledged of a request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e) and a submission, filed on 05/07/2026.
Response to Amendment
The amendment filed 05/07/2026 has been entered. Claims 1, 5, 8-22 remain pending in the application. Claims 1, 12 and 15 are amended with claims 2-4, 6 and 7 canceled in the application.
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 at least one 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), and being configured to be coupled to the radiofrequency generator (Markel, RF Generator 26, fig 16), 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 at least one of the two electrical conductors contact the toroid at an inner side, wherein the device has two electrical poles, wherein the electrical poles of the radiofrequency electrode are electrically insulated from one another by an insulator element and at least one of the electrical poles is formed by a support arm or fork tube of the device.
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]), wherein the device has two electrical poles (see in which there are poles created at either working end 12 and 13, [0037]), wherein the electrical poles of the radiofrequency electrode are electrically insulated from one another by an insulator element (see in which the insulator body 5 separates the respective working end poles 12 and 13, [0028], see also fig 2) and at least one of the electrical poles is formed by a support arm or fork tube of the device (see in which there is a head support arm 6 which contains the electrical supply lines 22-24 which delivery power to the working ends 12 and 13 to result in the formation of the poles, [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 polarity to achieve efficient delivery to the treatment tissue as taught by Brockmann, [0028].
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
Regarding claim 15, the combination teaches the radiofrequency electrode as claimed in claim 1, wherein the at least one of the electrical poles 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).
Regarding claim 22, 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 at least one of two electrical conductors (coupled to first and second electrode with a cable, column 6, line 22), and the radiofrequency electrode has a shape of a toroid (first and second electrodes can have various geometries including… toroidal, column 8, lines 56-60), and 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 at least one of the two electrical conductors contact the toroid at an inner side, wherein the device has two electrical poles, wherein the electrical poles of the radiofrequency electrode are electrically insulated from one another by an insulator element and at least one of the electrical poles is formed by a support arm or fork tube of the device.
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]), wherein the device has two electrical poles (see in which there are poles created at either working end 12 and 13, [0037]), wherein the electrical poles of the radiofrequency electrode are electrically insulated from one another by an insulator element (see in which the insulator body 5 separates the respective working end poles 12 and 13, [0028], see also fig 2) and at least one of the electrical poles is formed by a support arm or fork tube of the device (see in which there is a head support arm 6 which contains the electrical supply lines 22-24 which delivery power to the working ends 12 and 13 to result in the formation of the poles, [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 polarity to achieve efficient delivery to the treatment tissue as taught by Brockmann, [0028].
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 separating the electrical poles 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 filed 05/07/2026 have been fully considered but they are not persuasive.
With regards to the claim amendments made to the independent claim 1, which further define the structural limitations that result in a toroidal electrode that contains two electrical poles with insulative members in between the poles as well as the poles specifically being formed by a support arm or fork tube have been considered but ultimately fall unpersuasive. The examiner agrees with the applicant that neither of the prior art of Markel nor Brommersma teach the two electrical poles that are formed by a support arm or fork tube as defined in the newly amended claim. However, upon further search and consideration, necessitated by the amended claim language it has been found that the newly considered prior art of Brockmann does contain enough disclosure to reasonably teach the newly amended limitations. Specifically, 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]), wherein the device has two electrical poles (see in which there are poles created at either working end 12 and 13, [0037]), wherein the electrical poles of the radiofrequency electrode are electrically insulated from one another by an insulator element (see in which the insulator body 5 separates the respective working end poles 12 and 13, [0028], see also fig 2) and at least one of the electrical poles is formed by a support arm or fork tube of the device (see in which there is a head support arm 6 which contains the electrical supply lines 22-24 which delivery power to the working ends 12 and 13 to result in the formation of the poles, [0028]). Therefore, as Brockmann contains enough disclosure to teach and suggest the amended limitations of claim 1, it remains rejected under the newly considered prior art of record rejection of Markel in view of Brommersma further in view of Brockmann set forth in the present office action.
Furthermore, in response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). In the instant case, due to the breadth of the broadest reasonable interpretation of the claim language that the present device contains “at least one electrical pole which is formed by a support arm or fork tube of the device,” one skilled in the art would look to the Brockmann reference for disclosure. As the Brockmann reference specifically discloses in which there is a head support arm 6 which contains the electrical supply lines 22-24 which delivery power to the working ends 12 and 13 which in turn result in the formation of the poles on the treatment end of the device, this is more than enough teaching and motivation to combine the references at hand to teach the claimed limitation of “at least one electrical pole which is formed by a support arm,” on the device.
Furthermore, regarding the new claim 22, 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
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.
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, Joseph Stoklosa can be reached at 571-272-1213. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/KYLE M. BROWN/Examiner, Art Unit 3794
/JOSEPH A STOKLOSA/Supervisory Patent Examiner, Art Unit 3794
Prosecution Insights