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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 04/07/2026 has been entered.
Claim Interpretation
It is noted that MPEP 608.01(m) addresses the use of reference characters in the claims and holds that “Reference characters corresponding to elements recited in the detailed description and the drawings may be used in conjunction with the recitation of the same element or group of elements in the claims. The reference characters, however, should be enclosed within parentheses so as to avoid confusion with other numbers or characters which may appear in the claims. Generally, the presence or absence of such reference characters does not affect the scope of a claim.” In the instant case, the Examiner is not interpreting the presence of the reference characters in the claim as having a limiting effect on either of the scope or broadest reasonable interpretation of the claims.
Response to Amendment
The Amendment filed April 07, 2026 has been entered. Currently, claims 1, 17-19 have been amended, claims 20-21 have been newly added, and claims 1-15, and 17-21 are pending in the application.
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.
Claims 1-4, 8-10, 13-15, 17, 19, and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Fischer (U.S. Application No. 20140378961 A1), and further in view of Walker (U.S. Patent No. 4562838 A).
Regarding independent claims 1 and 17, Fischer discloses an apparatus (11) for attaching a light receiving device (i.e., optical fibers 31, 33) (pa. 0042 & Figs. 1 and 5) to a surgical instrument (12) comprising an electrode (13) (pa. 0038), the apparatus, comprising:
a body (28, 56) configured for attachment to an exterior (distal, recessed surface of the surgical instrument as seen in Fig. 5) of the surgical instrument by a user of the surgical instrument without use of a tool, the body configured to extend at least partially around (in a circular/circumferential fashion/position) the exterior of the surgical instrument when attached thereto (pa. 0042 & Fig. 5);
The claim language is broad and does not require the body to be configured to at least partially extend around any external lateral surfaces of the surgical instrument, for example. As seen in Fig. 5, a proximal portion of the body extends/stretches to touch the external distal circumferential (round) portion of the surgical instrument. Moreover, as seen in the same figure, the body is nestled/attached to the recessed cavity/indentation of the distal portion of the surgical instrument without the additional assistance of any external tool. The claim language is broad and does not specifically describe what tool(s) may not be utilized to assist attaching the surgical instrument to the body of the apparatus. Furthermore, the Specification of the instant application describes, “the connection of the light receiving device with the surgical instrument by means of the apparatus is preferably possible without tools. The apparatus can be preferably plugged on the instrument or, at least partly, pushed into the instrument [Emphasis added by Examiner, pa. 0010]. Therefore, Examiner will be interpreting the claim language “a body configured for attachment to an exterior of a surgical instrument by a user of the surgical instrument without use of a tool” as any attachment style between two components which does not involve the assistance of an external tool/device.
Fischer further discloses the light receiving device operably coupled to the body (pa. 0042 & Fig. 5), wherein the light receiving device comprises a light inlet (18, 19, 20, 21) (pa. 0038) at a distal end of the light receiving device (Figs. 2-3) configured for receiving light created by the electrode during use of the surgical instrument (pa. 0038), the light receiving device extending between distal and proximal end portions of the body such that the light receiving device extends within the surgical instrument when the body is attached thereto (see Fig. 5) to transmit the received light proximally to a light analysis device (17) (pa. 0043, 0054 & Fig. 23);
wherein the light inlet faces a working section (i.e., a distal section of the electrode probe) of the electrode of the surgical instrument when the apparatus is attached to the surgical instrument (see Figs. 1-3);
wherein the light inlet has a light acceptance angle (18a, 20a) and the body is configured such that a distal end of the electrode of the surgical instrument is located inside the light acceptance angle of the light inlet when the apparatus body is attached to the surgical instrument (pa. 0040 & Figs. 3, 17).
However, Fischer does not disclose the light receiving device extending entirely externally to the surgical instrument when the body is attached thereto.
Walker, in the same field of endeavor, teaches an electrosurgery instrument (10) comprising a tube (17) having a proximal end (18) and a distal end (19) (Col. 3, lines 43-57 & Fig. 1), wherein the tube is provided with a receptacle means or mounting channel (35) for slidably receiving the light transmitting cable (16) of a fiber optic system. The channel holds a light emitting end (15) of the light transmitting cable adjacent to an active electrode (12) to illuminate a region around the electrode (Col. 4, lines 32-37).
Examiner notes that although the light transmitting cable taught by Walker merely functions to emit/provide light rather than receive light, it is still a fiber optic system and therefore it is structurally capable of being configured/designed to receive light and/or transmit light. Therefore, all types of optic fibers, whether receiving or emitting light, will be treated as known variants in the art that may be substituted with other types of optic fibers.
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the location of the light receiving device (optic cables) of Fischer to be on the lateral exterior surface of the body by incorporating the mounting channel of Walker to the lateral external surface to allow the light receiving device to be slidably configured since it has been held that constructing a formerly integral structure in various elements involves only routine skill in the art. Nerwin v. Erlichman, 168 USPQ 177, 179.
Regarding claim 2, Fischer/Walker combination discloses wherein the body is configured to be attached to the surgical instrument (Fischer, pa. 0038) such that the light receiving device has one single spatial position relative to the surgical instrument.
In view of the combination described above in claim 1, the light receiving device (i.e., optical fibers) are modified to be externally mounted and extend from the distal portion of the body to the proximal portion of the surgical instrument. Therefore, the light receiving device has one spatial position relative to the surgical instrument since it is slidably mounted to the lateral external surface of the surgical instrument.
Regarding claim 3, Fischer/Walker combination discloses wherein the electrode is configured to be supplied with electrical RF energy (Fischer, pa. 0038), wherein the body of the apparatus is configured to be attached to the surgical instrument (Fischer, pa. 0038) such that the light receiving device has one single spatial position (pa. 0042) relative to the electrode.
In view of the combination described above in claim 1, the light receiving device (i.e., optical fibers) are modified to be externally mounted and extend from the distal portion of the body to the proximal portion of the surgical instrument. Therefore, the light receiving device has one spatial position relative to the electrode since it is slidably mounted to the lateral external surface of the surgical instrument.
Regarding claim 4, Fischer/Walker combination discloses wherein the body of the apparatus is configured to support the electrode and is configured to be attached to the surgical instrument (Fischer, pa. 0038) such that the light receiving device has one single spatial position (Fischer, pa. 0042) relative to the electrode.
In view of the combination described above in claim 1, the light receiving device (i.e., optical fibers) are modified to be externally mounted and extend from the distal portion of the body to the proximal portion of the surgical instrument. Therefore, the light receiving device has one spatial position relative to the electrode since it is slidably mounted to the lateral external surface of the surgical instrument.
Regarding claim 8, Fischer/Walker combination discloses wherein the body of the apparatus comprises a flushing channel (36, 40), wherein the flushing channel is configured to output a flushing medium that laterally passes the light inlet of the light receiving device (Fischer, pa. 0047 & Figs. 13-14).
Regarding claim 9, Fischer/Walker combination discloses wherein the body of the apparatus comprises a flushing channel (36, 40), wherein the body defines a spatial position of the flushing channel relative to the light receiving device (Fischer, pa. 0047 & Figs. 13-14) such that the inlet is oriented to receive light created by the electrode (Fischer, pa. 0045).
Regarding claim 10, Fischer/Walker combination discloses disclose wherein the light inlet of the light receiving device is arranged inside the body of the apparatus when the light receiving device is attached to the surgical instrument.
In view of the combination described above in claim 1, the external lateral surface of the body is modified to include the mounting channel taught by Walker; therefore, in this arrangement, the mounting channel is now an integral structure to the body of Fischer. Examiner will interpret the word “inside” as being partially/fully situated within a physical boundary. Hence, in this configuration, when the light receiving device is slidably received by the mounting channel, the light inlet of the light receiving device will now be, at least partially arranged inside the body of the apparatus when the light receiving device is attached to the surgical instrument.
Regarding claim 13, Fischer/Walker combination discloses a channel section (Fischer, see dashed circles on annotated Fig. 14 below) limited on one side by a wall (see arrow in annotated Fig. 14) and configured to be limited on another side by a first longitudinal side (see arrow in annotated Fig. 14) of the electrode, wherein the channel section is configured to be flushed with a flushing medium (with the aid of deflection nozzle 42, pa. 0047), wherein the channel section is configured such that a second longitudinal side (see arrow in annotated Fig. 14) of the electrode opposite the first longitudinal side, is exposed at least in sections along the channel section (i.e., bottom channel) when the light receiving device is attached to the surgical instrument.
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Regarding claim 14, Fischer/Walker combination discloses wherein an optical axis (i.e., a center axis of the light acceptance angle) of the light receiving device is oriented at an acute angle (via prism 38) with respect to a longitudinal axis of the electrode of the surgical instrument when the surgical instrument is attached to the apparatus (Fischer, pa. 0047, 0052 & Figs. 17-19).
Regarding claim 15, Fischer/Walker combination discloses a method of using the apparatus of claim 1, comprising attaching the light receiving device (i.e., optical fibers 31, 33) (Fischer, pa. 0038, 0042 & Figs. 1-5) on the surgical instrument (12) during a surgery of with the apparatus (Fischer, pa. 0038).
In view of the combination described above in claim 1, the light receiving device (i.e., optical fibers) are modified to be externally mounted and extend from the distal portion of the body to the proximal portion of the surgical instrument. Therefore, this structural configuration provides for the method steps of attaching the light receiving device to the surgical instrument.
Regarding claim 19, Fischer/Walker combination discloses wherein the distal end portion of the body comprises an opening (Fischer, i.e., lumen which allows passage for electrical line 29 and a proximal portion/section of the electrode, pa. 0042 & Fig. 5) for allowing the electrode of the surgical instrument to extend therethrough.
Regarding claim 21, Fischer discloses wherein the light receiving device comprises an optical fiber (i.e., optical fibers 31, 33) and the body comprises a line (lumen/channel) extending in an axial direction through which the optical fiber extends (pa. 0042);
However, Fischer does not disclose wherein the line and the optical fiber extend axially along the exterior of the surgical instrument when the body is attached to the surgical instrument.
Walker, in the same field of endeavor, teaches an electrosurgery instrument (10) comprising a tube (17) having a proximal end (18) and a distal end (19) (Col. 3, lines 43-57 & Fig. 1), wherein the tube is provided with a receptacle means or mounting channel (35) for slidably receiving the light transmitting cable (16) of a fiber optic system. The channel holds a light emitting end (15) of the light transmitting cable adjacent to an active electrode (12) to illuminate a region around the electrode (Col. 4, lines 32-37).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the location of the light receiving device (optic cables) of Fischer to be on the lateral exterior surface of the body by incorporating the mounting channel of Walker to the lateral external surface to allow the light receiving device to be slidably configured since it has been held that constructing a formerly integral structure in various elements involves only routine skill in the art. Nerwin v. Erlichman, 168 USPQ 177, 179.
Claims 5-7, 18, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Fischer and Walker, as applied in claim 1 above, and further in view of Cosmescu (U.S. Application No. 20120283718 A1).
Regarding claim 5, Fischer discloses wherein the surgical instrument receives the body in an axial (longitudinal) direction (as seen in Fig. 5), wherein this removable attachment configuration is designed to limit movement of both the body and the surgical instrument (pa. 0042).
However, Fischer does not disclose wherein the body comprises a mount configured to limit movement of the surgical instrument except for movement in an axial direction, wherein the mount includes a device for subsequent definition or limitation of an axial position of the surgical instrument in the mount.
Cosmescu, in the same field of endeavor, teaches a removable light attachment device (10) to an electrosurgical pencil (50) (pa. 0022 & Figs. 3-5), wherein a mounting portion of the light attachment device comprises one or more attachment members/mount (74) connected via support member (72) (pa. 0026), wherein the mounts are configured to limit movement of the electrosurgical pencil except for movement in an axial direction. As seen in Figures 4-5, the mounts comprise a device, or opposing side wall portions, for subsequent definition or limitation of an axial position of the electrosurgical pencil therein between the opposing side walls.
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have substituted the removable attachment mechanism of the body of Fischer with another removable attachment mechanism taught by Cosmescu including the mounting portion with the one or more attachment members/mounts since both configurations are known equivalents in the art and they would both yield the same predictable results of allowing the user to exchange the body for any given purpose including but not limited to disposing the body after each use for sterilization reasonings.
Regarding claim 6, Fischer/Walker combination disclose the invention substantially as claimed in claims 1 and 5 discussed above.
However, they do not disclose wherein the device for subsequent definition or limitation of the axial position of the surgical instrument comprises a section that is movable transverse to the axial direction, wherein the section is configured to engage the surgical instrument by a lateral movement of the section after arrangement of the instrument in the mount in order to define or limit the axial position of the surgical instrument in the mount.
Cosmescu, in the same field of endeavor, teaches the device, or the opposing side wall portions of the one or more attachment members/mount, for subsequent definition or limitation of the axial position of the surgical instrument comprises a section (proximal-most attachment member/mount 74) that is movable transverse to the axial direction (when the user unclips the attachment member/mount, pa. 0028), wherein the section is configured to engage the surgical instrument by a lateral movement of the section after arrangement of the instrument in the mount in order to define or limit the axial position of the surgical instrument in the mount (see Figs. 4-5).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have substituted the removable attachment mechanism of the body of Fischer with another removable attachment mechanism taught by Cosmescu including the mounting portion with the one or more attachment members/mounts since both configurations are known equivalents in the art and they would both yield the same predictable results of allowing the user to exchange the body for any given purpose including but not limited to disposing the body after each use for sterilization reasonings.
Regarding claim 7, Fischer/Walker combination disclose the invention substantially as claimed in claims 1 and 6 discussed above.
However, they do not disclose wherein the section is attached to the mount via a resilient transition portion.
Cosmescu, in the same field of endeavor, teaches wherein the one or more attachment members/half shell configurations (74) are connected via a flexible support member/resilient transition portion (72) (pa. 0011, 0026).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have substituted the removable attachment mechanism of the body of Fischer with another removable attachment mechanism taught by Cosmescu including the mounting portion with the one or more attachment members/mounts and the flexible resilient transition portion since both configurations are known equivalents in the art and they would both yield the same predictable results of allowing the user to exchange the body for any given purpose including but not limited to disposing the body after each use for sterilization reasonings.
Regarding claim 18, Fischer/Walker combination discloses the invention substantially as claimed in claim 1 discussed above.
However, they do not disclose wherein the distal end portion of the body comprises an instrument mounting portion, the instrument mounting portion having a half shell configuration and comprising opposing side wall portions defining a channel therebetween for receiving a portion of the surgical instrument therein between the opposing side walls.
Cosmescu, in the same field of endeavor, teaches a removable light attachment device (10) to an electrosurgical pencil (50) (pa. 0022 & Figs. 3-5), wherein a mounting portion of the light attachment device comprises one or more attachment members/half shell configurations (74) connected via support member (72) (pa. 0026). As seen in Figures 4-5, the half shell configurations comprise opposing side wall portions defining a channel therebetween for receiving a portion of the electrosurgical pencil therein between the opposing side walls.
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have substituted the removable attachment mechanism of the body of Fischer with another removable attachment mechanism taught by Cosmescu including the mounting portion with the one or more attachment members/half shell configurations since both configurations are known equivalents in the art and they would both yield the same predictable results of allowing the user to exchange the body for any given purpose including but not limited to disposing the body after each use for sterilization reasonings.
Regarding claim 20, Fischer/Walker combination discloses the invention substantially as claimed in claim 1 discussed above.
However, they do not disclose wherein the body comprises a second instrument mounting portion spaced proximally in an axial direction relative to the instrument mounting portion, the second instrument mounting portion having a half shell configuration and comprising opposing side wall portions which define a channel therebetween for receiving a portion of the surgical instrument therein between the opposing side wall portions.
Cosmescu, in the same field of endeavor, teaches a removable light attachment device (10) to an electrosurgical pencil (50) (pa. 0022 & Figs. 3-5), wherein a mounting portion of the light attachment device comprises one or more attachment members/half shell configurations (74) connected via support member (72) (pa. 0026). As seen in Figures 4-5, the half shell configurations comprise opposing side wall portions defining a channel therebetween for receiving a portion of the electrosurgical pencil therein between the opposing side walls.
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have substituted the removable attachment mechanism of the body of Fischer with another removable attachment mechanism taught by Cosmescu including the mounting portion with the one or more attachment members/half shell configurations since both configurations are known equivalents in the art and they would both yield the same predictable results of allowing the user to exchange the body for any given purpose including but not limited to disposing the body after each use for sterilization reasonings.
Claims 11-12 are rejected under 35 U.S.C. 103 as being unpatentable over Fischer and Walker, as applied in claim 1 above, and further in view of Igarashi (E.P. Application No. 3195824 A1).
Regarding claims 11-12, Fischer/Walker combination discloses the body of the apparatus comprises a flushing channel (36, 40) (Fischer, pa. 0047 & Figs. 13-14).
However, they do not disclose wherein the light inlet is arranged inside, or at least partially inside, the flushing channel when the light receiving device is attached to the surgical instrument.
Igarashi, in the same field of endeavor, teaches a medical device (1) comprising a fluid channel (19) (pa. 0099-0100 & Fig. 20) and a separate optical fiber channel (30) (pa. 0017). However, in an alternative embodiment, both channels may be configured as a single channel performing both functions (pa. 0107).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have substituted the separate optical fiber/flushing channel embodiment of Fischer with a single channel with dual functionality as taught by Igarashi since they are both known equivalents and would yield the same predictable results of allowing space for an optic fiber and a flushing fluid.
Response to Arguments
Applicant’s arguments, see pages 7-8, filed 04/07/2026, with respect to the 102
rejection of claims 1 and 17 under Fischer have been fully considered and are persuasive. Specifically, Applicant’s amendments to claims 1 and 17 to further require the light receiving device to extend entirely externally to the surgical instrument when the body is attached thereto is defined over Fischer given that it does not contemplate this claimed structure. Therefore, the rejection has been withdrawn. However, upon further consideration, the following new grounds of rejection have been set forth in the action above:
Claims 1-4, 8-10, 13-15, 17-19, and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Fischer (U.S. Application No. 20140378961 A1), and further in view of Walker (U.S. Patent No. 4562838 A).
It is the Examiner’s position that the newly filed rejections based on the combination of references are tenable for at least the reasoning set forth in the action above.
Conclusion
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/A.V.G./Examiner, Art Unit 3794
/Ronald Hupczey, Jr./Primary Examiner, Art Unit 3794
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