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 § 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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 2-4, 6-7, 14-15, and 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Schnitzler, (US 20020016590) in view of MacKay, (US 20080039834).
Regarding claim 17, Schnitzler (Figures 1 and 3) discloses an electrosurgical instrument, comprising: an electrode (10) having a first cross-section (distal cross-section of electrode 10 having an triangular shape) that increases in a proximal direction (as shown in Figure 3) from a tip (tip at sharp edge of arrow shape) located at a distal direction, the increase in cross-section being substantially continuous or in at least one step (as shown in Figure 3) and a second cross-section (proximal cross-section of electrode 10 having a rectangular shape) that is substantially continuous in a proximal direction from a tip (tip at sharp edge of arrow shape) located at a distal direction (as shown in Figure 3), and a hose (20) in contact with the electrode (10) at a proximal direction of the electrode (10) and at least a portion of the substantially continuous second cross section (proximal cross-section of electrode 10 having a rectangular shape), such that the electrode (10) is held in place by the hose (20), ([0026]-[0029]). Schnitzler fails to disclose wherein the electrode comprises a material combination having a thermal conductivity of greater than 20 W/(m*K) and comprising; a base material, a thermally conductive overlay at least partially covering and in contact with the base material, the thermally conductive overlay having a thermal and/or electrical conductivity greater than the thermal and/or electrical conductivity of the base material, the thermally conductive overlay having a melting temperature less than the melting temperature of the base material, and wherein the thermally conductive overlay extends on the electrode in an area of the first cross-section and an area of the second cross-section. However, MacKay (Figure 1) teaches an electrode (103) comprising a material combination having a thermal conductivity of greater than 20 W/m*K, ([0022], [0047]: tungsten has a thermal conductivity in the range of 173 W/m*K and provides an effective material from which an arc of RF energy can be discharged due to its high melting temperature and heat resistant properties), and further comprising a base material having a thermally conductive overlay at least partially covering and in contact with the base material ([0047]: the discharge portion/base material of the electrode may be coated with a highly conductive silver material), the thermally conductive overlay having a thermal and/or electrical conductivity greater than the thermal and/or electrical conductivity of the base material ([0047]: the thermally conductive silver overlay has a thermal conductivity of 429 W/m*K, which is greater than the thermal conductivity of the tungsten base material, which is 173 W/m*K), the thermally conductive overlay having a melting temperature less than the melting temperature of the base material ([0047]: the thermally conductive silver overlay has a melting temperature of 1763°F/961.8℃, which is less than the melting temperature of the tungsten base material, which is 6192°F/3422℃), wherein the thermally conductive overlay covers the entire discharge portion of the electrode 103 ([0047]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Schnitzler to include the electrode comprising a material combination having a thermal conductivity of greater than 20 W/(m*K) and comprising; a base material, a thermally conductive overlay at least partially covering and in contact with the base material, the thermally conductive overlay having a thermal and/or electrical conductivity greater than the thermal and/or electrical conductivity of the base material, the thermally conductive overlay having a melting temperature less than the melting temperature of the base material, as taught by MacKay because the modification would create a highly conductive interface between the tungsten electrode and the ionisable gas, thereby assisting in initiation of current arcing and ionisation of the gas (MacKay; [0047]). Furthermore, since the thermally conductive overlay taught by MacKay covers the entire discharge portion of the electrode, the modified device would also include the thermally conductive overlay covering the entire discharge portion of the electrode in the modified device. Accordingly, the modified device would include the thermally conductive overlay extending on the entire discharge portion of the electrode disclosed by Schnitzler, including the area of the first cross-section and the area of the second cross-section as shown in Figure 3.
Schnitzler/MacKay further teaches that the overlay (MacKay; silver coating) extends proximally a distance from the tip (MacKay; [0047]: only the working tip of the electrode is coated with the silver overlay, so the overlay extends proximally a distance from the tip covering only the working tip around the area labelled 103b in Figure 1 of MacKay), and wherein the electrode (Schnitzler; 10) comprises a volume and the overlay (MacKay; silver coating) comprises a surface area. Schnitzler/MacKay fails to teach that the overlay extends proximally a distance from the tip to specifically between about 5 mm to about 20 mm and the ratio of the surface area of the overlay to the volume of the electrode is greater than 2.24 mm. However, the plate shape of the electrode of the modified device would include a large surface area to volume ratio and the surface area of the electrode would correspond to the surface area of the overlay since the overlay would be coated around the surface area of the electrode, which is the working tip of the modified device. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Schnitzler/MacKay to include the overlay extending proximally a distance from the tip to specifically between about 5 mm to about 20 mm and the ratio of the surface area of the overlay to the volume of the electrode is greater than 2.24 mm 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. MPEP 2144.05(I).
Regarding claim 2, Schnitzler (Figures 1 and 3) further discloses wherein the electrode (10) has a maximum transverse dimension and a radius of curvature at its tip (tip of arrow shape) that is less than one tenth of the maximum transverse dimension ([0026]-[0029]).
Regarding claim 3, Schnitzler (Figures 1 and 3) further discloses wherein the electrode (10) is configured as a platelet that comprises two flat sides that are connected with one another by means of narrow sides
Regarding claim 4, Schnitzler (Figures 1 and 3) further discloses wherein the electrode (10) comprises at least one flat side ([0026]-[0029]).
Regarding claim 6, Schnitzler/MacKay further teaches wherein the overlay (coating) extends up to a section configured for direct contact with a spark originating from the electrod
Regarding claim 7, Schnitzler/MacKay further teaches wherein the overlay (coating) consists of a metal or a metal alloy (silver), ([0026]-[0029]).
Regarding claim 14, Schnitzler (Figures 1 and 3) further discloses wherein the hose (20) is configured to connect to an argon gas source ([0003]-[0004], [0009]: noble-gas source may be argon), wherein the electrode (10) is arranged in a lumen formed by the hose (20), the electrode (10) configured to connect to a generator (HF source), ([0009], [0026]-[0029]).
Regarding claim 15, Schnitzler (Figures 1 and 3) further discloses wherein the hose (20) is connected to the argon gas source ([0003]-[0004], [0009]: noble-gas source may be argon), and the electrode (10) is connected to the generator (HF source), ([0009], [0026]-[0029]).
Claim(s) 9-10, 16, and 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Schnitzler in view of MacKay and Murano et al., (US 20190192212; hereinafter Murano).
Regarding claim 18, Schnitzler (Figures 1 and 3) discloses an electrosurgical instrument, comprising: an electrode (10) having a first cross-section (distal cross-section of electrode 10 having an triangular shape) that increases in a proximal direction (as shown in Figure 3) from a tip (tip at sharp edge of arrow shape) located at a distal direction, the increase in cross-section being substantially continuous or in at least one step (as shown in Figure 3) and a second cross section (proximal cross-section of electrode 10 having a rectangular shape) that is substantially continuous in a proximal direction from a tip (tip at sharp edge of arrow shape) located at a distal direction ( as shown in Figure 3), and a hose (20) in contact with the electrode (10) at a proximal direction of the electrode (10) and at least a portion of the substantially continuous second cross section (proximal cross-section of electrode 10 having a rectangular shape), such that the electrode (10) is held in place by the hose (20), ([0026]-[0029]). Schnitzler fails to disclose wherein the electrode comprises a material combination having a thermal conductivity of greater than 20 W/(m*K) and comprising; a base material and a thermally conductive overlay at least partially covering and in contact with the base material, wherein the thermally conductive overlay extends on the electrode in an area of the first cross-section and an area of the second cross-section. However, MacKay (Figure 1) teaches an electrode (103) comprising a material combination having a thermal conductivity of greater than 20 W/m*K, ([0022], [0047]: tungsten has a thermal conductivity in the range of 173 W/m*K and provides an effective material from which an arc of RF energy can be discharged due to its high melting temperature and heat resistant properties), and further comprising a base material and a thermally conductive overlay at least partially covering and in contact with the base material ([0047]: the discharge portion of the electrode may be coated with a highly conductive silver material), wherein the thermally conductive overlay covers the entire discharge portion of the electrode 103 ([0047]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Schnitzler to include the electrode comprising a material combination having a thermal conductivity of greater than 20 W/(m*K) and comprising; a base material and a thermally conductive overlay at least partially covering and in contact with the base material, as taught by MacKay because the modification would create a highly conductive interface between the tungsten electrode and the ionisable gas, thereby assisting in initiation of current arcing and ionisation of the gas (MacKay; [0047]). Furthermore, since the thermally conductive overlay taught by MacKay covers the entire discharge portion of the electrode, the modified device would also include the thermally conductive overlay covering the entire discharge portion of the electrode in the modified device. Accordingly, the modified device would include the thermally conductive overlay extending on the entire discharge portion of the electrode disclosed by Schnitzler, including the area of the first cross-section and the area of the second cross-section as shown in Figure 3.
Schnitzler/MacKay fails to teach the thermally conductive overlay having an intermediate layer with at least partially covering and in contact with the base material and a surface layer covering the intermediate layer, the surface layer having a melting temperature lower than that of the base material; the surface layer having a thermal conductivity at least as high as a thermal conductivity of the intermediate layer, the thermal conductivity of the intermediate layer being higher than a thermal conductivity of the base material. However, Murano teaches an electrode with an overlay comprising an intermediate (copper) layer at least partially covering and in contact with the electrode base material and a surface layer covering the intermediate layer ([0045], [0159]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Schnitzler/MacKay to include the overlay comprising an intermediate layer that is in direct contact with the electrode base material and a surface layer, the surface layer being arranged on the intermediate layer, as taught by Murano, because the modification would improve the bonding strength between the electrode base material and the conductive coating (Murano; [0159]). Therefore, in the modified device, the electrode would comprise a tungsten base material and silver surface layer, as taught by MacKay, including a conductive intermediate layer such as copper, as taught by Murano in paragraphs [0045] and [0159], wherein the melting temperature of the silver surface layer is 1763°F/961.8℃, which is lower than that of the tungsten base material, which is 6192°F/3422℃. Furthermore, the silver surface layer of the modified device would have a thermal conductivity at least as high as a thermal conductivity of the copper intermediate layer, the thermal conductivity of the copper intermediate layer being higher than a thermal conductivity of the tungsten base material.
Regarding claim 9, Schnitzler/MacKay/Murano further teaches wherein the surface layer comprises a metal or a metal alloy (silver, as taught by MacKay) having a melting temperature less than the melting temperature of the intermediate layer (copper, as taught by Murano).
Regarding claim 10, Schnitzler/MacKay/Murano further teaches wherein the surface layer comprises a metal or a metal alloy (silver, as taught by MacKay) having a thermal conductivity greater than the thermal conductivity of the intermediate layer (copper, as taught by Murano).
Regarding claim 16, Schnitzler/MacKay further teaches wherein the thermally conductive material (MacKay; silver coating) comprises a metal or a metal alloy (MacKay; [0022], [0047]).
Claim(s) 11-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Schnitzler/MacKay, as applied to claim 17 above.
Regarding claim 11, Schnitzler/MacKay further teaches wherein the overlay (MacKay; silver coating) comprises a cross-section area and the base material (MacKay; tungsten base material) comprises a cross-section area, but fails to teach wherein the ratio between the cross-section area of the overlay to the cross-section area of the base material is greater than 0.12. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Schnitzler/MacKay to include the ratio between the cross-section area of the overlay to the cross-section area of the base material greater than 0.12 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. MPEP 2144.05(I).
Regarding claim 12, Schnitzler/MacKay further teaches wherein the electrode (Schnitzler; 10) further comprises a section extending from the tip in the proximal direction (Schnitzler; [0026]-[0029]), but fails to teach the section extending at least 2.5 mm from the tip in the proximal direction, the thermal capacity of the section being less than 4.17 mJ/K. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Schnitzler/MacKay to include the section extending at least 2.5 mm from the tip in the proximal direction, the thermal capacity of the section being less than 4.17 mJ/K, 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. MPEP 2144.05(I).
Regarding claim 13, Schnitzler/MacKay further teaches wherein the electrode (Schnitzler; 10) comprises a volume (Schnitzler; [0026]-[0029]) and the overlay (MacKay; coating) comprises a surface area (MacKay; [0022], [0047]), but fails to teach wherein the ratio of the surface area of the overlay to the volume is greater than 2.24 mm1. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Schnitzler/MacKay to include the ratio of the surface area of the overlay to the volume greater than 2.24 mm1 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. MPEP 2144.05(I).
Claim(s) 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Schnitzler in view of MacKay, as applied to claim 17, and further in view of Karni et al., (US 20070106349; hereinafter Karni).
Regarding claim 19, Schnitzler (Figures 1 and 3) further discloses wherein the electrode is a plate-shaped electrode (10), ([0026]-[0029]) and the Schnitzler/MacKay combination teaches the thermally conductive overlay having a thermal and electrical conductivity, respectively, greater than the thermal and electrical conductivity of the base material, as explained in the rejection of claim 17 (the silver overlay has a thermal and electrical conductivity, respectively, greater than the thermal and electrical conductivity of the tungsten base material of the modified device).
Schnitzler/MacKay fails to teach the thermally conductive overlay having a thickness orthogonal to a plane of the of the plate-shaped electrode of 50 microns (pm) or less. However, Karni teaches a plasma device in which a coating/overlay of an electrode has a thickness orthogonal to a plane of the electrode of 50 microns (pm) or less ([0131]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Schnitzler/MacKay to include the thermally conductive overlay having a thickness orthogonal to a plane of the of the plate-shaped electrode of 50 microns (pm) or less, as taught by Karni, 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. MPEP 2144.05(I).
Response to Arguments
Applicant’s arguments, filed 09/09/2025, with respect to the rejection(s) of claim(s) 17 under 35 U.S.C. 103 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 a new interpretation of the Schnitzler/MacKay combination. Under the new interpretation, Schnitzler/MacKay further teaches that the overlay (MacKay; silver coating) extends proximally a distance from the tip (MacKay; [0047]: only the working tip of the electrode is coated with the silver overlay, so the overlay extends proximally a distance from the tip covering only the working tip around the area labelled 103b in Figure 1 of MacKay), and wherein the electrode (Schnitzler; 10) comprises a volume and the overlay (MacKay; silver coating) comprises a surface area. Schnitzler/MacKay fails to teach that the overlay extends proximally a distance from the tip to specifically between about 5 mm to about 20 mm and the ratio of the surface area of the overlay to the volume of the electrode is greater than 2.24 mm. However, the plate shape of the electrode of the modified device would include a large surface area to volume ratio and the surface area of the electrode would correspond to the surface area of the overlay since the overlay would be coated around the surface area of the electrode, which is the working tip of the modified device. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Schnitzler/MacKay to include the overlay extending proximally a distance from the tip to specifically between about 5 mm to about 20 mm and the ratio of the surface area of the overlay to the volume of the electrode is greater than 2.24 mm 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. MPEP 2144.05(I).
Applicant's arguments filed with respect to the rejection(s) of claim(s) 18 under 35 U.S.C. 103 have been fully considered but they are not persuasive. Although it was initially agreed that the amendments would overcome the previous rejections, after further search and consideration, Examiner has determined that the cited references do teach the newly amended limitations. Specifically, in the modified device, the electrode would comprise a tungsten base material and silver surface layer, as taught by MacKay, including a conductive intermediate layer such as copper, as taught by Murano in paragraphs [0045] and [0159]. Accordingly, the silver surface layer of the modified device would have a thermal conductivity at least as high as a thermal conductivity of the copper intermediate layer, the thermal conductivity of the copper intermediate layer being higher than a thermal conductivity of the tungsten base material. Therefore, Examiner maintains that the Schnitzler/MacKay/Murano combination teaches the invention as recited in presently amended claim 18.
Conclusion
THIS ACTION IS MADE FINAL. 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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/C.C.P./Examiner, Art Unit 3794
/EUN HWA KIM/Primary Examiner, Art Unit 3794
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