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) 1, 8, 13-15, and 17-18 is/are rejected under 35 U.S.C. 103 as being unpatentable over MacKay, (US 20080039834) in view of Barnes et al., (US 20160302842; hereinafter Barnes).
Regarding claim 1, MacKay (Figures 1-2) discloses an electrosurgical instrument (100) for plasma coagulation ([0004]), the electrosurgical instrument (100) comprising: a fluid conductor (tube) that comprises at least one lumen (101); and an electrode (103) having a coating (silver coating) made of silver or silver alloy, wherein a portion of the coating (silver coating) is configured to melt during operation (through continued use of the instrument, the distal end of the electrode 103 would exceed the melting temperature of the silver coating since the melting temperature of the silver coating is much lower than the melting temperature of the electrode body, so the coating would melt and retract when the distal end of the electrode 103 exceeds the melting temperature of the silver coating), the electrode (103) being arranged inside the fluid conductor (tube) at least in sections (within proximal and distal sections of lumen 101), the electrode (103) comprising an electrode body (tungsten body) extending from its distal end in a proximal direction into the fluid conductor (as shown in Figure 1; [0044]-[0047]).
MacKay fails to disclose the electrode body being made of stainless steel. However, Barnes (Figure 18) teaches an electrosurgical instrument (100) for plasma coagulation ([0043]), the electrode body (600) of the instrument being made of stainless steel ([0060]-[0061]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify MacKay to include the electrode body being made of stainless steel, as taught by Barnes, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. MPEP 2144.07.
Regarding claim 8, MacKay (Figures 1-2) further discloses wherein electrode (103) further comprises a distal end held inside the lumen (101), ([0044]-[0047]).
Regarding claim 13, MacKay (Figures 1-2) further discloses wherein during operation the electrode (103) comprises a section at its distal end that is at least partly bare from material of the coating (silver coating), ([0044]-[0047]: continuing from the rejection of claim 12, as the silver coating is melted/molten from the hottest working tip to the proximal end, the coating would be redistributed away from the distal end of the electrode while at least partly clearing the electrode body; therefore, the electrode would comprise a section at its distal end that is at least partly bare from material of the silver coating after this).
Regarding claim 14, MacKay/Barnes teaches a method for generation of a plasma, the method comprising: providing an instrument according to claim 1 (as explained in the rejection of claim 1), generating a gas flow inside the lumen (101) of the fluid conductor (tube); applying an electrical voltage to the electrode (103) for causing an electrical discharge at the distal end of the electrode (103) to heat the distal end of the electrode (103) to exceed the melting temperature of the coating (through continued use of the instrument, the distal end of the electrode would exceed the melting temperature of the silver coating since the melting temperature of the silver coating is much lower than the melting temperature of the electrode body); and further operating the instrument (100), (MacKay, [0044]-[0047]; Barnes, [0060]-[0061]).
Regarding claim 15, MacKay (Figures 1-2) further discloses redistributing material of the coating (silver coating) away from the distal end of the electrode (103) while at least partly clearing the electrode body ([0044]-[0047]: through continued use of the instrument, the distal end of the electrode would at least locally reach the melting temperature of the silver coating since the melting temperature of the silver coating is much lower than the melting temperature of the tungsten body; as the silver coating is melted/molten from the hottest working tip to the proximal end, the coating would be redistributed away from the distal end of the electrode while at least partly clearing the electrode body).
Regarding claim 17, MacKay (Figures 1-2) discloses an electrosurgical instrument (100) for plasma coagulation ([0004]), the electrosurgical instrument (100) comprising: a fluid conductor (tube) that comprises at least one lumen (101); and an electrode (103) having; an electrode body extending from its distal end in a proximal direction into the fluid conductor (101), and a coating (silver coating) made of silver or silver alloy formed over the electrode body, the coating (silver coating) configured to melt during operation and retract from the proximal tip of the electrode body (through continued use of the instrument, the distal end of the electrode 103 would exceed the melting temperature of the silver coating since the melting temperature of the silver coating is much lower than the melting temperature of the electrode body, so the coating would melt and retract when the distal end of the electrode 103 exceeds the melting temperature of the silver coating), the coating sufficient to conduct heat from the electrode body in the distal direction (as shown in Figure 1; [0044]-[0047]).
MacKay fails to disclose the electrode body being made of stainless steel. However, Barnes (Figure 18) teaches an electrosurgical instrument (100) for plasma coagulation ([0043]), the electrode body (600) of the instrument being made of stainless steel ([0060]-[0061]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify MacKay to include the electrode body being made of stainless steel, as taught by Barnes, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. MPEP 2144.07.
Regarding claim 18, MacKay (Figures 1-2) further discloses wherein the coating (silver coating) is sufficient to prevent the discharge root point from crossing a barrier formed by the coating (silver coating) when melted ([0044]-[0047]).
Claim(s) 6-7 and 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over MacKay/Barnes, as applied to claims 1 and 7 above.
Regarding claim 6, MacKay (Figures 1-2) further discloses wherein the coating (silver coating) has a cross-section with a coating area and the electrode (103) has a cross-section with an electrode area, wherein the coating (silver coating) extends along a section of electrode (103) of multiple millimeters ([0044]-[0047]: since the diameter of the lumens is in millimeters, the electrode 10 would also be a length of millimeters relatively; since the working tip of the electrode is coated with the silver coating, multiple millimeters of the electrode 10 would have the coating). MacKay/Barnes fails to teach wherein the coating area is at least 12% of the electrode area. 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 MacKay/Barnes to include the coating area being at least 12% of the electrode area 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 7, MacKay (Figures 1-2) further discloses wherein electrode (103) further comprises a section at its distal end ([0044]-[0047]), but MacKay/Barnes fails to teach that the section is of at least 2.5 mm length, the thermal capacity of which is lower than 4.5 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 MacKay/Barnes to include the section of at least 2.5 mm length, the thermal capacity of which is lower than 4.5 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 16, MacKay (Figures 1-2) further discloses wherein the electrode (103) further comprises a section at its distal end ([0044]-[0047]), but MacKay/Barnes fails to teach that the section is of at least 2.5 mm length, the thermal capacity of which is lower 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 MacKay/Barnes to include the section of at least 2.5 mm length, the thermal capacity of which is lower 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).
Claim(s) 9-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over MacKay/Barnes, as applied to claim 1 above, and further in view of Fregoso, (US 20170238987).
Regarding claims 9-11, MacKay/Barnes teaches the electrosurgical instrument according to claim 1, but fails to teach a holder for arrangement of the electrode inside the lumen and on which the electrode is held, the holder arranged to center the electrode inside the lumen, wherein the holder comprises a poor thermally conductive material, wherein the holder comprises an electrically insulating material. However, Fregoso (Figure 1) teaches an electrosurgical instrument comprising a holder (105) for arrangement of an electrode (104) inside a lumen (101) and on which the electrode (104) is held, the holder (105) arranged to center the electrode (104) inside the lumen (101), wherein the holder (105) comprises a poor thermally conductive material, wherein the holder (105) comprises an electrically insulating material ([0017], [0022]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify MacKay/Barnes to include a holder, as taught by Fregoso, because the modification would support the electrode in a spaced apart, generally concentric, relationship with the housing/lumen to electrically and thermally insulate the electrode from the inside surface of the housing/lumen (Fregoso; [0022]).
Response to Arguments
Applicant’s arguments filed 12/04/2024, with regard to the newly amended claim amendments, 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 newly found prior art reference Barnes, which teaches the electrode body of a plasma coagulation instrument being made of stainless steel. In combination with MacKay, the modified device/method teaches the invention as claimed at least in amended claims 1, 14, and 17.
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.
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/C.C.P./Examiner, Art Unit 3794
/EUN HWA KIM/Primary Examiner, Art Unit 3794