DETAILED ACTION
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 03/06/2026 has been entered.
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) 1-11 and 13-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Schnitzler, (US 20020016590) in view of MacKay, (US 20080039834) and Hanlon et al., (US 20140194870; hereinafter Hanlon).
Regarding claim 1, Schnitzler (Figures 1 and 3) discloses an electrosurgical instrument for plasma coagulation ([0002]-[0008]), the electrosurgical instrument comprising: a hose (20) having a lumen (inner lumen) connectable with a gas source ([0009], [0027]: noble gas source); an electrode (10+30) that comprises a tip orientated in distal direction (tip with sharp edge of arrow shape), the electrode (10+30) having a cross-section that increases in proximal direction from the tip (as shown in Figure 3), a proximal section (section of electrode 10+30 extending proximally from line I-I) of the electrode (10+30) being connected to the hose (20), ([0026]-[0029]). Schnitzler fails to disclose the electrode comprising a base body and a coating applied thereon, the coating extending into the proximal section of the electrode in which the electrode is connected to the hose, and the coating being electrically conductive, wherein the electrode comprises a material or a material combination having a thermal conductivity that is larger than 20 W/(m*K). However, MacKay (Figure 1) teaches an electrosurgical instrument (100) for plasma coagulation including an electrode (103) having a distal section (103b) and a proximal section (section of electrode 103 extending proximally from the proximal end of element 103b), the electrode (103) comprising a base body (tungsten) and a coating (silver) applied thereon, the coating (silver) extending into the proximal section (section of electrode 103 extending proximally from the proximal end of element 103b) of the electrode (103), ([0047]: the working tip/coiled portion of electrode 103 shown in Figure 1 is coated with the silver coating; so the proximal section, which includes a portion of this working tip/coiled portion would have the silver coating extending into it), and the coating (silver) being electrically conductive, wherein the electrode (103) comprises a material or material combination, the thermal conductivity of which is 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). 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 base body and a coating applied thereon, the coating extending into the proximal section of the electrode in which the electrode is connected to the hose, wherein the electrode comprises a material or a material combination having a thermal conductivity that is larger than 20 W/(m*K), 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, the silver coating of the electrode in the modified device would be applied to the working tip of the base body, which is element 10 in the base Schnitzler reference, wherein the working tip of the base body comprises tungsten as taught by the Schnitzler/MacKay combination. Therefore, since the proximal section of the electrode in which the electrode is connected to the hose includes the section of electrode 10+30 extending proximally from line I-I in Figure 1 of Schnitzler, the coating of the modified device would extend into the proximal section of the electrode in which the electrode is connected to the hose.
Schnitzler/MacKay fails to teach the coating having a thickness in a range from 10 um to 50 um. However, Hanlon (Figures 1A-1B) teaches an electrode (12/14) for coagulation ([0005], [0024]), wherein the base body of the electrode (12/14) comprises an electrically conductive coating (silver coating), ([0014]) having a thickness in a range from 10 um to 50 um ([0014], [0029]). 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 electrically conductive coating having a thickness in a range from 10 um to 50 um, as taught by Hanlon, because the modification would provide a thin coating layer which reduces manufacturing costs by reducing the amount of the biocompatible metal used in the construction while being sufficient to be used as an electrode contact (Hanlon; [0014], [0029]).
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 smaller than 1/10 of the maximum transverse dimension ([0026]-[0029]).
Regarding claim 3, Schnitzler (Figures 1 and 3) further discloses wherein the transverse dimension is configured to continuously increase in proximal direction starting from the tip (tip of arrow shape), ([0026]-[0029]).
Regarding claim 4, Schnitzler (Figures 1 and 3) further discloses wherein the electrode (10) comprises steplessly configured edges originating at the tip (tip of arrow shape), as shown in Figures 1 and 3 ([0026]-[0029]).
Regarding claim 5, 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 each other by means of narrow sides, as shown in Figures 1 and 3 ([0026]-[0029]).
Regarding claim 6, Schnitzler (Figures 1 and 3) further discloses wherein edges are formed between the narrow sides and the flat sides, as shown in Figures 1 and 3 ([0026]-[0029]).
Regarding claim 7, Schnitzler/MacKay/Hanlon further teaches a heat dissipation device that includes the coating (the coating taught by MacKay is the heat dissipation device), wherein the base body (tungsten) comprises at least one surface on which the heat dissipation device is attached.
Regarding claim 8, Schnitzler/MacKay/Hanlon further teaches wherein the heat dissipation device (the coating taught by MacKay) is a layer arranged on the base body (MacKay; [0022], 0047]).
Regarding claim 9, Schnitzler/MacKay/Hanlon further teaches wherein the electrode (Schnitzler; 10+30) comprises at least one flat side, and the layer (the coating taught by MacKay) is configured to cover the entire flat side (Schnitzler, [0026]-[0029]; MacKay; [0022], [0047]).
Regarding claim 10, Schnitzler/MacKay/Hanlon further teaches wherein the heat dissipation device (the coating taught by MacKay) comprises a thermally conductive material (MacKay; [0022], [0047]).
Regarding claim 11, Schnitzler/MacKay/Hanlon further teaches wherein the heat dissipation device (the coating taught by MacKay) comprises a metallic material (MacKay; [0022], [0047]).
Regarding claim 13, Schnitzler/MacKay/Hanlon further teaches wherein the heat dissipation device (the coating taught by MacKay) is configured and arranged to extend up to an area that is provided for direct contact with a spark originating from the electrode (Schnitzler; 10+30), (Schnitzler, [0026]-[0029]; MacKay; [0022], [0047]).
Regarding claim 14, Schnitzler/MacKay/Hanlon further teaches wherein the heat dissipation device (the coating taught by MacKay) comprises an electrical conductivity that is larger than the electrical conductivity of the base body (MacKay; tungsten body), (MacKay; [0022], [0047]).
Regarding claim 15, Schnitzler/MacKay/Hanlon further teaches wherein the heat dissipation device (the coating taught by MacKay) has a thermal conductivity that is larger than the thermal conductivity of the base body (MacKay; tungsten body), (MacKay; [0022], [0047]).
Claim(s) 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Schnitzler/MacKay/Hanlon, as applied to claim 7, and further in view of Kalghatgi et al., (US 20160121134; hereinafter Kalghatgi).
Regarding claim 12, Schnitzler/MacKay/Hanlon teaches the electrosurgical instrument according to claim 7, but fails to teach wherein the heat dissipation device comprises a non-metallic material. However, Kalghatgi (Figures 1A-1B) teaches an electrode (110) for plasma treatment ([0004], [0037]), wherein carbon nanotubes are listed as a heat dissipation material ([0016]). 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/Hanlon to include a non-metallic material for the heat dissipation device, as taught by Kalghatgi, 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.
Response to Arguments
Applicant’s arguments filed 08/26/2025, with regard to the newly amended claim limitations, 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 Hanlon, which teaches an electrode for coagulation, wherein the base body of the electrode comprises an electrically conductive coating (silver coating), having a thickness in a range from 10 um to 50 um. In combination with Schnitzler/MacKay, the modified device teaches the invention as claimed at least in amended independent claim 1.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CATHERINE PREMRAJ whose telephone number is (571)272-8013. The examiner can normally be reached Monday - Friday: 8:00 AM - 5:00 PM.
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.
/C.C.P./Examiner, Art Unit 3794
/EUN HWA KIM/Primary Examiner, Art Unit 3794
Prosecution Insights