DETAILED ACTION
Applicant's amendments and remarks, filed 3/2/26, are fully acknowledged by the Examiner. Currently, claims 1-21 are pending with claim 1 amended. The following is a complete response to the 3/2/26 communication.
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.
Claim(s) 1-2, 8, 10-12, and 16-17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Geiselhart (US 2006/0122586) in view of Fleenor (US 5,061,268).
Regarding claim 1, Geiselhart discloses a device for an electrosurgical instrument (unit as in Fig. 1 that connects to 26), comprising a coupling unit for coupling the device to a higher-level assembly not belonging to the device (coupling wires 17, 22, and 23 connecting the device to 26 as in Fig. 1), said coupling unit comprising a first housing (endoscope body 44) having at least one fluid line connection (23) and at least one current line connection (HF current as in par. [0027]) which are designed to carry fluid and current (gas as in par. [0026], current as in par. [0027]), via at least one fluid line of the device and at least one current line of the device (lines through 44 leading to probe 40 for fluid and current as in par. [0026], [0027]), between the higher-level assembly and a distal end of the device when the coupling unit is coupled to the higher-level assembly (couples to assembly 26 as in Fig. 1), and a filter which is designed to absorb particles of a predetermined minimum size in order to separate them from the fluid (filter 19), the filter being provided separately from the coupling unit in a fluid flow path of the fluid line (19 separated from the coupling area of endoscope 44), such that the fluid flowing through the fluid line flows through the filter (fluid of 23 flows through 19 as in Fig. 1), wherein the first housing is arranged at a proximal end of the device (housing body 44 at a proximal end of the unit), but is not explicit wherein the device further comprises a tube connected to the coupling unit, wherein a housing is provided at the end of the tube opposite the coupling unit, and wherein the filter placed in a second housing of the device, between the coupling unit and the distal end of the device, and protrudes from the second housing.
However, Fleenor discloses a tube connected to the coupling unit and arranged between the first and second housing (tube 14 coupling to proximal end of probe at 26, and connecting to a housing of probe 12, and filter 44 from second housing 32), the filter between the coupling unit and the distal end of the device (filter 44 between the coupling unit and the distal end of the probe 12 as in Fig. 3), the tube arranged between the first and second housing, such that the first and second housing are separated from each other through the tube (12 and 32 separated by tube 14).
It would have been obvious to one of ordinary skill in the art to modify Geiselhart with the tube structure and filter structure and placement such that the filter is placed in the housing and protrudes from the housing, looking to Fleenor, since it has been held that rearranging parts of an invention involves only routine skill in the art. In re Japikse, 86 USPQ 70.
Regarding claim 2, Geiselhart discloses substantially all the limitations of the claim(s) except for the filter is provided in a range from 1 cm to 50 cm adjacent to the coupling unit as measured along the fluid flow path of the fluid line. It would have been obvious to one having ordinary skill in the art at the time the invention was made to provide the filter a given distance from the coupling unit, 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. In re Aller, 105 USPQ 233. There is further no evidence of criticality of the claimed range of distance from the coupling unit.
Regarding claim 8, Geiselhart discloses the fluid comprises gas (par. [0026]).
Regarding claim 10, Geiselhart is not explicit wherein the fluid line and the current line are routed in a common line.
However, Fleenor discloses a gas and current line of an electrosurgical device routed in a common line (20 as current line and 14 gas tube connected through a common line as in at least Fig. 1).
It would have been obvious to one of ordinary skill in the art to modify Geiselhart with the fluid and current lines routed in a common line, for at least part of the length, to help consolidate lines.
Regarding claim 11, Geiselhart is silent wherein the filter is circular.
However, Fleenor discloses a circular filter (Figs. 5, 6) for an electrosurgical device.
It would have been obvious to one of ordinary skill in the art to modify Geiselhart with the filter shape of Fleenor, as a filter shape to fit a housing that would work equally well to filter a fluid line.
Regarding claim 12, Geiselhart discloses substantially all the limitations of the claim(s) except for wherein the filter has a cross-sectional area through which fluid flows in the range from 100-10000 mm squared. It would have been obvious to one having ordinary skill in the art at the time the invention was made to have the area in a range from 100-10000 mm squared, 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. In re Aller, 105 USPQ 233. There is further no evidence of criticality of the claimed range of cross-sectional area.
Regarding claim 16, Geiselhart discloses substantially all the limitations of the claim(s) except for the filter is provided in a range from 5 cm to 30 cm adjacent to the coupling unit as measured along the fluid flow path of the fluid line. It would have been obvious to one having ordinary skill in the art at the time the invention was made to provide the filter a given distance from the coupling unit, 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. In re Aller, 105 USPQ 233. There is further no evidence of criticality of the claimed range of distance from the coupling unit.
Regarding claim 17, Geiselhart discloses substantially all the limitations of the claim(s) except for the filter is provided in a range from 10 cm to 20 cm adjacent to the coupling unit as measured along the fluid flow path of the fluid line. It would have been obvious to one having ordinary skill in the art at the time the invention was made to provide the filter a given distance from the coupling unit, 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. In re Aller, 105 USPQ 233. There is further no evidence of criticality of the claimed range of distance from the coupling unit.
Claim(s) 3-5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Geiselhart, in view of Fleenor, in further view of Booth (US 2002/0128603).
Regarding claim 3, Geiselhart is silent regarding the filter is surrounded by a casing which fluidly seals the fluid flow path of the fluid line through the filter to the outside.
However, Booth discloses a filter casing that seals the filter (par. [0063] structure to seal the filter with an interior wall).
It would have been obvious to one of ordinary skill in the art to modify Geiselhart with the filter casing to separate and seal the filter, so that the fluid does not escape around the filter.
Regarding claim 4, Geiselhart is silent wherein the current line runs outside the casing with respect to the filter provided within the casing.
Booth discloses the casing for the filter as in claim 3.
It would have been obvious to one of ordinary skill in the art that in the combination the current line would be outside the filter casing, especially given Fig. 1 with the current line separate from the filter.
Regarding claim 5, Geiselhart is silent wherein the casing surrounding the filter and the current line running around the casing are surrounding by the housing, which comprises an electrically insulating material.
However, Booth discloses a housing for housing the elements of the device (par. [0063]).
It would have been obvious to one of ordinary skill in the art to modify Geiselhart with the second housing of Booth, consolidating components together to be more easily handled.
Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Geiselhart, in view of Fleenor, in further view of Wallace (US 2017/0215936).
Regarding claim 6, Geiselhart is not explicit wherein the filter is designed to absorb particles of a predetermined minimum size from 0.1 um.
However, Wallace discloses filters for fluid capable of filtering down to 0.1 micron (par. [0138] filtering down to 0.1 micron), at sub-viral sizes.
It would have been obvious to one of ordinary skill in the art to modify Geiselhart with the filter capability of Wallace, allowing for filtering viral sized particles (par. [0138]).
Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Geiselhart, in view of Fleenor, in further view of Tesar (US 2015/0018622).
Regarding claim 7, Geiselhart is not explicit wherein the filter comprises a hydrophobic material.
However, Tesar discloses a hydrophobic filter allowing gas through but preventing water (2088 as in par. [0599]).
It would have been obvious to one of ordinary skill in the art to modify Geiselhart with the hydrophobic filter of Tesar, as a filter allowing gas through while stopping liquids such as water through.
Claim(s) 9 and 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Geiselhart, in view of Fleenor, in further view of Skalnyi (US 2017/0128127).
Regarding claim 9, Geiselhart is silent wherein the fluid line that wherein the fluid line connection, the fluid line and/or the filter are adapted, at a pressure of at most 2 bar, to allow a fluid flow rate of 0.1 l/min to 12 I/min.
However, Skalnyi discloses a fluid line at a pressure of 1 psi, with a flow rate of 0.1 slpm (par. [0097] gas flow with a pressure source to deliver a given flow rate).
It would have been obvious to one of ordinary skill in the art to modify Geiselhart with the fluid line with the pressure and flow rate of Skalnyi, as known pressure and flow rates that allow for fluid delivery.
Regarding claim 18, Geiselhart discloses substantially all the limitations of the claim(s) except for the fluid line connection, the fluid line and/or the filter are adapted to allow a fluid flow rate of 0.4 I/min to 1.2 I/min. It would have been obvious to one having ordinary skill in the art at the time the invention was made to have the fluid flow rate in the given range, 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. In re Aller, 105 USPQ 233. There is further no evidence of criticality of the claimed range of flow rate.
Claim(s) 13-15, and 20-21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Geiselhart, in view of Fleenor, in further view of Diamant (US 2011/0208206).
Regarding claim 13, Geiselhart is silent regarding the device comprises a machine readable identifier which is associated with a diameter of the device.
However, Diamant discloses RFID tags at a coupling part to determine information about an element to be connected (par. [0091], par. [0101] RFID showing information such as diameter).
It would have been obvious to one of ordinary skill in the art to modify Geiselhart with the RFID tags and detection of Diamant, to detect coupling of elements together to determine properties of the connected element for proper usage.
Regarding claim 14, Geiselhart is silent wherein the identifier is provided on the coupling unit.
However, Diamant discloses the RFID tag provided on the coupling unit (par. [0091)).
It would have been obvious to one of ordinary skill in the art to modify Geiselhart with the RFID tags and detection of Diamant, to detect coupling of elements together to determine properties of the connected element for proper usage.
Regarding claim 15, Geiselhart is silent, but Diamant discloses wherein the identifier is of the RFID type (par. [0091]).
It would have been obvious to one of ordinary skill in the art to modify Geiselhart with the RFID tags and detection of Diamant, to detect coupling of elements together to determine properties of the connected element for proper usage.
Regarding claim 20, Geiselhart discloses substantially all the limitations of the claim(s) except for wherein the filter has a cross-sectional area through which fluid flows in the range from 500-1000 mm squared. It would have been obvious to one having ordinary skill in the art at the time the invention was made to have the area in a range from 500-1000 mm squared, 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. In re Aller, 105 USPQ 233. There is further no evidence of criticality of the claimed range of cross-sectional area.
Regarding claim 21, Geiselhart discloses substantially all the limitations of the claim(s) except for
wherein the filter has a cross-sectional area through which fluid flows in the range from 700 mm
squared. It would have been obvious to one having ordinary skill in the art at the time the invention was made to have the area at 700 mm squared, 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. In re Aller, 105 USPQ 233. There is further no evidence of criticality of the claimed range of cross-sectional area.
Claim(s) 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Geiselhart, in view of Fleenor, in further view of Soring (US 5,626,560).
Regarding claim 19, Geiselhart is silent regarding the fluid line is included in a hose line that comprises PTFE. However, Soring discloses fluid line hoses have PTFE, as a known gas tight material to prevent escape of gas (col. 4, lines 29-34). It would have been obvious to one of ordinary skill in the art to modify Geiselhart with the PTFE hose line, as in Soring, as a gas-tight material for a gas line.
Response to Arguments
Applicant’s arguments, see the remarks, filed 3/2/26, with respect to the rejection(s) of claim(s) 1-21 under 35 USC 103 have been fully considered and are persuasive. The amendment to the claims changed the scope of the claims. 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 Fleenor looking to Fig. 3 and a different interpretation of the second housing.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BO OUYANG whose telephone number is (571)272-8831. The examiner can normally be reached M-F 8-5 EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joanne Rodden can be reached at 303-297-4276. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BO OUYANG/Examiner, Art Unit 3794
/JOANNE M RODDEN/Supervisory Patent Examiner, Art Unit 3794
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