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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 10 March 2026 has been entered. Claims 1, 3, 7, 9, and 16 are currently amended. Claims 10 and 15 are canceled. Claims 1, 3, 7, 9, 14, and 16-19 are pending in the application. Applicant’s amendments to the claims have overcome the rejection under 35 U.S.C. 112(d) previously set forth in the Final Office Action mailed 10 December 2025.
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, 3, 7, 9, 14, and 16-19 are rejected under 35 U.S.C. 103 as being unpatentable over Blocher (US PGPub No. 2005/0267469) in view of Iglesias (US Patent No. 3,973,568), and Dexter et al. (US PGPub No. 2013/0079751), hereinafter Dexter, and further in view of Klaus et al. (DE 102009025047), hereinafter Klaus.
Regarding claims 1 and 14, Blocher teaches an electrode instrument (Fig. 1: electrode carrier 24) for a resectoscope (par. 0052: “a bipolar medical instrument 12 in the form of a resectoscope”) comprising an electrode,
the electrode being fastened to two distal ends of two tubular portions, spaced apart from each other and parallel to each other, of two electrode carriers (Fig. 3: active electrode 54 fastened to distal ends of parallel tubular portions),
the two tubular portions being oriented at least substantially parallel to a longitudinal axis of the electrode instrument, and configured as electrode casing tubes which extend parallel to each other from the distal end to the proximal end of the electrode instrument (Figs. 1-4: bars 46 and 48 parallel to the longitudinal axis of the electrode carrier; par. 0062: “The electrode carrier 24 is made up of two bars 46 and 48 which extend parallel to one another and run approximately the length of the shaft 20 of the instrument 12”),
wherein at least one guide element is arranged on the electrode carriers (Fig. 2: fixation elements 50 and 52), the at least one guide element connecting the two tubular portions to each other, being convex at least in part, and extending away from the longitudinal axis, wherein the at least one guide element has, perpendicular to the longitudinal axis, an arcuate cross section (par. 0062: “par. 0062: “In the central area of the bars 46 and 48, the latter are connected to one another by fixation elements 50 and 52 which have an approximately U-shaped cross section;” examiner interprets an approximately U-shaped cross section as arcuate, in its broadest reasonable interpretation of “curved”),
wherein an undercut for a latching connection to an inner shaft or an optical unit is formed from the at least one guide element and the electrode carriers (par. 0062: “In the central area of the bars 46 and 48, the latter are connected to one another by fixation elements 50 and 52 which have an approximately U-shaped cross section and which also ensure guiding of the electrode carrier 24 along the endoscope optical unit 22 when the electrode carrier 24, as has been described above, is moved relative to the endoscope optical unit;” examiner interprets the U-shaped fixation elements connecting the parallel bars to ensure guiding along an optical unit as an undercut for a latching connection to the optical unit, as broadly as claimed),
and wherein the cross section corresponds, with its shape or its radius, to the shape or the radius of a component of the resectoscope, such that the at least one guide element can be placed on or under this component (par. 0062: “fixation elements 50 and 52 […] ensure guiding of the electrode carrier 24 along the endoscope optical unit 22 when the electrode carrier 24, as has been described above, is moved relative to the endoscope optical unit”).
Blocher does not explicitly teach wherein the at least one guide element has, at two opposite sides, circular-segment shaped receptacles which correspond to the shape of the portions or the electrode carriers, wherein these receptacles engage at least partially around the portions or electrode carriers from the outside. However, in an analogous art, Iglesias teaches wherein a guide element for a resectoscope has, at two opposite sides, circular-segment shaped receptacles which correspond to the shape of tubular portions or electrode carriers (Figs. 1-3: tubes 50, 52 and parallel arms 30, 32), wherein these receptacles engage at least partially around the tubular portions or electrode carriers from an exterior of the tubular portions or electrode carriers (col 3, lines 21-35: “the two tubes 50, 52 which are attached to the exterior wall of tube 40 adjacent the distal end thereof, which are spaced 180° apart, which engage and preferably surround the spaced parallel arms 30, 32 of the cutting loop assembly, […] The tubes 50, 52 may be closed tubes or open-sided clips and may be of any cross sectional shape;” examiner notes that circular tubes 50, 52 configured as open-sided clips would be circular-segment shaped and engage the electrode carriers from an exterior of the carriers, wherein “an exterior” is broadly interpreted to mean any external surface of the electrode carriers). Iglesias teaches that the receptacles as disclosed provide additional stability (col 3, lines 28-32: “These tubes extend the stabilizing and strengthening effect of the tube 40 in a distal direction along the cutting loop assembly thus increasing that effect due to the tube itself”).
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the electrode instrument of Blocher by providing the guide element with circular-segment shaped receptacles which correspond to the shape of the tubular portions and engage at least partially around the tubular portions, as taught by Iglesias, in order to provide additional stability, as taught by Iglesias.
Blocher further does not explicitly teach wherein the at least one guide element is made of a reversibly deformable material, or wherein the at least one guide element is configured to be elastically deformed to be clipped onto the inner shaft or the optical unit; or wherein the at least one guide element comprises a recess at each of two opposite end faces thereof, and wherein a tangent to a surface of each end face along the recess encloses a non-90° angle with the longitudinal axis at substantially every point along said surface. However, in an analogous art, Dexter teaches a clip for connecting a component to a surgical instrument (Fig. 1: clip 114 connecting irrigation tube 10 to instrument 102) wherein the clip is made of a reversibly deformable material and is configured to be elastically deformed to be clipped onto a shaft (Figs. 1-2 and par. 0035: “Each set of arms 132, 134 has two arms 180, each having an arm end 182. The sets of arms 132, 134 form a C-shape and have a curvature forming a diameter slightly or smaller than the diameter of the surgical instruments. The arms 180 are also elastically resilient so that the instrument 102 may be pressed between the arms 180, forcing the arms 180 to separate to receive the instrument 102, and then snap onto the instrument 102 as the instrument maximum diameter passes the arm ends 182”), and the clip comprises a recess shaped like an arc of a circle at each of two opposite end faces thereof (Fig. 1: clip 114 recessed in semicircular fashion on both ends; examiner notes that as the recess follows the circular shape of the tube, it must inherently be shaped like an arc of a circle, which in turn has a non-90° angle with the longitudinal axis at substantially every point along its end face surface).
Dexter teaches that the disclosed material and shape allows the clip to be easily removed from or displaced along the instrument (par. 0035: “Because of the resilient nature of the arms 180, the arms 180 can tightly grip the instrument 102, securing the clip 114 in place, yet still be easily removed from or displaced along the instrument 102. The arms 180 compliant or flexible nature of the arms provide a biasing or pulling force when on the instrument 102 that pulls the body 130 close to and against the instrument 102”). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the device of the combined reference by forming the clip with a reversibly deformable material and circular recesses at each end, as taught by Dexter, so that the clip can be easily removed from or displaced along the instrument, as taught by Dexter.
The combination does not explicitly teach wherein the recesses prevent the at least one guide element from wedging on a component of the resectoscope during assembly. However, while features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function, because apparatus claims cover what a device is, not what a device does (Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990)). Thus, if a prior art structure is capable of performing the intended use as recited in the preamble, or elsewhere in a claim, then it meets the claim.
Blocher is silent with respect to the dimensions of the guide element and does not explicitly teach that a distance between two opposite sides of the guide element measures 3 mm to 8 mm. However, in related resectoscope art, Klaus teaches that a maximum shaft diameter of 5.6 mm to 7 mm is desirable for a resectoscope, with the advantage of less pain for the patient (see machine translation at par. 0006: “a shaft with a maximum diameter of 7 mm […] More preferably, the shaft has a maximum diameter of 6 mm or more preferably 5.6 mm as a maximum diameter. A thinner shaft offers the advantage of less pain for the patient”). Since the guide element of Blocher is positioned within the shaft of a resectoscope, the distance between two opposite sides of the guide element must be equal to or less than the diameter of the shaft. In light of Klaus’s teaching of maximum desirable shaft diameters for a resectoscope, therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to configure the distance between two opposite sides of the guide element to measure 3 mm to 8 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. In re Aller, 105 USPQ 233.
Regarding claim 3, the combination teaches the instrument of claim 1 as described previously. Blocher further teaches wherein the at least one guide element comprises two or more guide elements arranged on the two electrode carriers (Fig. 2: two fixation elements 50 and 52).
Regarding claim 7, the combination teaches the instrument of claim 1 as described previously. Blocher further teaches wherein the at least one guide element can be joined around or onto a component of the resectoscope, such that the electrode instrument is movable relative to the component along the longitudinal axis (par. 0062: “fixation elements 50 and 52 […] ensure guiding of the electrode carrier 24 along the endoscope optical unit 22 when the electrode carrier 24, as has been described above, is moved relative to the endoscope optical unit”).
Regarding claim 9, the combination teaches the instrument of claim 1 as described previously. Blocher further teaches wherein the at least one guide element can be arranged on the portions above or below the longitudinal axis of the electrode instrument, the at least one guide element being arranged above the longitudinal axis of the electrode instrument and being open toward the bottom, or the at least one guide element being arranged below the longitudinal axis of the electrode instrument and being open toward the top (Fig. 2: fixation elements 50, 52 arranged below the longitudinal axis of the electrode carrier 24 and being open toward the top). Examiner notes that because the claim limitations are recited in the alternative, Blocher is considered to read on the claim even when disclosing only one of the alternative configurations.
Regarding claim 16, the combination teaches the instrument of claim 1 as described previously but is silent with respect to the symmetry of the at least one guide element and does not explicitly teach wherein the at least one guide element is symmetrical, wherein two side edges and two end faces are symmetrical to one another. However, Dexter further teaches a symmetrical guide element (Fig. 1: symmetrical clip 114). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to form the at least one guide element symmetrically, as suggested by Dexter, since a change in form or shape is generally recognized as being within the level of ordinary skill in the art, absent any showing of unexpected results. In re Dailey et al., 149 USPQ 47.
Regarding claim 17, the combination teaches the instrument of claim 1 as described previously. Blocher further teaches a resectoscope with the electrode instrument of claim 1 (Fig. 1: resectoscope 12; par. 0056: “The instrument 12 has an elongate shaft 20 in which an endoscope optical unit 22 and an electrode carrier 24 are arrange”) and with an inner shaft (Fig. 1: shaft 20) in which an optical unit is mounted (Fig. 1: optical unit 22), wherein the electrode instrument can be guided on the inner shaft with the at least one guide element (par. 0062: “fixation elements 50 and 52 which have an approximately U-shaped cross section and which also ensure guiding of the electrode carrier 24 along the endoscope optical unit 22 when the electrode carrier 24, as has been described above, is moved relative to the endoscope optical unit”).
Regarding claim 18, the combination teaches the resectoscope of claim 17 as described previously. Blocher further teaches wherein a longitudinal axis of the electrode instrument lies above or below a longitudinal axis of the inner shaft (Fig. 4: longitudinal axis of electrode carrier 24 below longitudinal axis of shaft 20).
Regarding claim 19, the combination teaches the resectoscope of claim 17 as described previously. Blocher further teaches wherein a longitudinal axis of the electrode instrument and a longitudinal axis of the inner shaft lie in one plane (Fig. 5: front view of resectoscope 12; examiner notes that the electrode carrier and inner shaft have longitudinal axes lying in the same vertical plane).
Response to Arguments
Applicant’s arguments, filed 10 March 2026, with respect to the rejection(s) of claim(s) 1 under 35 U.S.C. 103 have been fully considered and are persuasive. Therefore, in light of the amendments to claim 1, the previous rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Dexter. As described previously, Dexter teaches a clip with circular recesses on both ends that is configured to be elastically deformed to be clipped onto an inner shaft or optical unit.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVINA E LEE whose telephone number is (571)272-5765. The examiner can normally be reached Monday through Friday between 8:00 AM and 5:30 PM (ET).
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/D.E.L./Examiner, Art Unit 3794
/JOANNE M RODDEN/Supervisory Patent Examiner, Art Unit 3794
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