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 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.
Status of the Claims
The current office action is made responsive to claims filed 12/10/2025.
Acknowledgement is made to the amendment of claim 1.
Acknowledgement is made to the cancellation of claims 2.
Any claims listed above as cancelled have sufficiently overcome any rejections set forth in any of the prior office actions.
Any claims listed above as withdrawn have been withdrawn from further consideration by the examiner, as these claims are drawn to a non-elected invention.
Claims 1 and 3-12 are pending. A complete action on the merits appears below.
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.
Claims 1, 3-9, 11-12 are rejected under 35 U.S.C. 103 as being unpatentable over Ohyama (US 20030233089 A1) in view of Grossi (US 4920961 A), Greep (US 20100274242 A1) and Ouyang (US 20200221932 A1).
Regarding claim 1, Ohyama teaches a contact body (Fig. 1; slider 53) for an electrosurgical handheld device (Fig. 1; resectoscope apparatus 1), a resectoscope (Fig. 1; resectoscope 6), or receiving an optical guide (Fig. 1; scope 3), for fastening a grip unit (Fig. 1; thumb-hook ring 56), and for coupling at least one electrical contact of an electrode instrument (Fig. 1; electrode fixing portion 54) of the handheld device, wherein the contact body has a continuous bore (Fig. 1; guide tube 52) for receiving the optical guide and also parallel to a longitudinal axis of the handheld device ([0034], [0040]).
However, Ohyama fails to teach the contact body being configured to be removed from the optical guide for maintenance.
Grossi teaches the known use of endoscopes as having removable sheaths so as to be used with a variety of different tools, such as a telescope without the need to change the placement of the sheath (Col. 1, Lines 12-22).
Therefore it would have been obvious to a person having ordinary skill in the art before the effective filing date to have incorporated the known use of a telescope as being removable from an endoscope, as is taught by Grossi, into the resectoscope having a scope as is taught by Ohyama, to produce the predictable result of allowing the endoscope to be used with a variety of tools without the need to change the placement of the endoscope sheath, as is taught by Grossi, as it has been held that the incorporation and/or combination of prior art elements according to known methods to yield predictable results is an obvious modification. MPEP 2141(III).
Ohyama further fails to specifically teach the contact body as having a slit parallel to a longitudinal axis of the handheld device for receiving the optical guide; wherein the slit extends from an outer wall of the contact body to the bore; the slit includes a continuous surface that extends along an entire length of the contact body and is parallel to the longitudinal axis; the contact body has an annular cross section that intersects with the slit such that the contact body defines open and deformable ring ends; and the contact body is configured be fit onto the tubular optical guide in a lateral direction by separating the deformable ring ends.
Greep teaches an electrosurgical instrument having a handle containing a longitudinal channel for receiving a flexible elongated tube, such as an electrical cable (Abstract).
Greep further teaches the channels for receiving the elongate tube as containing a slit parallel to a longitudinal axis of the handle wherein the slit extends from an outer wall of the contact body to the bore (Fig. 3-8; the electrosurgical instrument 150 contains a longitudinal channel 168 to receive and retain a cable 160 this channel being comprised of a portion which retains the cable and a slit, which is understood to encompass the opening portion along the outer surface of the instrument, as a slit is understood to be a long narrow opening, as defined by Oxford Languages, as broadly as is currently is claimed); the slit includes a continuous surface that extends along an entire length of the contact body and is parallel to the longitudinal axis ([0038] teaches the channel as extending in a straight line from receptacle 164 to proximal end 154); the contact body has an annular cross section that intersects with the slit such that the contact body defines open and deformable ring ends ([0049]- [0051]); and the contact body is configured be fit onto the tubular optical guide in a lateral direction by separating the deformable ring ends ([0013], [0054]).
Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date to have substituted the channel system for receiving a flexible elongate tube, as is taught by Greep into the proximal portion of the handle portion of the resectoscope for receiving the scope, as is taught by Ohyama, as both element perform the function of receiving a cable within the handle portion of an electrosurgical device and it has been held that substituting prior art elements according to known methods to yield predictable results is an obvious modification. MPEP 2141(III)
Ohyama as modified further fails to teach the fit as being a snap-fit.
Ouyang teaches an endoscope having a handle portion and a cannula portion which can be inserted and removed from a side-slot located within the handle ([0078]- [0079]).
Ouyang further teaches the insertion of the cannula portion into the handle portion as being any of a variety of manners of slidably mating the two pieces, such as snap-fit ([0078]).
Therefore it would have been obvious to a person having ordinary skill in the art before the effective filing date to have incorporated the cannula and handle as being snap-fit mated, as is taught by Ouyang, into the channel which receives the cable as is taught by Greep, to produce the predictable result of slidably mating two element in a known manner, as is taught by Ouyang, as it has been held that the incorporation and/or combination of prior art elements according to known methods to yield predictable results is an obvious modification. MPEP 2141(III).
Regarding claim 3, Greep teaches the contact body for an electrosurgical handheld device as claimed in claim 1, wherein the slit has two side walls ([0038], [0048]), which are parallel or enclose an angle (As broadly as is currently claimed, all slits comprised of two walls are either parallel or enclose an angle), or in that the side walls have a triangular cross section, wherein two corners of the side walls lie directly opposite and parallel to each other.
Regarding claim 4, Greep teaches the contact body for an electrosurgical handheld device as claimed in claim 1, wherein a cross section of the contact body has an annular, preferably circular or oval shape, wherein the slit constitutes an opening in the shape (Fig. 4-8; [0038], [0048]).
Regarding claim 5, Greep teaches the contact body for an electrosurgical handheld device as claimed in claim 1, wherein a plane extending parallel and centrally between the side walls intersects a central axis of the bore (Fig. 4-8; [0038], [0048]).
Regarding claim 6, Greep teaches the contact body for an electrosurgical handheld device as claimed in claim 1, wherein a width of the slit is less than the diameter of the bore (Fig. 4-8; [0038], [0048]).
Regarding claim 7, Greep teaches the contact body for an electrosurgical handheld device as claimed in claim 1, wherein the bore has a diameter of 3 mm to 6 mm, and the slit has a width of 3 mm to 4.5 mm, wherein the diameter is slightly greater than a diameter of the tubular element (It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention, since it has been held that where the general conditions of a claim are disclosure 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 8, Greep teaches the contact body for an electrosurgical handheld device as claimed in claim 1, wherein a ratio between a width of the slit, and a diameter of the bore is 0.6 to 0.9 (It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention, since it has been held that where the general conditions of a claim are disclosure 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 9, Ohyama teaches the contact body for an electrosurgical handheld device as claimed in claim 1, wherein the contact body is a slide for an active or passive resectoscope ([0033]- [0037]).
Regarding claim 11, Ohyama teaches the contact body for an electrosurgical handheld device as claimed in claim 1, wherein the contact body has at least one receptacle (Fig. 1; connector 55) for a contact of the electrode instrument, and this receptacle is connected to at least one plug socket, in particular in that a plug socket is integrated in the contact body ([0035]- [0039]).
Regarding claim 12, Ohyama teaches an electrosurgical handheld device, with an electrode instrument (Fig. 1; electrode unit 4) which at a distal end has an electrode (Fig. 1; electrode 41) and at a proximal end has at least one electrical contact (Fig. 1; electrode fixing portion 54) with a grip unit (Fig. 1; handle portion 5) consisting of a first gripping means (Fig. 1; finger hook 58) and a second gripping means (Fig. 1; thumb-hook ring 56), with a tubular shaft (Fig. 1; guide tube 52) which is coupled with a proximal end to the first gripping means, with an optical guide for receiving an optical unit (Fig. 1; eyepiece portion 33), and a contact body (Fig. 1; handle portion 5) through which the optical guide can be guided, the second gripping means can be fastened ([0034], [0040]), and in which the at least one electrical contact of the electrode instrument (Fig. 1; connector 55) can be latched and/or electrically contacted, wherein a contact body as claimed in claim 1.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Ohyama (US 20030233089 A1) in view of Grossi (US 4920961 A), Greep (US 20100274242 A1) and Ouyang (US 20200221932 A1) further in view of Aue (US 20050070893 A1).
Regarding claim 10, Ohyama /Greep teaches the contact body for an electrosurgical handheld device as claimed in claim 1.
However, Ohyama/Greep fails to specifically teach the contact body wherein the contact body is made of plastic.
Aue teaches a resectoscope including a handle element (Abstract).
Aue further teaches the handle element as being made of plastic as plastic materials are inexpensive and can be manufactured in any sharp and possess the stability required for a handle element ([0022]).
Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date to have incorporated the handle element of a resectoscope as being plastic, as is taught by Aue, into the resectoscope of Ohyama, to produce the predictable result of a resectoscope handle element which is manufactured inexpensively, in any desired shaft and with a required stability, as is taught by Aue, as it has been held that combining prior art elements according to known methods to yield predictable results is an obvious modification. MPEP 2141(III)
Response to Arguments
Applicant’s arguments with respect to the claims have been considered but are moot because the amendments have necessitated new grounds of rejection.
Further, Applicant’s arguments of the limitations that art not taught by the Ohyama/Greep reference are moot in view of the new rejections under Ohyama and Grossi/Greep/Ouyang.
In response to Applicant’s argument that there is not a motivation to modify the channel for receiving an elongated surgical element within a handle of an electrosurgical device as is taught by Ohyama in view of Greep is currently unpersuasive as the argument is based on a rationale for combination which does not require a teaching, suggestion, or motivation explicitly found in the prior art. Specifically, as the provided simple substitution of one known element for another when both elements perform the same function has been held to involve only routine skill in the art and is in and of itself a motivation for combining prior art, as can be found in MPEP 2141(III) and MPEP 2143.
In response to Applicant’s arguments that a PHOSITA would not have incorporated Greep into Ohyama as the elongated surgical element of Ohyama is discussed as being rigid in comparison to the teaching of Greep which discusses this analogous element as being flexible is currently unpersuasive as a person having ordinary skill in the art would understand that both of the elongated tubular structures of the prior art would be capable of receiving the elongated surgical elements and that the rigidity/flexibility of the elongated surgical elements does not make these elongated tubular structures incapable of receiving these elongated surgical elements and therefore a person having ordinary skill in the art would understand that it would have been obvious to have substituted one known element for another to produce the predictable result of receiving these elongated surgical elements.
Conclusion
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/LINDA C DVORAK/Primary Examiner, Art Unit 3794
/L.R.L./Examiner, Art Unit 3794