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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 02/05/2026 has been entered.
Response to Amendments
The amendment filed 02/05/2026 has been entered. Claims 1 & 5-14 remain pending in the application.
Response to Arguments
Applicant's arguments with respect to claims 1 & 5-14 have been considered but are not seen as persuasive, see reasoning below.
Regarding amended claim 1, applicant argues that Kapfermann does not suggest or teach wherein the locking element selectively acts upon only one of two contacts. While examiner does agree that WITTKE and FU in view of Kapfermann does not suggest in combination wherein the locking element selectively acts upon only one of the two contacts. The amended claim recites “the mechanical latching means extends into only one of the two receptacles to engage and lock only a corresponding of the two contacts of the electrode carrier” such that Kapferman discloses a contact body containing only one receptacle such that that one receptacle contains mechanical latching means that extends into the receptacle to engage and lock the contact of the electrode carrier (Figure 5, 16; Paragraph [0024]; wherein by pressing the actuating knob 23, the slider 16 can be moved so that the catch is released). While Kapferman does contain two electrical contacts in a singular receptacle, Claim 1 recites that each receptacle has at least one electrical contact therefore, between the two contacts it is seen as one contact per receptacle, Kapferman mechanical latching means contacts an electrical contact of a singular receptacle which still teaches the limitations as claimed by claim 1. Such that if applicant wants the mechanical latching means to selectively engage with one contact of one receptacle, examiner suggests amending claim 1 to better reflect that. Applicant also argues that it would not be obvious to combine the feature of WITTKE and FU in view of Kapfermann such that a PHOSITA would intuitively seek a symmetrical solution that secures both contacts equally to ensure maximum stability. Examiner disagrees, claim 1 does not state there is not a latching mechanism for the second contact in the second receptacle such that it could be one different from the one taught for the first contact wherein both contacts in each receptacle is locked in. A PHOSITA would have looked at Kapfermanns singular receptacle with its locking mechanism and incorporated into WITTKE contact body which contains two receptacle such that one receptacle would contain the limitation taught by Kapfmermann and the other receptacle could have be designed as how WITTKE discloses. Therefore, examiner stands by the rejection as taught above and in the non-final action below.
Regarding claims 5-14, Examiner sees claim 1 dependents as being unpatentable over WITTKE and FU in view of Kapfermann as taught by the Final action and the reasonings above.
Claim Interpretation
The use “for” in the claim is seen as intended use and therefore is given limited patentable weight and the prior art used below would be capable of performing the “for” function based on structure.
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
Claim 1 is being interpreted under 35 U.S.C. 112(f) for the recitation of “a mechanical latching means”. Examiner is interpreting this as any element that is able to be actuated and structurally could extend into a receptacle as specified on Page 4, Paragraph 4 in the specification.
Claim 7 is being interpreted under 35 U.S.C. 112(f) for the recitation of “a mechanical latching means”. Examiner is interpreting this as any element that is able to be actuated and structurally could extend into a receptacle as specified on Page 4, Paragraph 4 in the specification.
Claim 7 is being interpreted under 35 U.S.C. 112(f) for the recitation of “a maneuvering means”. Examiner is interpreting this as a spring-tensioned button or any element that functions as a spring-tensioned button as specified on Page 4, Paragraph 4 in the specification.
Claim 11 is being interpreted under 35 U.S.C. 112(f) for the recitation of “a first gripping means”. Examiner is interpreting this as any element that an operator can grasp as specified on Page 1, Paragraph 5 of the specification.
Claim 11 is being interpreted under 35 U.S.C. 112(f) for the recitation of “a second gripping means”. Examiner is interpreting this as any element that can have a finger unit or a thumb ring as specified on Page 1, Paragraph 5 of the specification.
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 1, 5, 7-9 & 14 is rejected under 35 U.S.C 103 as being unpatentable over WITTKE et al (DE 102020124427) herein referred to as WITTKE and Kapfermann et al (US 20140018799) herein referred to as Kapfermann in further view of FU et al. (CN 111358547) herein referred to as FU.
Regarding Claim 1, WITTKE discloses a contact body for a resectoscope (Figure 2), comprising two receptacles at a proximal end (Figure 2, 22), each receptacle having at least one electrical contact (Figure 7, 23), of an electrode carrier of a handheld device (Figure 7, 6), the contact being able to be mechanically and electrically coupled in the receptacle (Paragraph 32; Paragraph 36), wherein the two receptacles are oriented parallel to each other and also parallel to a longitudinal axis of the resectoscope and are dispersed in a common plane (Figure 2; wherein both receptacles 22 are parallel to each other; See annotated Figure 3 below; wherein the cut-out view of Figure 3 is seen as the common plane). However, WITTKE does not explicitly disclose a mechanical latching means for releasable coupling a proximal end of the electrode carrier; wherein the two receptacles are designed as a continuous bore through the contact body and wherein the two receptacles have, on an inner wall, the electrical contact which is coupled to a generator via a plug connector and an electrical connection, the plug connector is disposed in the contact body and the mechanical latching means extends into only one of the two receptacle to engage and lock only a corresponding of the two contacts of the electrode carrier.
KU discloses a contact body of an electrosurgical device (Figure 1, 5) wherein the at least one receptacle is designed as a continuous bore through the contact body (Figure 9, 51) Therefore, it would have been obvious to one of the ordinary skill in the art before the effective filing date of the claimed invention to have modified the receptacle taught by Kapfermann to be a continuous bore as taught by KU. The motivation being to be able to slide an insert through a contact body for scooping and removing operation (KU, Paragraph [0052]).
Kapfermann discloses a contact body (Figure 1, 12) for a resectoscope (Paragraph [0001]) wherein a mechanical latching means for releasable coupling a proximal end of the electrode carrier (Figure 5, 16); a receptacle has on an inner wall, an electrical contact which is connectable to a generator via a plug connector and an electrical connection (Figure 2; Paragraph [0025]; wherein electrical contacts 30 & 31 are electrically connected to conductors 32 & 33 and is connected to two poles of a bipolar current source which can be a generator), the plug connector being integrated in the contact body (Figure 2, 27) and the mechanical latching means extends into one receptacle to engage and lock only a corresponding of the two contacts of the electrode carrier (Figure 2; Paragraph [0024]; wherein by pressing the actuating knob 23, the slider 16 can be moved so that the catch is released such that when the mechanical latching means is locked, the electrical contacts 28 & 29 of the electrode carrier are locked into contact with contacts 30 & 31). Therefore, it would have been obvious to one of the ordinary skill in the art before the effective filing date of the claimed invention to have modified the receptacle taught by WITTKE in view of FU to include the electrical contact points as taught by Kapfermann. The motivation being to connect the cable to the two poles of a bipolar current source and to engage in a latching manner at the end region of electrode carrier to secure the latter in the electrode mounting in position. (Kapfermann, Paragraph [0024]-[0025])
Regarding claim 5, WITTKE and FU in view of Kapfermann discloses the contact body as claimed in claim 1. Kapfermann also discloses wherein the electrical contact is designed, inside the at least one receptacle, as a cylindrical, hollow cylindrical or annular electrical contact (Paragraph [0025]; wherein the electrical contacts are ring shaped therefore seen as a hollow cylindrical shape). Therefore, it would have been obvious to one of the ordinary skill in the art before the effective filing date of the claimed invention to have modified the receptacle taught by WITTKE and FU in further view of Kapferman to include the electrical contact points as taught by Kapfermann. The motivation being it allow for the contacts to be electrically connected to multiple component (Kapfermann, Figure 2; wherein electrical contacts 30 & 31 are connected to contact surfaces 28 & 29 as well as conductors 32 and 33)
Regarding claim 7, WITTKE and FU in view of Kapfermann discloses the contact body as claimed in claim 1. Kapfermann also discloses wherein the latching element being able to be actuated, via a maneuvering means (Paragraph [0024]; wherein by pressing the actuating knob 23, the slider 16 can be moved so that the catch is released). Therefore, it would have been obvious to one of the ordinary skill in the art before the effective filing date of the claimed invention to have modified the contact body taught by WITTKE and FU in further view of Kapferman to include mechanical latching means as taught by Kapfermann. The motivation being the contact body can be moved thereby in the longitudinal direction under fine control in order to be able to carry out the required tissue cuts with the electrode (Kapfermann, Paragraph [0024])
Regarding claim 8, WITTKE and FU in view of Kapfermann discloses the contact body as claimed in claim 1. WITTKE also discloses wherein the bore of the at least one receptacle has a funnel like shape at a distal outlet (Figure 7, wherein 22 is wider than the space 23 sits in therefore is seen as a funnel like shape), in that an end face of the contact body has a funnel-like depression or a funnel around the bore of the at least one receptacle (Figure 2, 30).
Regarding claim 9, WITTKE and FU in view of Kapfermann discloses the contact body as claimed in claim 1. Kapfermann also discloses wherein a seal, is arranged in the bore, in front of or behind the electrical contact (Figure 2, 32)
Regarding claim 14, WITTKE and FU in view of Kapfermann discloses the contact body as claimed in claim 1. Kapfermann also discloses wherein a distance between the electrode and an electrode casing tube is less than a distance between a proximal end of the electrode carrier and a proximal end face of the contact body (Figure 1, 10; See annotated Figure 2 below; wherein electrode is on the electrode casing therefore the distance is 0 and there is a gap of a distance in between a proximal end of the electrode carrier and a proximal end face of the contact body seen in figure 2). Therefore, it would have been obvious to one of the ordinary skill in the art before the effective filing date of the claimed invention to have modified the contact body taught by WITTKE and FU in further view of Kapferman to include the spacing as taught by Kapfermann. The motivation being it is known, to solve the major problems with resectoscopes with the distance of the electrode mounting from the guide hole (Kapfermann, Paragraph [0012])
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Claim 6 is rejected under 35 U.S.C 103 as being unpatentable over WITTKE, FU and Kapfermann in further view of Eggers et al. (US 5681282) herein referred to as Eggers.
Regarding Claim 6, WITTKE and FU in view of Kapfermann discloses the contact body as claimed in claim 4. However, WITTKE and FU in view of Kapfermann does not explicitly disclose wherein a distance of the at least one contact from an end face of the contact body from an outlet of the at least one receptacle, measures at least 2mm.
Eggers discloses a contact body of a resectoscope (Figure 5A) wherein a distance of the at least one contact from an end face of the contact body from an outlet of the at least one receptacle measures at least 2mm (Column 9, lines 31-34). Therefore, it would have been obvious to one of the ordinary skill in the art before the effective filing date of the claimed invention to have modified the distance of the contact taught by WITTKE and FU in view of Kapfermann to be within the distance taught by Eggers. The motivation being a smaller distance allows for more controlled energy delivery (Egger, Column 9 lines 38-40).
Claim 10-11 is rejected under 35 U.S.C 103 as being unpatentable over WITTKE, FU and Kapfermann in view of Boebel et al. (US 20030181906) herein referred to as Boebel.
Regarding Claim 10, WITTKE and FU in view of Kapfermann discloses the contact body as claimed in claim 4. However, WITTKE and FU in view of Kapfermann does not explicitly disclose wherein the contact body is made of plastic.
Boebel discloses a contact body for a resectoscope (Figure 1, 28) wherein the contact body is made of plastic (Paragraph [0030]; wherein contact body 28 us made of a non-conducting material such as plastic). Therefore, it would have been obvious to one of the ordinary skill in the art before the effective filing date of the claimed invention to have modified the contact body taught by WITTKE and FU in view of Kapfermann to be plastic as taught by Boebel. The motivation being to avoid an unintended current transmission to the operator and/or patient (Boebel, Paragraph [0030]).
Regarding claim 11, WITTKE, FU and Kapfermann in further view of Boebel discloses the contact body as claimed in claim 10. WITTKE also discloses an electrosurgical handheld device, a resectoscope (Figure 1; 1), with an electrode carrier which at a distal end has an electrode (Figure 1, 8 & 6) and at a proximal end has at least one electrical contact (Figure 7, 23), with a grip unit consisting of a first gripping means and a second gripping means (Figure 1, 10 & 12); a tubular shaft which is coupled with a proximal end to the first gripping means (Figure 1, 2); Kapferman also discloses an optical guide for receiving an optical unit (Figure 1, 3; wherein optical guide tube 3 contains optical lens 5), and a contact body through which the optical guide can be guided (Figure 1, 12), the second gripping means can be fastened (Figure 1, 15; wherein second gripping means is fastened to guide plate 4); and in which the at least one electrical contact of the electrode carrier can be latched and/or electrically contacted (Figure 2; electrical contacts of the electrode carrier, 28 & 29, are electrically connected to electrical contacts 30 & 31 of the contact body), wherein a contact body as claimed in claim 1 (See claim 10 above). Therefore, it would have been obvious to one of the ordinary skill in the art before the effective filing date of the claimed invention to have modified the contact body taught by WITTKE and FU in further view of Kapferman to include the optical guide as taught by Kapfermann. The motivation being to distally observe the operating region (Kapfermann, Paragraph [0019])
Claim 12 is rejected under 35 U.S.C 103 as being unpatentable over WITTKE, FU and Kapfermann in view of Hayashida et al. (US 20070093812) herein referred to as Hayashida.
Regarding Claim 12, WITTKE and FU in view of Kapfermann discloses the contact body as claimed in claim 11 wherein at least one component, a stop, of the handheld device, which is arranged in the proximal or distal direction to the contact body or strikes the contact body (Kapfermann, Figure 1, 4; wherein guide plate acts as a stop and is arranged proximally from the contact body). However, WITTKE and FU in view of Kapfermann does not explicitly disclose wherein a stop is made of an electrically non-conductive material or has an electrically non-conductive layer.
Hayashida discloses resectoscope (Figure 1) wherein a stop is made of an electrically non-conductive material or has an electrically non-conductive layer (Paragraph [0147]; wherein end stopper is covered in a plastic material therefore is seen as an electrically non-conductive layer ). Therefore, it would have been obvious to one of the ordinary skill in the art before the effective filing date of the claimed invention to have modified the stop taught by WITTKE and FU in view of Kapfermann to have an electrically non-conductive layer as taught by Hayashida. The motivation being it would be obvious to try both conductive and non-conductive materials for a stop with a reasonable expectation of success wherein the stop would be able to stop movement of a contact body (MPEP 2143 (E)).
Claims 13 are rejected under 35 U.S.C 103 as being unpatentable over WITTKE, FU, Kapfermann and Boebel in further view of Jones et al. (US 6697529) herein referred to as Jones.
Regarding Claim 13, WITTKE, FU and Kapfermann in further view of Boebel discloses the contact body as claimed in claim 11 wherein a stop is separated by an air gap from the contact body (Kapfermann, Figure 1, 4; wherein guide plate acts as a stop and is separated from the body by an air gap as long as the spring). However, WITTKE, FU and Kapfermann in further view of Boebel does not explicitly disclose wherein a stop is electrically conductive and the air gap having a width of at least 1 mm.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to cause the air gap of WITTKE, FU and Kapfermann in further view of Boebel to have an air gap having a width of at least 1 mm since it has been held that “where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device” Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 SPQ 232 (1984). In the instant case, the device of Kapfermann in view of Ku would not operate differently with the claimed width and since the air gap is just the dimensions of the contact body and stop being separated, the device would function appropriately having the claimed diameter. Further, applicant places no criticality on the range claimed, indicating simply that the air gap having a width of at least 1mm but in particular 2mm (see Specification Page 5, Paragraph 6).
Jones discloses a contact body for an electrosurgical instrument (Figure 5, 46) wherein a stop is electrically conductive (Column 3, lines 52-55; wherein nickel and brass are seen as electrically conductive metals). Therefore, it would have been obvious to one of the ordinary skill in the art before the effective filing date of the claimed invention to have modified the stop taught by Kapfermann in view of Ku to be electrically conductive as taught by Jones. The motivation being it would be obvious to try both conductive and non-conductive materials for a stop with a reasonable expectation of success wherein the stop would be able to stop movement of a contact body (MPEP 2143 (E)).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALYSSA M PAPE whose telephone number is (703)756-5947. The examiner can normally be reached M-F 7:30-5:00.
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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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ALYSSA M. PAPE
Examiner
Art Unit 3794
/JOANNE M RODDEN/Supervisory Patent Examiner, Art Unit 3794