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 03/03/2026.
Acknowledgement is made to the amendment of claims 1, 5, 8, 10 and 17.
Acknowledgement is made to the withdrawal of claims 16-17.
Any claims listed above as withdrawn have been withdrawn from further consideration by the examiner, as these claims are drawn to a non-elected invention.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 1-15 are pending as rejected below. 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 1-15 are rejected under 35 U.S.C. 103 as being unpatentable over Brockmann (US 20180235688 A1) in view of Lee (US 20120053577 A1) and Gronowski (US 20150243409 A1).
Regarding claim 1, Brockmann teaches an electrode instrument (Fig. 2; high-frequency tool 10) for a surgical handheld device (Fig. 1; resectoscope 12) comprising at least one tube-like electrode carrier (Fig. 3; electrode support 14), at a distal end of which an electrode (Fig. 2; electrode 13) is fastened, wherein an electrical conductor (Fig. 3; conductor wires 27, 28) is guided within the electrode carrier from a proximal end of the electrode carrier to the electrode and the electrical conductor is electrically insulated from an electrode casing tube (Fig. 3; arms 18, 19) by insulation in a form of flexible tubing (Fig. 3; insulated tubes 25, 26), wherein the electrical conductor is pressed at least one position in the electrode carrier ([0008]- [0009], [0014], [0016]- [0017] discuss the portions of the electrode and the electrode support which are sheathed by the insulation, such as the conductor wires, as being crimped, pressed, or otherwise inserted into the insulated tubes), wherein:
the electrode carrier has a cross section with at least one pressed side at the pressed position ([0027], [0030] teaches the widened areas at the ends of the electrode support as being openings for the electrodes to be inserted within);
the insulation defines an outer surface contacting each of the at least one pressed side such that the outer surface contacts the at least one pressed side at a pressed position provided at a distal most end of the electrode carrier ([0030]); and
the insulation defines an inner circumference contacting the electrical conductor ([0029]); and
the pressing of the electrode carrier into the cross section compresses the flexible tubing such that a permanent pressure is created between the electrical conductor, the flexible tubing, and the electrode casing tube to create a frictional connection that withstands axial tensile forces and seals an interior of the electrode carrier against liquids (In accordance with MPEP 2114 this currently taught structure of the electrode carrier being pressed into the flexible tubing, would perform the function of compressing the flexible tubing, as this limitation is a recitation of the intended use of the claimed invention, and as this prior art structure is capable of performing this intended use based on the recited characteristics of this element, currently reads on the provided claim limitation, unless otherwise shown that the prior art does not possess these characteristics).
However, Brockmann fails to teach the cross section having at least one side of the electrode carrier as having six sides of equal length, the outer surface of the insulation which contacts the six sides of the electrode carrier as defining a hexagonal cross section and that the inner circumference defines a circular cross section.
Specifically, Brockmann, while teaching on a variety of mechanical fixation connections, is silent on any specific shape, number of sides, or other specificity of the elements of the connection or which would accompany the connection, such as the shape of the elements or the shape which is formed from the crimping or clamping discussed by Brockmann.
Lee teaches a system for delivering energy to tissue by a transmission line having a dielectric material surrounding an inner conductor (Abstract, [0018]- [0020]).
Lee further teaches that any of the transmission line and/or one or more sub-components may be any shape, such as circular, non-circular, any variety of polygonal shapes, such as a hexagon ([0018]- [0020]).
Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date to have provided the electrode carrier or any of its components with any known shape having any number of sides as using any shape with any number of sides with rounded or sharp corners between them as is discussed by Lee. Additionally, it has been held that a change of shape is an obvious modification (MPEP 2144.04(IV)(B)), specifically as there is no evidence that using a known simple geometric shape would produce a result that would be unexpected by a person having ordinary skill in the art.
While Lee teaches the shape of this element as being any variety of polygonal shapes, such as a hexagon, Lee does not specifically teach the corners of which are located between the six pressed sides as being rounded corners.
Gronowski teaches a device having layers which are formed of conductive layers and insulative layers ([0022]) wherein the cross-sectional shape of at least one of the layers may be formed of a wide variety of suitable cross-sectional shapes, such as a hexagonal or general polygonal shape ([0019]).
Gronowski further teaches that the corners of this cross-sectional shape may be any variety of forms as desired, such as sharp, rounded, or otherwise formed ([0019]).
Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date to have provided the hexagonal shape as is taught by Lee, to be in the form of any known suitable shape, such as one with rounded corners, as is taught by Gronowski. Additionally, it has been held that a change of shape is an obvious modification (MPEP 2144.04(V)(B)), specifically as there is no evidence that using a known suitable shape, such as a simple geometric shape, would produce a predictable result that would be unexpected by a person having ordinary skill in the art.
Regarding claim 2, Lee further teaches the electrode instrument according to Claim 1, wherein sharp corners of non-pressed electrode casing tube are located between the pressed sides ([0019] teaches the hexagon as being regular).
Regarding claim 3, in accordance with the above rejection of claim 1, Lee further teaches the electrode instrument according to claim 1, wherein the electrode carrier or each electrode casing tube has one to five pressed positions along its entire length, wherein each electrode casing tube has the same number or a different number of pressed positions ([0018]- [0020]).
Regarding claim 4, in accordance with the above rejection of claim 1, Lee further teaches the electrode instrument according to claim 1, wherein a ratio of an external distance opposite corners of an electrode casing tube to an external distance of the sides of the electrode casing tube is 1:0.8 to 1:0.95 (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 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 does not appear to be any disclosed criticality for the recited ratio relative to the prior art. Pending a statement of criticality, the recited ratio does not patentably distinguish over that of the prior art.
Regarding claim 5, in accordance with the above rejection of claim 1, Lee teaches the electrode instrument according to claim 1, wherein a ratio of an internal distance of opposite corners of the electrode casing tube which has been pressed into a hexagonal cross section to an external distance of opposite corners of the pressed electrode casing tube is 1:0.9 - 1:1 (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 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 does not appear to be any disclosed criticality for the ratio relative to the prior art. Pending a statement of criticality, the recited ratio does not patentably distinguish over that of the prior art.
Regarding claim 6, in accordance with the above rejection of claim 1, Lee teaches the electrode instrument according to claim 1, wherein a ratio of an internal diameter of the insulation to a diameter of the electrical conductor at a pressed position is 1:0.9 - 1:1 (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 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 does not appear to be any disclosed criticality for the ratio relative to the prior art. Pending a statement of criticality, the recited ratio does not patentably distinguish over that of the prior art.
Regarding claim 7, in accordance with the above rejection of claim 1, Lee teaches the electrode instrument according to claim 1, wherein a ratio of an external diameter of an electrode casing tube to the external distance of the opposite corners of the electrode casing tube which has been pressed into a hexagonal cross section is 1:0.9 - 1:1 (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 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 does not appear to be any disclosed criticality for the ratio relative to the prior art. Pending a statement of criticality, the recited ratio does not patentably distinguish over that of the prior art.
Regarding claim 8, in accordance with the above rejection of claim 1, Brockmann/Lee teaches the electrode instrument according to claim 1, wherein a thickness of the insulation at a pressed position is 0.02 mm - 0.7 mm (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 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 does not appear to be any disclosed criticality for the thickness relative to the prior art. Pending a statement of criticality, the recited thickness does not patentably distinguish over that of the prior art.
Regarding claim 9, in accordance with the above rejection of claim 1, Brockmann/Lee teaches the electrode instrument according to claim1, wherein the external distance of the opposite corners of the electrode casing tube which has been pressed into a hexagonal cross section is 0.1 mm - 3.0 mm (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 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 does not appear to be any disclosed criticality for the external distance relative to the prior art. Pending a statement of criticality, the recited external distance does not patentably distinguish over that of the prior art.
Regarding claim 10, in accordance with the above rejection of claim 1, Brockmann/Lee teaches the electrode instrument according to claim 1, wherein a diameter of the electrical conductor at a pressed position is 0.05 mm - 1.5 mm (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 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 does not appear to be any disclosed criticality for the diameter relative to the prior art. Pending a statement of criticality, the recited diameter does not patentably distinguish over that of the prior art.
Regarding claim 11, in accordance with the above rejection of claim 1, Lee teaches the electrode instrument according to claim 1, wherein an external distance of the opposite walls of the electrode casing tube at a pressed position is 0.08 mm - 2.5 mm (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 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 does not appear to be any disclosed criticality for the external distance relative to the prior art. Pending a statement of criticality, the recited the external distance does not patentably distinguish over that of the prior art.
Regarding claim 12, in accordance with the above rejection of claim 1, Lee teaches the electrode instrument according to claim 1, wherein a length of the pressed position, is 2 mm to 20 mm (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 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 does not appear to be any disclosed criticality for the length relative to the prior art. Pending a statement of criticality, the recited length does not patentably distinguish over that of the prior art.
Regarding claim 13, in accordance with the above rejection of claim 1, Lee teaches the electrode instrument according to claim 1, wherein a distance between two pressed positions is 2 mm to 10 mm (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 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 does not appear to be any disclosed criticality for the distance relative to the prior art. Pending a statement of criticality, the recited distance does not patentably distinguish over that of the prior art.
Regarding claim 14, Brockmann teaches the electrode instrument according to claim 1, wherein at least one pressed position is at the distal end of the electrode carrier ([0016]).
Regarding claim 15, Brockmann teaches the surgical handheld device, comprising an electrode instrument according to claim 1, wherein with at least one tube-like electrode carrier (Fig. 1; shank 11), at the distal end of which an electrode is fastened (Fig. 1; electrode 13), wherein an electrical conductor (Fig. 3; conductor wire 27, 28) is guided within the electrode carrier from a proximal end of the electrode carrier to the electrode and the electrical conductor is electrically insulated from at least one electrode casing tube by insulation in the form of flexible tubing (Fig. 3; arms 18, 19 of forked tube 17), wherein the electrical conductor is pressed at at least one position in the electrode carrier ([0016]).
However, Brockmann fails to specifically teach the electrode carrier having a cross section with six pressed sides at the pressed position. Specifically, Brockmann, while teaching on a variety of mechanical fixation connections, is silent on any specific shape, number of sides, or other specificity of the connection which would accompany the connection, such as the shape which is formed from the crimping or clamping discussed by Brockmann.
Lee teaches a system for delivering energy to tissue by a transmission line having a dielectric material surrounding an inner conductor (Abstract, [0018]- [0020]).
Lee further teaches that any of the transmission line and/or one or more sub-components may be any shape, such as circular, non-circular, any variety of polygonal shapes, such as a hexagon ([0018]- [0020]).
Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date to have provided the electrode carrier with any known shape having any number of sides as using any shape with any number of sides with rounded or sharp corners between them as is discussed by Lee. Additionally, it has been held that a change of shape is an obvious modification (MPEP 2144.04(IV)(B)), specifically as there is no evidence that using a known simple geometric shape would produce a result that would be unexpected by a person having ordinary skill in the art.
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.
Specifically, applicant’s arguments of the limitations that art not taught by the Brockmann/Lee reference are moot in view of the new rejections under Brockmann/Lee and Gronowski.
Conclusion
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/LINDA C DVORAK/Primary Examiner, Art Unit 3794
/L.R.L./Examiner, Art Unit 3794