DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Priority
2. Acknowledgment is made of Applicant's claim for Foreign Priority based on DE 102021114778.6, filed on June 9, 2021. Receipt of the certified copy required by 37 CFR § 1.55 is acknowledged.
Continued Examination Under 37 CFR 1.114
3. 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 01/05/2026 (“01/05/26 Amendment") has been entered, and fully considered.
Response to Amendment
4. In the 01/05/26 Amendment, claims 1 & 3-13 were amended, and claim 15 was newly added. No claims were cancelled (claim 2 was previously cancelled). Therefore, claims 1 & 3-15 are now pending in the application.
5. The 01/05/26 Amendment has overcome the claim objections, and the rejections under §§ 112(a), 112(b), and § 103 previously set forth in the Final Office Action mailed 09/03/2025 (“09/03/25 Action”). The prior drawing objection has been maintained.
6. As a result of the 01/05/26 Amendment:
New grounds of rejection under §§ 112(b) & 103 are set forth herein, necessitated by Applicant’s Amendment; and
Dependent claim 9 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim (independent claim 1) and any intervening claims (dependent claim 8).
Drawings
7. The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they do not include the following reference sign(s) mentioned in the description:
reference character (29), recited at, e.g., ¶[0040] of the substitute specification filed 05/12/25, does not appear in the drawing figures.
8. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
9. NOTE: In the 01/05/26 Amendment, Applicant argues as follows:
The specification, in paragraph [0040], states that "For performing the invention, a rod-like optical unit 29 (not shown) is guided through the inner tube 22 or optical guide 18." Thus, the specification explicitly states that the rod-like optical unit 29 is not shown in the figures. Accordingly, reconsideration and withdrawal of the objection to the drawings is respectfully requested.
01/05/26 Amendment, pg. 6.
As Applicant correctly notes, rod-like optical unit 29 is “not shown,” which is the basis for the objection under 37 CFR § 1.84(p)(5). Examiner suggests amending ¶[0040] of the Specification to delete reference character “29” to obviate the drawing objection.
Claim Rejections - 35 USC § 112
10. The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
11. Claims 4, 6, & 15 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
12. Claim 4 recites the limitation “wherein the at least one coupling connection is a receptacle” in line 2. This recitation renders the claim indefinite, as it is not clear whether the recited “a receptacle” is intended to be the same “a receptacle” previously recited in claim 3 (from which claim 4 depends), or a separate/additional receptacle. As such, the structure required by the claim is not clear. Clarification is required.
13. Claim 6 recites the limitation that “the at least one coupling connection, which is arranged on a distal end of the contact body, is configured to provide a releasable connection to the first grip element of the grip unit” in lines 5-7. This recitation renders the claim indefinite, as independent claim 1 (from which claim 6 depends) requires that the optical guide include the “first grip element.” As such, it is not entirely clear how the coupling connection of the contact body also provides a releasable connection to the first grip element. As such, the structure required by the claim is not clear. Clarification is required.
14. Claim 15 recites the limitation “wherein a disposable contact body being configured to be discarded after one operation” in lines 1-2. This recitation renders the claim indefinite, as it is not clear whether the recited “a disposable contact body” is intended to be the same “contact body” recited in independent claim 1 (from which claim 15 depends), or a separate/additional contact body. As such, the structure required by the claim is not clear. Clarification is required.
Claim Rejections - 35 USC § 103
15. 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.
16. The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
17. Claims 1, 3-8, & 10-15 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent No. 5,857,962 to Bracci et al. (“Bracci”) in view of U.S. Patent Application Publication No. 2015/0327920 to VanDusseldorp, SR. et al. ("VanDusseldorp"), and further in view of U.S. Patent No. 5,007,907 to Nishigaki et al. (“Nishigaki”).
18. Regarding claim 1, Bracci teaches a contact body [moveable actuator assembly (26) - col. 2, line 66 - col. 3, line 18; FIGS. 1, 4] for an electrosurgical handheld device [resectoscope (10) - col. 1, ll. 7-10; col. 2, ll. 28-32; FIG. 1] for receiving an optical guide [telescopic guide tube (33) - col. 2, ll. 49-65; FIGS. 1-2] and for coupling at least one electrical contact [proximal end (64) of electrode (18) - col. 4, ll. 10-27; FIGS. 4-5] of an electrode instrument [(18)] of the electrosurgical handheld device, comprising:
***
the optical guide [telescopic guide tube (33)] includes a first grip element of a grip unit [broadly, the vertically-extending component (shown just proximal to reference character (16) in FIG. 1) of sheath assembly (16) through which guide tube (33) extends is capable of being gripped by a user] [col. 2, ll. 49-63]; and
the contact body [(26)] is releasably coupled to at least one of the first grip element of the grip unit, and a second grip element of the grip unit [thumb ring (48) - col. 3, ll. 6-11; FIG. 4], the contact body [(26)] having at least one coupling connection [either of hole (50)/fastener (51) - col. 3, ll. 10-11; FIG. 4].
A. RF CABLE
Bracci, however, does not explicitly teach:
an RF cable that is… connected to the contact body and configured to apply an RF voltage to the electrode instrument via the at least one electrical contact,
However, the use of RF energy, in both monopolar and bipolar modes, by a resectoscope, and supplied by a generator via a power cord or cable, was well known in the art, before the effective filing date of the claimed invention.
As one example, VanDusseldorp, in a similar field of endeavor, teaches a resectoscope (10) including a sheath (12) through which conductors can be routed to one or more electrodes disposed at a distal end (14) thereof [¶[0018]; FIG. 1]. The conductors carry a current, preferably an RF current, generated by an electrosurgical generator (not shown) that is connected to the probe (10) via a power cord (16). The probe (10) can be a monopolar or bipolar RF electrosurgical probe [¶[0018]].
It would have been obvious to one having ordinary skill in the art, before the effective filing date of the claimed invention, to modify Bracci to include an RF cable that is fixedly connected to the contact body and configured to apply an RF voltage to the electrode instrument via the at least one electrical contact, since all of the claimed elements were known in the prior art, and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would have yielded nothing more than predictable results [i.e., the supply of RF energy from a generator to a resectoscope via an RF power cord/cable] to one of ordinary skill in the art. KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398 (2007).
B. INTEGRAL CONNECTION
Finally, as the RF cable of Bracci/VanDusseldorp would be releasably connected to the plug receiving area (58) of the contact body (26) [see Bracci, col. 3, ll. 26-31], the combination of Bracci and VanDusseldorp does not teach:
an RF cable that is integrally connected to the contact body.
Nishigaki, in a similar field of endeavor, teaches a resectoscope apparatus [Abstract], including an embodiment [of FIG. 16 (reproduced below)] wherein a contact body [slider (202)] includes an integral power cord [(213)], and wherein the slider (202) is of a water-tight structure and has the electric connecting part of an electric cable (216) [which connects to electrode device (210)] and electric cord (213) within the slider, and insulated from the outside [Nishigaki, col. 12, ll. 11-35; FIG. 16].
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FIG. 16 of Nishigaki
It would have been obvious to one having ordinary skill in the art, before the effective filing date of the claimed invention, to further modify the combination of Bracci and VanDusseldorp such that the RF cable of Bracci/VanDusseldorp be integrally connected to the contact body (26), since such a modification would provide the benefit/advantage of ensuring protection (in the form a sealed, water-tight connection) from exposure to fluids/debris in the operating environment that may lead to unintended electrical shorts, as well as minimizing contact failure that may result from multiple connections/disconnections of a releasable plug.
19. Regarding claim 3, the combination of Bracci, VanDusseldorp, and Nishigaki teaches all of the limitations of claim 1 for the reasons set forth in detail (above) in the Office Action.
Bracci further teaches wherein the at least one coupling connection is a receptacle [hole (50) - col. 3, ll. 10-11; FIG. 4] in the contact body [(26)] that is releasably coupled to one of the first grip element of the grip unit and the second grip element of the grip unit [to thumb ring (48) via fastener (51) - col. 3, ll. 10-11; FIG. 4].
20. Regarding claim 4, the combination of Bracci, VanDusseldorp, and Nishigaki teaches all of the limitations of claim 3 for the reasons set forth in detail (above) in the Office Action.
As best understood [see the rejection(s) under § 112(b) above], Bracci further teaches wherein the at least one coupling connection is a receptacle [hole (50) - col. 3, ll. 10-11; FIG. 4] is at least one of a slit and a bore [hole (50) is a bore - see FIG. 4].
The combination of Bracci, VanDusseldorp, and Nishigaki does not, however, teach that:
the second grip element [thumb ring (48)] of the grip unit is configured to connect to the receptacle [hole (50)] with a latching action, or in that the receptacle is magnetic, for magnetic coupling to the second grip element of the grip unit.
However, it would have been an obvious matter of design choice to one having ordinary skill in the art, before the effective filing date of the claimed invention, to further modify the combination of Bracci, VanDusseldorp, and Nishigaki to connect thumb ring (48) to the block (42) using a latch, magnetic connection, or other releasable mechanical connection, since use of such a means of mechanical connection in lieu of that used in Bracci (a releasable fastener) solves no stated problem and would be an obvious matter of design choice within the skill of the art.
21. Regarding claim 5, the combination of Bracci, VanDusseldorp, and Nishigaki teaches all of the limitations of claim 3 for the reasons set forth in detail (above) in the Office Action.
In Bracci, the receptacle [hole (50)] is angled with respect to a longitudinal axis of the contact body [(26)] [see FIG. 4].
As such, the combination of Bracci, VanDusseldorp, and Nishigaki does not teach:
wherein the receptacle is oriented perpendicular to a longitudinal axis of the contact body.
However, it would have been an obvious matter of design choice to one having ordinary skill in the art, before the effective filing date of the claimed invention, to further modify the combination of Bracci, VanDusseldorp, and Nishigaki such that the angle of the receptacle [hole (50)] be oriented perpendicular to a longitudinal axis of the contact body [(26)] [in the same vertical direction as, e.g., rear fastener hole (74) - FIG. 4], since such a modification would constitute a mere rearrangement of parts that would result in a slightly shifted position of the thumb ring (48), which would not have modified the operation of the device, and which is an example of a common practice which the court has held normally requires only ordinary skill in the art, and hence is considered a routine expedient. See In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950) (Claims to a hydraulic power press which read on the prior art except with regard to the position of the starting switch were held unpatentable because shifting the position of the starting switch would not have modified the operation of the device.); In re Kuhle, 526 F.2d 553, 188 USPQ 7 (CCPA 1975) (the particular placement of a contact in a conductivity measuring device was held to be an obvious matter of design choice).
22. Regarding claim 6, the combination of Bracci, VanDusseldorp, and Nishigaki teaches all of the limitations of claim 1 for the reasons set forth in detail (above) in the Office Action.
As best understood [see the rejection(s) under § 112(b) above], Bracci further teaches wherein the at least one coupling connection is one of a latch, a bayonet catch, a click-in connection, and a mechanical connection [hole (50)/fastener (51) - col. 3, ll. 10-11; FIG. 4]; and
the at least one coupling connection, which is arranged on a distal end of the contact body [hole (50) extends from the proximal end to the distal end of contact body (26) - FIG. 4], is configured to provide a releasable connection to the first grip element of the grip unit [the first grip element is releasably connected to the contact body (and therefore broadly to the components thereof including the at least one coupling connection) via guide tube (33)].
23. Regarding claim 7, the combination of Bracci, VanDusseldorp, and Nishigaki teaches all of the limitations of claim 1 for the reasons set forth in detail (above) in the Office Action.
Bracci further teaches that the RF cable is connected to at least one plug socket for receiving a respective contact of the electrode instrument, and the at least one plug socket is integrated in the contact body [as modified above (in the rejection of claim 1), the integral RF cable of Bracci/VanDusseldorp/Nishigaki would be connected to the proximal end of electrode (18) at the plug receiving area (58) of Bracci which is internal to the contact body - Bracci, col. 3, ll. 26-31; FIGS. 1, 4].
24. Regarding claim 8, the combination of Bracci, VanDusseldorp, and Nishigaki teaches all of the limitations of claim 1 for the reasons set forth in detail (above) in the Office Action.
Bracci further teaches wherein a slit [either of guide bar holes (54)] is oriented parallel to a bore [telescope hole (52)] configured for receiving the optical guide [telescope hole (52) receives telescopic guide tube (33)] through the contact body [(26)], and parallel to a longitudinal axis of the contact body [guide bar holes (54) are parallel to one another, as well as to telescope hole (52) which extends along the longitudinal axis of the contact body - col. 3, ll. 21-26; FIG. 4].
25. Regarding claim 10, the combination of Bracci, VanDusseldorp, and Nishigaki teaches all of the limitations of claim 1 for the reasons set forth in detail (above) in the Office Action.
Bracci further teaches wherein the contact body [(26)] is a slide [col. 2, ll. 66-67] for an active or passive resectoscope [resectoscope (10) is an active resectoscope - via the compressive force of spring (40) - col. 2, line 66 - col. 3, line 6].
26. Regarding claim 11, the combination of Bracci, VanDusseldorp, and Nishigaki teaches all of the limitations of claim 1 for the reasons set forth in detail (above) in the Office Action.
Bracci further teaches wherein the contact body is made of plastic [col. 3, ll. 19-20].
27. Regarding claim 12, the combination of Bracci, VanDusseldorp, and Nishigaki teaches all of the limitations of claim 1 for the reasons set forth in detail (above) in the Office Action.
Bracci further teaches the electrosurgical handheld device [resectoscope (10) - col. 1, ll. 7-10; col. 2, ll. 28-32; FIG. 1] comprising:
the electrode instrument having a distal end including an electrode [electrode (18) - col. 2, ll. 28-32] and at a proximal end including the at least one electrical contact [proximal end (64) of electrode (18) - col. 4, ll. 10-27; FIGS. 4-5];
the grip unit including the first grip element [the vertically-extending component shown just proximal to reference character (16) in FIG. 1)] of the grip unit and the second grip element [thumb ring (48) - col. 3, ll. 6-11; FIG. 4] of the grip unit;
a tubular shaft coupled at a proximal end to the first grip element of the grip unit [shaft of thumb ring (48) that is received in hole (50), as seen in FIG. 4];
the optical guide [telescopic guide tube (33) - col. 2, ll. 49-65; FIGS. 1-2] configured to receive an optical unit [telescope (14) - col. 2, ll. 34-42; FIG. 1], wherein:
the contact body as claimed in claim 1 [see the rejection of claim 1 above which is incorporated herein] is configured to receive the optical guide [(33)] [col. 3, ll. 22-23],
the second grip element of the grip unit is configured to electrically contact the at least one electrical contact of the electrode instrument [col. 3, ll. 26-31; FIGS. 1, 4].
28. Regarding claim 13, the combination of Bracci, VanDusseldorp, and Nishigaki teaches all of the limitations of claim 1 for the reasons set forth in detail (above) in the Office Action.
Bracci further teaches wherein the optical guide includes an adapter [cone block (28) - FIG. 1] configured to releasably couple the contact body with at least one of the first grip element [the vertical component shown just proximal to reference character (16) in FIG. 1] and the second grip element of the grip unit.
29. Regarding claim 14, the combination of Bracci, VanDusseldorp, and Nishigaki teaches all of the limitations of claim 12 for the reasons set forth in detail (above) in the Office Action.
Bracci further teaches wherein the second grip element is configured to latch the at least one electrical contact of the electrode instrument [col. 3, ll. 26-31; FIGS. 1, 4].
30. Regarding claim 15, the combination of Bracci, VanDusseldorp, and Nishigaki teaches all of the limitations of claim 1 for the reasons set forth in detail (above) in the Office Action.
As best understood [see the rejection(s) under § 112(b) above], the combination of Bracci, VanDusseldorp, and Nishigaki further teaches wherein a disposable contact body being configured to be discarded after one operation [as broadly as claimed, the contact body of Bracci, VanDusseldorp, and Nishigaki is capable of being thrown away (discarded) after one use].
Allowable Subject Matter
31. Claim 9 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim (independent claim 1) and any intervening claims (dependent claim 8).
32. In addition to the limitations of independent claim 1 and intervening dependent claim 8, claim 9 further requires the limitations of “wherein: the slit extends from an outer wall of the contact body as far as the bore; and the optical guide is configured to be inserted through the slit into the bore.” Niether Bracci, VanDusseldorp, Nishigaki, nor the other references of record, either alone or in combination, fairly teach or suggest the claimed contact body including the required slit/bore arrangement for receiving the optical guide. For this reason, claim 9 is patentable over the references of record.
Response to Arguments
33. As noted above, the 01/05/26 Amendment has overcome the claim objections, and the rejections under §§ 112(a), 112(b), and § 103 previously set forth in the 09/03/25 Action. The prior drawing objection has been maintained.
34. New grounds of rejection under §§ 112(b) & 103 are set forth herein, necessitated by Applicant’s Amendment.
35. Additionally, dependent claim 9 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
36. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Bradford C. Blaise whose telephone number is (571)272-5617. The examiner can normally be reached on Monday - Friday 8 AM-5 PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Linda Dvorak can be reached on 571-272-4764. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Bradford C. Blaise/Examiner, Art Unit 3794