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 .
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(4) because reference character “31” has been used to designate both the proximal end rigid portion and longitudinal axis L. 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.
The amendment of September 12, 2025 stated that this reference character was changed to “39”. This was corrected in the specification filed on September 12, 2025, however the submitted drawings still show multiple elements labeled “31” in Figure 30.
Claim Rejections - 35 USC § 102
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1, 2, 10, 11 and 17 are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Lu et al (2007/0270797).
Referring to claim 1, Lu et al teaches an electrode unit comprising: a cantilevered electrode (136) including a first end and an unsupported second end (paragraph 0017; Figure 4); and an electrode support (132) that supports the first end of the electrode, the electrode support extending along a longitudinal axis direction end (paragraph 0017; Figure 4); wherein an entirety of the electrode (136) extends in a direction offset from the longitudinal axis direction; and the electrode (126) directly extends from a side surface of the electrode support (134) (paragraphs 0015-0024; Figures 4 and 5).
Referring to claim 2, Lu et al teaches an electrode unit comprising an arm (132) disposed at a position at which the arm faces the electrode support (134), such that the electrode is interposed between the arm and the electrode support, the arm being configured to retain a surface of a tissue.
Referring to claim 10, Lu et al teaches wherein a distal end of the electrode support and a distal end of the arm are disposed in parallel with each other (paragraphs 0015-0024; Figures 4 and 5).
Referring to claim 11, Lu et al teaches a treatment system comprising: an endoscope (114) including an insertion portion (paragraphs 0015; claims 7 and 22; Figure 6); and the electrode unit according to claim 1 that projects from a distal end of the insertion portion as discussed above (paragraphs 0015-0024; Figures 4 and 5).
Referring to claim 17, Lu et al teaches a wherein the arm faces the electrode support and the electrode is between the arm and the electrode support (paragraphs 0015-0024; Figures 4 and 5).
Claims 1, 5, 6, 16 and 18 are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Grossi et al (5,582,610).
Referring to claim 1, Grossi et al teaches an electrode unit comprising: a cantilevered electrode (48 or 110 or 136) including a first end and an unsupported second end (Col. 8, line 12-35 and Col. 9, lines 21-37 and lines 58-64; Figures 1, 9 and 13); and an electrode support (42) that supports the first end of the electrode, the electrode support extending along a longitudinal axis direction end (paragraph 0017; Figure 4); wherein an entirety of the electrode (48 or 110 or 136) extends in a direction offset from the longitudinal axis direction; and the electrode (48 or 110 or 136) directly extends from a side surface of the electrode support (42) (Col. 8, line 12-60 and Col. 9, lines 21-37 and lines 58-64; Figures 1, 9 and 13).
Referring to claim 5, Grossi et al teaches wherein the electrode (110 or 136) has a first portion exposed from the electrode support directly extending from the electrode support and a second portion exposed from the electrode support bent relative to the first portion (Col. 8, line 12-60 and Col. 9, lines 21-37 and lines 58-64; Figures 1, 9 and 13).
Referring to claim 6, Grossi et al teaches wherein the second portion of the electrode is bent in one of an upward projecting shape or a downward projecting shape relative to the first portion (Col. 8, line 12-60 and Col. 9, lines 21-37 and lines 58-64; Figures 1, 9 and 13).
Referring to claim 16, Grossi et al teaches wherein the upward projecting shape is a curved upward bending shape (Col. 8, line 12-60 and Col. 9, lines 21-37 and lines 58-64; Figures 1, 9 and 13).
Referring to claim 18, Grossi et al teaches wherein the downward projecting shape is a curved downward projecting shape (Col. 8, line 12-60 and Col. 9, lines 21-37 and lines 58-64; Figures 1, 9 and 13).
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Lu et al (2007/0270797) applied to claim 1 above, and further in view of Branovan (2017/0360501).
Referring to claim 7, Lu et al is silent regarding insulation. Branovan teaches an analogous electrode unit comprising electrode includes a surface with an insulating coating (paragraphs 0039-0040). 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, as taught by Lu et al, to include a surface with an insulating coating, as taught by Branovan, in order to keep the electrodes separate (paragraph 0039) in order to prevent shorting.
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Lu et al (2007/0270797) applied to claim 1 above, and further in view of Gearheart et al (2018/0193092).
Referring to claim 14, Lu et al fails to teach wherein the electrode supporting portion comprises a rigid portion and an elastic portion. Gearheart et al teaches an analogous electrode unit comprising an electrode supporting portion (94) comprises a rigid portion and an elastic portion that has a lower rigidity than the rigid portion and the rigid portion is disposed distally relative to the elastic portion (paragraph 0051; Figure 3). 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 supporting portion, as taught by Lu et al, to have a rigid portion and an elastic portion that has a lower rigidity than the rigid portion and the rigid portion is disposed distally relative to the elastic portion, as taught by Gearheart et al, in order to be used for a variety of surgeries. Furthermore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to make the supporting portion having various elastic portions and rigid portions, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Grossi et al (5,582,610) applied to claim 1 above, and further in view of Gearheart et al (2018/0193092).
Referring to claim 14, Grossi et al fails to teach wherein the electrode supporting portion comprises a rigid portion and an elastic portion. Gearheart et al teaches an analogous electrode unit comprising an electrode supporting portion (94) comprises a rigid portion and an elastic portion that has a lower rigidity than the rigid portion and the rigid portion is disposed distally relative to the elastic portion (paragraph 0051; Figure 3). 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 supporting portion, as taught by Grossi et al, to have a rigid portion and an elastic portion that has a lower rigidity than the rigid portion and the rigid portion is disposed distally relative to the elastic portion, as taught by Gearheart et al, in order to be used for a variety of surgeries. Furthermore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to make the supporting portion having various elastic portions and rigid portions, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
Allowable Subject Matter
Claims 3 and 19 are 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.
Response to Arguments
Applicant’s arguments and amendments, see claims 13-14, filed September 12, 2025, with respect to the 112 rejections have been fully considered and are persuasive. The 112 rejections of June 17, 2025 have been withdrawn.
Applicant’s arguments, see pages 15-16, filed September 12, 2025, with respect to the pending claims have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection have been made.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SAMANTHA M GOOD whose telephone number is (571)270-7480. The examiner can normally be reached Mon to Wed, 7am to 3pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Linda Dvorak can be reached at 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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/SAMANTHA M GOOD/ Examiner, Art Unit 3794
/MICHAEL F PEFFLEY/ Primary Examiner, Art Unit 3794