DETAILED ACTION
A complete action on the merits of claims 1-20 follows below.
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.
Specification
The disclosure is objected to because of the following informalities: “centre” in various places of the specification should be amended to recite --center--.
Appropriate correction is required.
Claim Objections
Claims 1 and 6 are objected to because of the following informalities:
“the electrodes” in line 11 of claim 1 and in claim 2 and claim 3, should be amended to recite --the active electrode and the return electrode--.
“the first electrical current path conducts less current than the second electrical current path” in both claim 4 and claim 5 should be amended to recite --the first is configured to conduct[s] less current than the second
“centre” in line 2 of claim 6 should be amended to recite --center--. Appropriate correction is required.
“an end effector” in line6 going to line 7 of claim 19 should be amended to recite --the end effector--.
“an electrosurgical instrument” in line 4 of claim 20 should be amended to recite --the electrosurgical instrument--.
Claim Rejections - 35 USC § 112
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 13-14 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Each claims 13 and 14 recite the limitation “preferably” in “the return electrode/ the active electrode is formed from a metal, and preferably wherein the metal is any one of copper, stainless steel, tungsten or an alloy of tungsten and platinum”. It is at most unclear if applicant is positively claiming the phrase following “preferably” as the inventive concept or if applicant is using the phrase “preferably” as “for example” or “such as” giving alternative examples of what is claimed. The phrase "preferably" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Germain (US Pub. No. 2013/0296847).
Regarding Claim 1, Germain teaches an end effector for an electrosurgical instrument (the system of Figs. 1, 25 and various embodiments showing end-effectors in Figs. 4-27), comprising:
an electrode assembly for delivering a radio-frequency (RF) power signal to a surgical site ([0010]-[0013], [0054], [0069]-[0072], [0080]-[0083]) the electrode assembly comprising an active electrode 180/232/725, a return electrode 185/175/732, and an insulating element 175/202/200/230/240 arranged between the active electrode and the return electrode ([0058]-[0061], [0069]-[0070], [0083] and similar insulation/dielectric elements positioned between the two active and return electrodes, see Figs. 6A-B, 12A-C and 16A-23) the active electrode comprising an aperture (distal opening best shown in Figs. 6A-B providing a path from window 176 in Figs. 6A-12C, window 712 in Figs. 16A-20B and a similar window in Figs. 21-27 to lumen 190B/730) for providing access to a suction channel extending through the insulating element to a lumen 190A configured to carry fluid from the surgical site (190A in Figs. 6A-12C and 730 in Figs. 16A-23) wherein the lumen is at least in part defined by an inner surface of the return electrode (various embodiments shown in Figs. 6A-23), wherein the electrode assembly is configured to conduct electrical current between the active electrode and the return electrode via a first current path through the suction channel when the RF power signal is supplied to the electrodes (the second mode shown in Fig. 12B-12C and Fig. 20B is here interpreted to be the first current path).
Regarding Claim 2, Germain teaches wherein the electrode assembly has a distance from the active electrode to the return electrode through the suction channel such that the electrode assembly conducts electrical current between the active electrode and the return electrode via the first current path through the suction channel when the RF power signal is supplied to the electrodes (the second mode shown in Fig. 12B-C and Fig. 20B with the distance the active electrode is spaced apart from the return electrode creating a current path here interpreted to be the first current path).
Regarding Claim 3, Germain teaches wherein the electrode assembly is further configured to conduct electrical current between the active electrode and the return electrode via a second current path that is not through the suction channel, when the RF power signal is supplied to the electrodes (the first mode shown in Fig. 12A and Fig. 20A with the distance the active electrode is spaced apart from the return electrode creating a current path here interpreted to be the second current path).
Regarding Claim 4, Germain teaches wherein the electrode assembly is configured such that the first electrical current path conducts less current than the second electrical current path (see the current paths shown in Figs. 12A-C and Figs. 20A-B).
Regarding Claim 5, Germain teaches wherein the active electrode is distanced from the return electrode by a first distance via the first current path, and the active electrode is distanced from the return electrode by a second distance via the second current path, wherein the first distance is greater than the second distance such that the first electrical current path conducts less current than the second electrical current path (see the current paths shown in Figs. 12A-C and Figs. 20A-B).
Regarding Claim 6, Germain teaches wherein the aperture is located substantially in the centre of the active electrode (distal opening best shown in Figs. 6A-B providing a path from windows shown in Figs. 6A--27 to lumen 190B/730 is located substantially in the centre of the active electrode).
Regarding Claim 7, Germain teaches further comprising a rotatable shaver blade partially and concentrically surrounded by the return electrode (Figs. 16A-21 and [0080]-[0090]).
Regarding Claim 8, Germain teaches wherein the return electrode comprises cutting teeth and a shaving window framed by the cutting teeth, wherein the shaving window is on an opposite side to the active electrode ([Fig. 23 and [0092]).
Regarding Claim 9, Germain teaches wherein the rotatable shaver blade is rotatable to a position in which the inner surface of the return electrode is exposed to the suction channel (Figs. 16A-21 and [0080]-[0090]).
Regarding Claim 10, Germain teaches wherein the second current path is from a peripheral edge of the active electrode over a peripheral edge of the insulating element to an outer surface of the return electrode (the first mode shown in Fig. 12A and Fig. 20A with the distance the active electrode is spaced apart from the return electrode creating a current path here interpreted to be the second current path).
Regarding Claim 11, Germain teaches further comprising a retainer arranged to hold the active electrode in place on the insulating element (in one interpretation the locking element in [0056] and [0093] is interpreted to be a retainer locking the two electrodes in place thus holding the active electrode in place on the insulating element; in a different interpretation the projection element 230 in Figs. 12A-B is interpreted to be a retainer arranged to hold the active electrode in place on the insulating element).
Regarding Claim 12, Germain teaches wherein the active electrode comprises one or more protrusions (distal cutting edge 180, [0058] in Fig. 4, post element 248. [0075] in Fig. 14, similarly shown in Figs. 12A-C, edge electrode 725 [0082]-[0083] in Figs. 16A-23, 760 [0092] in Fig. 23).
Regarding Claim 13, Germain teaches wherein the active electrode is formed from a metal, and preferably wherein the metal is any one of copper, stainless steel, tungsten or an alloy of tungsten and platinum ([0041]-[0043], [0054], [0059], [0081], [0084]-[0085] and [0088]).
Regarding Claim 14, Germain teaches wherein the return electrode is formed from a metal, and preferably wherein the metal is any one of copper, stainless steel, tungsten or an alloy of tungsten and platinum ([0041]-[0043], [0054], [0059], [0081], [0084]-[0085] and [0088]).
Regarding Claim 15, Germain teaches wherein the insulating element is formed of a ceramic or a polymer ([0041], [0043], [0057] and [0083]-[0088]).
Regarding Claim 16, Germain teaches wherein the lumen is connectable to a suction tube for connecting to a suction source (“negative pressure source 125” in Fig. 1, [0053]-[0054], [0072], [0090] and pump 610 in Fig. 25, [0096]).
Regarding Claim 17, Germain teaches wherein the active electrode and the return electrode are connectable to a RF power source (150 in Fig. 1 and 605 in Fig. 25).
Regarding Claim 18, Germain teaches wherein the return electrode forms an outer shaft of the end effector (Figs. 4 and 6A).
Regarding Claim 19, Germain teaches an electrosurgical instrument, comprising:
a hand-piece (Figs. 1 and 25);
one or more user-operable buttons on the handpiece for operably controlling the instrument, and an operative shaft, having RF electrical connections, and drive componentry for an end effector, the electrosurgical instrument further comprising an end effector according to claim 1 (see the rejection of claim 1 above), the active electrode and the return electrode being connected to the RF electrical connections ([0061]-[0064]).
Regarding Claim 20, Germain teaches an electrosurgical system, comprising: an RF electrosurgical generator (150 in Fig. 1 and 605 in Fig. 25);
a suction source (“negative pressure source 125” in Fig. 1, [0053]-[0054], [0072], [0090] and pump 610 in Fig. 25, [0096]); and an electrosurgical instrument according to claim 19 (see the rejection of claim 19 above), the arrangement being such that in use the RF electrosurgical generator supplies an RF coagulation or ablation signal via the RF electrical connections to the active electrode and the return electrode (Figs. 1 and 25, [0061]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KHADIJEH A VAHDAT whose telephone number is (571)270-7631. The examiner can normally be reached M-F 9-6 EST.
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/KHADIJEH A VAHDAT/Primary Examiner, Art Unit 3794