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 (i.e., changing from AIA to pre-AIA ) 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.
Claim Interpretation
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 Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of pre-AIA 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 –
(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of application for patent in the United States.
Claim 36 is rejected under pre-AIA 35 U.S.C. 102(b) as being anticipated by Woloszko et al. (US 2004/0186469).
Regarding claim 36, Woloszko discloses an electrosurgical probe (see Fig. 6A or equivalent structure in Fig. 7) comprising: a handpiece (see handle 604, Fig. 6A); an elongate shaft coupled to the handpiece (see shaft 602, Fig. 6A); a return electrode disposed at a distal end of the elongate shaft (see return electrode 616a at the distal end of the shaft, Fig. 6A); an insulative support disposed distal to the return electrode (see insulative spacer 614a disposed distal to return electrode 616a; Fig. 6A, [0096]); an active electrode at a distal end of the insulative support (see active electrodes 612a, Fig. 6A); and a means for measuring temperature of electrically conductive fluid, the means located on the elongate shaft between the return electrode and the handpiece (see temperature indicating element 650a that is configured for measuring temperature of electrically conductive fluid within its proximity and disposed between the return electrode and the handpiece, Fig. 6A).
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 37 is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Woloszko in view of Lundquist et al. (US 5,409,453).
Regarding claims 37, Woloszko discloses the limitations of claim 36, however fails to further disclose wherein the means for measuring temperature is disposed at a location being at least one selected from a group comprising: at least 5 mm away from the distal end of the elongate shaft; and between 3 mm and 20 mm, inclusive, away from the distal end of the elongate shaft.
Lundquist teaches an electrosurgical device (see Fig. 6) comprising thermocouples that are positioned about 1mm and at least about 3mm from the distal end of an insulating sleeve included in a distal end of the electrosurgical instrument that extends past the distal end of the insulating sleeve at different radial locations along the insulating sleeve (see col. 4, lines 15-24 and col. 9, lines 45-52; Fig. 6). It would have been obvious to one having ordinary skill in the art before the time of filing to modify the temperature sensor as taught by Wolsoszko such that the measuring further comprises a step for measuring temperature of the electrically conductive fluid at a location between 3 mm and 20 mm, inclusive, away from a distal end of the electrosurgical instrument, the measuring temperature further comprises a step for measuring temperature of the electrically conductive fluid at a location at least 5 mm away from a distal end of the electrosurgical instrument, or wherein the step for measuring a plurality of temperatures further comprises: a first step for measuring temperature at a first radial location, the first radial location between 3 mm and 20 mm, inclusive, away from a distal end of the electrosurgical instrument; and a second step for measuring temperature at a second radial location, different than the first radial location, the second radial location between 3 mm and 20 mm, inclusive, away from the distal end of the electrosurgical instrument in light of Lundquist, 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. See MPEP 2144.05.
Claim 38 is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Woloszko in view of Ocel et al. (US 2003/0144656).
Regarding claim 38, Woloszko discloses the limitations of claim 36, however Woloszko fails to disclose wherein the means for measuring temperature is at least one selected from the group comprising: a thermocouple, a thermistor, and resistance detectors.
Ocel teaches a method for treating tissue (see Figs. 7A-7B) including using a thermocouple for measuring temperature of an electrically conductive fluid around a shaft of an instrument (see temperature sensor that measures temperature of the conductive fluid, [0062]-[0063]). Therefore, it would have been obvious to one of ordinary skill in the art at the time of invention to have modified the temperature-sensitive element disclosed by Woloszko to instead be a thermocouple, or resistance detectors in light of Ocel, the motivation being to provide the additional advantage of use of temperature to adjust conductive fluid delivery, power levels, and/or energization times to optimize the ablative effect and prevent the ablation site from getting too hot (see Ocel: [0062]-[0063]).
Allowable Subject Matter
Claims 21-33 are allowed.
Claim 39 and 40 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.
The following is a statement of reasons for the indication of allowable subject matter: The closest prior art, Woloszko et al. (US 2004/0186469), Woloszko (US 2003/0014051), Ocel et al. (US 2003/0144656), and Lundquist et al. (US 5,409,453), fails to reasonably teach or suggest a means for measuring temperature disposed along the means for holding, the means for measuring temperature disposed between the return electrode and the means for gripping as required by claims 21 and 29 when considered in combination with the additional requirements of the claim. The closest prior art teaches providing temperature sensors within or on a shaft with a handle as well as devices with active and return electrodes, however fails to specifically teach placement of the temperature sensor between the return electrode and the handle as required by the claim.
Similarly, the closest prior art is also silent with regard to the means for measuring temperature comprising a means for electrically insulating the means for measuring temperature from electrically conductive fluid since the insulative tube 770 of Woloszko ‘469 is not disclosed as being sealed to fluid, and the means for thermally insulating being disposed between the means for measuring temperature and a suction lumen through the elongate shaft when considered in combination with the additional elements of claims 39 and 40, respectively.
Response to Arguments
Applicant’s arguments with respect to the rejected claims have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument. Specifically, the current arguments do not address the new grounds of rejection set forth in this office action that now rely upon the newly cited Woloszko ‘469 reference.
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 SEAN W COLLINS whose telephone number is (408)918-7607. The examiner can normally be reached M-F 9:00 AM-5:00 PM ET.
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/SEAN W COLLINS/Primary Examiner, Art Unit 3794