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 .
Applicant’s amendments and comments, received October 10, 2025 have been fully considered by the examiner. The following is a complete response to the October 10, 2025 communication.
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.
Claims 1, 4, 6 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Goble et al (‘106) in view of the teaching of Nguyen et al (2020/0390456).
Regarding claim 1, Goble provides a high frequency electrode (31) for use in a handheld surgical device (Figures 1 and 32, for example) wherein the electrode is supplied with energy from a conductor (34) and the electrode consists of a platinum-tungsten alloy (col. 9, lines 35-40). It is noted that Goble et al include alternatives, such as platinum/iridium alloy, platinum/cobalt alloy, or a platinum/tungsten alloy. Goble et al fail to disclose the specific proportion for tungsten in the platinum/tungsten alloy.
Nguyen et al also disclose electrodes that may be made from a platinum-tungsten alloy, and specifically teach the tungsten proportion may be in the 8-10% range. Any slight variation of this range is deemed to be an obvious design consideration. See, for example, paragraph [0658].
To have provided the Goble et al platinum-tungsten alloy with the claimed proportions for the alloy would have been an obvious consideration for one of ordinary skill in the art at the time of the invention since Nguyen et al teach exemplary known ranges for the materials in an electrode made from a platinum-tungsten alloy. The use of any specific proportion in a similar range (i.e. up to 11%) is deemed to be an obvious design consideration for one of ordinary skill in the art as the known properties associated with any particular percentage of tungsten could be easily determined through routine experimentation.
Regarding claim 4, Goble et al provide various different treatment shapes for the electrode including a pin shape (Figure 5) or a loop shape (Figure 10). Regarding claims 6 and 7, given the similar materials used as taught by Goble et al and Nguyen et al, the electrode would obviously have the same material characteristics for tensile strength and elongation at fracture. Applicant has provided no description of any specific process that would yield such material characteristic traits that would be unexpected of similar materials used in the art.
Claims 1 and 4-9 are rejected under 35 U.S.C. 103 as being unpatentable over Eggers et al (5,843,019) in view of the teaching of Goble et al (6,090,106) and further in view of the teaching of Nguyen et al (2020/0390456).
Regarding claim 1, Eggers et al disclose an electrode for a handheld surgical device comprising a conductor and an electrode (e.g. 194 of Figure 8B). Eggers et al disclose the use of various alloys, including platinum and tungsten alloys (col. 18, lines 60-67, for example), but fail to expressly use a platinum-tungsten alloy.
As addressed previously, Goble et al teach the known use of platinum-tungsten alloys for making electrosurgical electrodes of various shapes.
Regarding the specific proportion of tungsten used in a platinum-tungsten electrode, Nguyen et al provide a teaching of the known proportions of the materials for making a platinum-tungsten alloy electrode. Nguyen et al specifically teaches the electrodes may be made from a platinum-tungsten alloy, and specifically teach the tungsten proportion may be in the 8-10% range. Any slight variation of this range is deemed to be an obvious design consideration. See, for example, paragraph [0658].
To have made the Eggers et al electrode from a platinum-tungsten alloy would have been an obvious design consideration for one of ordinary skill in the art at the time of the invention since Eggers et al disclose the use of platinum alloys, and further since Goble et al specifically teach the use of a platinum-tungsten alloy to make electrosurgical electrodes.
To have provided the Eggers et al electrode, as modified by the teaching of Goble et al, with a platinum-tungsten alloy with the claimed proportions for the alloy would have been an obvious consideration for one of ordinary skill in the art at the time of the invention since Nguyen et al fairly teach exemplary known ranges for the materials in an electrode made from a platinum-tungsten alloy.
Regarding claim 4, Eggers et al disclose a loop electrode (194). Regarding claim 5, Eggers et al disclose a diameter for the electrode in applicant’s claimed range (col. 20, lines 5-10). Regarding claims 6 and 7, the examiner again maintains the similar materials used by Goble et al and Nguyen et al would obviously have the same material characteristics for tensile strength and elongation at fracture. Applicant has provided no description of any specific process that would yield such material characteristic traits that would be unexpected of similar materials used in the art.
Regarding claims 8 and 9, the Eggers et al loop electrode includes two support arms (Figure 8B) and is part of a resectoscope apparatus as seen in the figures.
Response to Arguments
Applicant's arguments filed October 10, 2025 have been fully considered but they are not persuasive.
The Declaration under 37 CFR 1.132 filed October 22, 2025 is insufficient to overcome the rejection of the pending claims based upon the combination of the Nguyen et al (2020/0390456) teaching with the Goble et al (‘106) and Eggers et al (‘019) references as set forth in the instant Office action (and presented in the previous Office action) because: it refer(s) only to the system described in the above referenced application and not to the individual claims of the application. Thus, there is no showing that the objective evidence of nonobviousness is commensurate in scope with the claims. See MPEP § 716. That is, the declaration makes no specific mention as to why the specific proportion of tungsten in the platinum-tungsten alloy is critical to the operation of the device and would not be an obvious consideration for one of ordinary skill in the art. Rather, the Declaration merely presents test data, which data appears to be a matter of routine experimentation that could be performed by one of ordinary skill in the art. There is no statement of criticality or any showing of unexpected results, nor is there any assertion of any secondary considerations that may support patentability for the claimed subject matter over the prior art of record.
Applicant asserts on page 6 of the response that a tungsten proportion of tungsten to platinum is preferably 9%-11%. However, it is noted that the specification indicates that 5%-12% tungsten proportion is preferable, and that “It is preferably also conceivable that the tungsten proportion is 9% or 11%”. These values are disclosed as “preferable”, and there is absolutely no disclosure of any unexpected result or criticality for the proportion of tungsten beyond advantages provided in that proportion range. That is, there is no exceptional criticality for the specific 9%-11% range over the 5%-12% range, nor is there any statement that any value around that range would be ineffective. The examiner maintains that one of ordinary skill in the art would readily recognize the varying property characteristics that would result from a varied proportion of tungsten content, and those characteristics would be ascertainable through routine experimentation to optimize the desired characteristics for any particular application. Given that Goble et al specifically disclose the use of various different alloys, including a tungsten-platinum allow, for the manufacture of an RF electrode, the examiner maintains that use of such a material is clearly taught by Goble et al. Nguyen et al discloses another RF electrode and specifically discloses the electrode is made from a tungsten platinum alloy that may have “about 8% tungsten”. See Nguyen et al at paragraph [0658]. Clearly, it is taught by Nguyen et al to provide an alloy having about 8% tungsten, which value is offered as exemplary and not as a required limit. The examiner maintains that one of ordinary skill in the art would clearly recognize that the Goble et al electrode, which is disclosed as a tungsten-platinum alloy, could preferably have a tungsten content of about 8% based on the Nguyen et al teaching. Further , the examiner maintains that the Nguyen et al disclosure recites only a suggested range, and that any value near that range would also be obvious to one of ordinary skill in the art. Given that applicant’s specification fails to provide any specific criticality for the 9%-11% range over the also disclosed range of 5%-12%, the examiner maintains that any value in that range would be an obvious consideration for one of ordinary skill in the art.
Applicant also argues that there would be no reason for one of ordinary skill in the art to consult the Nguyen et al reference when considering the structure of Goble since the devices are “completely different”. The examiner disagrees. There are numerous devices that make use of tungsten-platinum alloys for electrode structures in a wide variety of devices throughout the art. Tungsten-platinum is not a remotely novel or unknown material for the fabrication of RF electrodes, and the electrodes are for various different uses. The specific amount of tungsten that would be used in the alloy would be determined by various factors, and Nguyen et al clearly teach that it is known to use an amount of about 8% tungsten in the realm of RF wire electrodes, which the Goble and Eggers devices also fall under a similar category. Further, the Eggers electrode is a wire loop electrode for an endoscope and has a very similar structure to applicant’s disclosed invention. Eggers disclose the use of various different alloys that may be used, but fail to expressly disclose tungsten-platinum. The examiner maintains that Eggers clearly disclose a non-exhaustive list of alloys, as it would be unreasonable to identify all possible alloys, and Goble provides the motivation to use a tungsten-platinum alloy as an alternative option to the various ones listed by Eggers et al. Again, the specific proportion of tungsten in the alloy is deemed an obvious design consideration that may be derived from known characteristics related to the specific tungsten proportion. Those characteristics may be ascertained through routine experimentation based on the known qualities of the metals and may be applied to any given application of an electrode for a desired use. Since the Eggers et al device is used for similar procedures to applicant’s disclosed invention, it would only be logical that the electrode would require similar characteristics. The claimed limitations of the instant application recite an alloy that is generally well-known in the art, with a tungsten proportion that is also generally known in the art. As such the examiner maintains there is sufficient suggestion and motivation to combine the references to reject the claims as proffered above.
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 MICHAEL PEFFLEY whose telephone number is (571)272-4770. The examiner can normally be reached Mon-Fri 8 am-5 pm.
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/MICHAEL F PEFFLEY/Primary Examiner, Art Unit 3794
/M.F.P/November 1, 2025