DETAILED ACTION
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.
Claim Objections
Claim 13 is objected to because of the following informalities: line 4 should be amended to - end wall is perpendicular to a longitudinal axis of the [[through-hole]] through hole, and -. Appropriate correction is required.
Claim 14 is objected to because of the following informalities: line 4 should be amended to - wherein the [[through-hole]] through hole of the holder has an inclined surface that, in a direction -. Appropriate correction is required.
Claim 17 is objected to because of the following informalities: line 4 should be amended to - holder has a recess recessed from the [[through-hole]] through hole toward an outer-. Appropriate correction is required.
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, 14, 21 and 22 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by WO 2009121563 A2 to Fischer et al. (Fischer).
Fischer discloses:
Regarding claim 1:
A treatment tool (figure 1 and 6-9), comprising:
a sheath (17);
an electrode (16/28) a extending in the sheath (17), the electrode (16/28) includes a flow channel (flow channel within 16/28 connected to the nozzle 11) formed in a direction of a longitudinal axis (longitudinal axis of 16/17) of the electrode (16/28) and extending between a distal end (see the distal end B in figure 1 below) of the electrode (16/28) and a proximal end (see the proximal end A in figure 1 below) of the electrode (16/28);
a holder (12) fixed to a distal end (the distal E of the sheath)(as shown in figure 1 below) of the sheath (17) and having a through hole (see the through hole F in figure 1 below) in which the electrode (16/28) is inserted; and
an elastic member (26) located on an outer surface (surrounds the outer surface of electrode 16/28 and is in contact with the outer surface of 16) of the electrode (16/28),
wherein, when the electrode (16/28) is located at an electrode first position (position as shown in figure 6), the elastic member (26) is in contact with the holder (12) (as shown in figure 6, the elastic member 26 is in contact with 12).
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Figure 1 – figures 6 and 7 of Fischer, annotated by the examiner
Regarding claim 14:
The treatment tool according to claim 1, wherein the through-hole (F in figure 1 above) of the holder (12) has an inclined surface (see the inclined surface G in figure 1 above) that, in a direction from a proximal end (proximal end C in figure 1 above) of the holder (12) toward a distal end (see the distal end D in figure 1 above) of the holder (12), is inclined toward (incline G is angled toward the electrode 28 from C to D in figure 1 above) the electrode (16/28).
Regarding claim 21:
The treatment tool according to claim 1, wherein, when the elastic member (26) is located at an elastic member second position (see the position as shown in figure 8 where the electrode 16/28 is withdrawn into sheath 17 where the elastic member 26 is space form the holder 12), the elastic member (26) is spaced apart from the holder (12).
Regarding claim 22:
The treatment tool according to claim 1, wherein a distal end (end near5 D in figure 1 above) of the elastic member (26) is in contact (as shown in figure 6) with the holder (12).
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.
Claim(s) 13 and 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over WO 2009121563 A2 to Fischer et al. (Fischer) as applied to claim 1 above, and further in view of US 20080161792 A1 to Wang et al. (Wang).
Regarding claim 13:
Fischer fails to disclose:
The treatment tool according to claim 1, wherein the holder includes a proximal end portion and a proximal end wall, and
wherein the proximal end portion is located within the sheath and the proximal end wall is perpendicular to a longitudinal axis of the through-hole, and
wherein the holder includes a protrusion extending proximally from the proximal end wall.
Wang teaches:
The treatment tool according to claim 4, wherein the holder (414/614) includes a proximal end portion (420) and a proximal end wall (see the proximal end wall H in figure 2 below), and
wherein the proximal end portion (420) is located within the sheath (604) and the proximal end wall (see the proximal end wall H in figure 2 below) is perpendicular to a longitudinal axis (as shown above H extends perpendicularly from the longitudinal axis B in figure 2 below) of the through-hole (see the through hole G in figure 2 below), and
wherein the holder (414/614) includes a protrusion (see the protrusion portion of H between 404 and 402) extending proximally from the proximal end wall (see the proximal end wall H in figure 2 below).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Fischer to further include a proximal end wall within the sheath and a protrusion extending from the proximal end wall on the holder of Fischer as taught by Wang to secure the holder within the end of the sheath. This is a simple substitution of one known element (securing means for the holder in the sheath of Fischer) for another (securing means for the holder including the proximal end wall and protrusion as taught by Wang) to obtain predictable results (to secure the holder at the end of the sheath).
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Figure 2 - figure 4a/4b of Wang, annotated by the examiner
Regarding claim 17:
Fischer fails to disclose:
The treatment tool according to claim 1, wherein the holder has a recess recessed from the through-hole toward an outer circumference of the holder, and
wherein the elastic member is provided in the recess.
Wang teaches:
The treatment tool according to claim 1, wherein the holder (414/614) has a recess (432/632) recessed from the through-hole (see the through hole G in figure 1 above) toward an outer circumference (recess 432 extends radially toward the outer circumference of 414/614) of the holder (414/614), and
wherein the elastic member (408/608) is provided in (as shown in figures 4b/6b a portion of 408 extends into 432/632) the recess (432/632).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Fischer to further include a proximal end wall within the sheath, a protrusion extending from the proximal end wall and recess in the through hole for receiving the elastic member on the holder of Fischer as taught by Wang to secure the holder within the end of the sheath. This is a simple substitution of one known element (securing means for the holder in the sheath of Fischer) for another (securing means for the holder including the proximal end wall and protrusion as taught by Wang) to obtain predictable results (to secure the holder at the end of the sheath). Changing the end of the holder extending into the sheath would modify the through hole in Fischer to overlap with the electrode and the elastic member.
Allowable Subject Matter
Claims 2-3, 5, 7-12, 15, 16 and 18-20 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Response to Arguments
Applicant’s arguments, see remarks, filed 11/18/25, with respect to the rejection(s) of claim(s) 1, 13, 14, 17, 21 and 22 under 35 USC 102 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Fischer.
Regarding the 35 USC 102 rejections of claim 15:
The applicant’s amendments to the claims are persuasive and for this reason the rejection of this claims is withdrawn.
Regarding the 35 USC 112(b) claim rejections:
The applicant’s amendments to the claims are persuasive and for this reason the rejections of these claims are withdrawn.
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 WESLEY HARRIS whose telephone number is (571)272-3665. The examiner can normally be reached M to F, 9am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Tsai can be reached on (571) 270-5246. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/WESLEY G HARRIS/Examiner, Art Unit 3783