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.
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-16 in the reply filed on 02 October 2025 is acknowledged.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 3, 5, 9 and 11-13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Khandkar et al. (US 2002/0111622).
Regarding claims 1 and 9, Khandkar discloses an electrosurgical electrode (see Figs. 1-3) comprising: a conductive rod including a distal end portion having a working portion (see knife blade 12, Fig. 1) and a proximal end portion configured to couple to an electrosurgical instrument (see proximal section past the flat part of the blade and cylindrical section of blade 12 configured to couple to electrosurgical handle 18 and power supply 22, Fig. 1); a composite coating disposed on the working portion (see coating 16/16’), the composite coating including a first coating formed from a first polymer disposed on an outer surface of the working portion (see base coat 24/24’ formed of PTFE; [0026]-[0027] and [0035], Figs. 2-3) and a second coating disposed over the first coating, the second coating formed from a second polymer, different from the first polymer (see mid coat 28 and/or top coat 26/26’ formed of PFA; [0028]-[0032] and [0035], Figs. 2-3).
Regarding claim 3, Khandkar further discloses wherein the first coating includes polytetrafluoroethylene [0026]-[0027] and [0035].
Regarding claim 5, Khandkar further discloses wherein the first coating has a thickness from about 7 µm to about 9 µm (see cured base coat 24 has a coating thickness within a range of about 2-10 microns, [0027]).
Regarding claims 11 and 12, the claims are rejected under the same evidence as provided in the rejections of claims 3 and 4 as set forth above and below, respectively.
Regarding claims 13, the claims are rejected under the same evidence as provided in the rejection of claim 5 as set forth above.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 2 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Khandkar in view of Miki et al. (US 2017/0290623).
Regarding claims 2 and 10, Khankar discloses the limitations of claims 1 and 9, however fails to further disclose wherein the outer surface of the working portion has a roughness from about 0.6 Ra to about 0.8 Ra.
Miki teaches an electrosurgical blade, wherein the base material of the blade is subjected to a blast treatment for form a pretreated portion having a surface roughness of 1 µm and ranging from 0.01 to 5 µm upon which a first layer is applied to (see [0036], see also Table 4). Therefore, it would have been obvious to one having ordinary skill in the art before the time of filing to modify the outer surface of working portion to have a roughness from about 0.6 Ra to about 0.8 Ra in light of Miki to provide the desired burning degree and adhesion properties to the applied coating, 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.
Claims 6-7 and 14-15 are rejected under 35 U.S.C. 103 as being unpatentable over Khandkar.
Regarding claims 6-7 and 14-15, Khandkar further discloses the second coating as having a thickness of about 20-40 microns (see [0031]), and the combined thickness of all coats being about 30-50 microns (see [0031] and [0037]). Khandkar fails to further disclose wherein the second coating has a thickness from 12 µm to about 15 µm or wherein the composite coating has a thickness from about 19 µm to about 24 µm.
However, it would have been obvious to one having ordinary skill in the art before the time of filing to modify the thickness of the second coating and composite coating such that the second coating has a thickness from 12 µm to about 15 µm and the composite coating has a thickness from about 19 µm to about 24 µm in light of Khandkar to provide the desired about of electrical and thermal conductivity to the applied coatings, 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.
Claims 8 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Khandkar in view of McGreevy et al. (US 2008/0188845).
Regarding claims 8 and 16, Khandkar discloses the limitations of claims 1 and 9, however fails to further disclose wherein the second coating has a roughness from about 0.2 Ra to about 0.4 Ra.
McGreevy teaches an electrosurgical device having an electrosurgical working surface for contacting tissue during tissue sealing, wherein the smoothness of the surface ranges from 0.15 to 0.40 Ra (see [0043]). Therefore, it would have been obvious to one having ordinary skill in the art before the time of filing to modify the roughness of the second coating to have a roughness from about 0.2 Ra to about 0.4 Ra in light of McGreevy to provide the desired amount of non-stick property to the outer surface of the blade, 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 Rejections - 35 USC § 102/103
The text of those sections of applicable Title 35, U.S. Code not included in this section can be found above.
Claims 4 is rejected under 35 U.S.C. 102(a)(1) as being anticipated or, in the alternative, under 35 U.S.C. 103 as unpatentable over under Khandkar.
Regarding claim 4, Khandkar further discloses wherein the second coating comprises perfluoroalkoxy alkanes, Khandkar does not disclose powder coating, however even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. In re Thorpe, 777 F.2d 695, 698; 227 USPQ 964, 966 (Fed. Cir. 1985). In the instant case, Khandkar discloses the second coating comprises sprayed perfluoroalkoxy alkanes (see [0028]-[0032] and [0035]) which results in a coating that is materially the same.
Conclusion
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
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