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 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.
Claim 13 is 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.
Claim 13 is found to be indefinite because Examiner is unsure of what is meant by the limitation “the electrosurgical generator operates in each of a coagulation mode and a cutting mode”. More specifically, this limitation renders the scope of the claim unclear, since it appears to contradict the prior limitation of “operating the generator to deliver the RF EM energy and the microwave frequency EM energy simultaneously in either of a coagulation composite waveform for promoting haemostasis in biological tissue or a cutting composite waveform for cutting biological tissue”. Furthermore, the antecedent basis for the “coagulation mode” and “cutting mode” limitations is confusing, since it is unclear how/whether they are related to the previously-recited ‘coagulation/cutting composite waveforms’. 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.
Claim(s) 1-13 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hancock, U.S. 2013/0267943 (hereinafter Hancock).
Regarding claims 1-3 and 8, Hancock discloses (note abstract; paragraphs 17, 24, 38, 69, and 79-84) an electrosurgical apparatus comprising: an electrosurgical instrument having a distal tip assembly for delivering radiofrequency (RF) electromagnetic (EM) energy and microwave frequency EM energy into tissue (note figs. 12-13); an electrosurgical generator (note paragraph 17) arranged to generate radiofrequency (RF) electromagnetic (EM) energy and microwave frequency EM energy; and a feed cable (note paragraph 17) connected to deliver the RF EM energy and the microwave frequency EM energy from the electrosurgical generator to the electrosurgical instrument; wherein the electrosurgical generator necessarily operates (note especially paragraph 38, as well as paragraphs 17, 23, and 24) in each of a coagulation ‘mode’ and a cutting ‘mode’ (which also functions as a measurement mode), wherein in the coagulation mode the electrosurgical generator is ‘arranged to deliver’ (i.e., capable of delivering) the RF EM energy and the microwave EM energy to the electrosurgical instrument simultaneously in a coagulation composite waveform comprising a high-power microwave signal and a low-power RF signal, and wherein in the cutting mode the electrosurgical generator is ‘arranged to deliver’ (i.e., capable of delivering) the RF EM energy and the microwave EM energy to the electrosurgical instrument simultaneously in a cutting composite waveform comprising a high-power RF signal and a low-power microwave signal, wherein the signals are delivered from a distal tip at a desired power level to perform the desired function. It should be noted that a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
Regarding claims 4-7 and 9-12, Hancock discloses (see above) an electrosurgical apparatus capable of performing the claimed function (i.e., delivering the claimed signals – note paragraph 21). It should be noted that a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
Regarding claim 13, Hancock discloses (note abstract; paragraphs 17, 21-25, 38, 69, and 79-84) a method of delivering radiofrequency (RF) electromagnetic (EM) energy and microwave frequency EM energy from an electrosurgical generator to an electrosurgical instrument (note figs. 12-13) that has a distal tip assembly for delivering RF EM energy and microwave frequency EM energy into biological tissue, the method comprising operating the generator to deliver the RF EM energy and the microwave frequency EM energy simultaneously in either of a coagulation composite waveform for promoting haemostasis in biological tissue or a cutting composite waveform for cutting biological tissue, wherein: the electrosurgical generator necessarily operates (note especially paragraph 38, as well as paragraphs 17, 23, and 24) in each of a coagulation ‘mode’ and a cutting ‘mode’ (which also functions as a measurement mode); the coagulation composite waveform comprises a high-power microwave signal and a low- power RF signal which are delivered simultaneously, and the cutting composite waveform comprises a high-power RF signal and a low-power microwave signal which are delivered simultaneously (note paragraphs 17 and 24).
Response to Arguments
Applicant's arguments filed December 5, 2025 have been fully considered but they are not persuasive. Regarding Applicant’s arguments concerning Hancock, Examiner respectfully disagrees. More specifically, Examiner maintains that the claims have been met by Hancock as they are currently written, due to the breadth of limitations such as “arranged” and “mode” (see updated rejections above). Therefore, Examiner asserts that the claims are still met by Hancock as they are currently written, as can be seen above.
Conclusion
THIS ACTION IS MADE FINAL. 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 THOMAS ANTHONY GIULIANI whose telephone number is (571)270-3202. The examiner can normally be reached Mon - Fri 9:00-5:00.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joanne Rodden can be reached at 303-297-4276. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/THOMAS A GIULIANI/Primary Examiner, Art Unit 3794