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 .
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.
Claims 1, 2, 5 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Jones et al (6,132,427) in view of Cimino et al (5,382,247).
Referring to claim 1, Jones et al teaches a conductive electrode (12) fastened to a handpiece used for monopolar electrosurgery (Figure 2), the conductive electrode for an electrosurgical handpiece comprising: a blade (12) manufactured and press-molded into an elongated plate shape (Figure 2); a plug molded (proximal part shown in Figure 2) to extend from the blade and to be inserted and fastened to the handpiece (Figure 2); an anodized coating layer (16) formed on an outer surface of the blade (12) by performing anodized coating (Col. 3, lines 15-30); an edge portion (14) formed on a peripheral part of the blade (12) without performing anodized coating (Col. 3, lines 38-45); and a non-adhesive coating layer (18) formed by coating a surface of the anodized coating layer (16) (Col. 3, lines 38-45; Figures 1-3). The recitations of “by performing” and “formed by” are regarded as a product-by-process limitation. “[E]ven 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 a 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) (citations omitted).
Jones et al teaches that the blade is made of surgical stainless steel and fails to teach a blade manufactured from aluminum. The recitation of “press-molded” is regarded as a product-by-process limitation. “[E]ven 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 a 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) (citations omitted). Cimino et al teaches an analogous conductive electrode comprising a blade manufactured using aluminum (Col. 4, lines 44-50). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the blade, as taught by Jones et al, to be made of aluminum, as taught by Cimino et al, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416. Cimino et al specifically teaches that aluminum or stainless steel could be used for the blade (Col. 4, lines 44-50).
Referring to claim 2, Jones et al teaches the non- adhesive coating layer (18) is a ceramic coating layer or a Teflon coating layer (Col. 3, lines 38-65).
Referring to claim 5, Jones et al teaches wherein a non- adhesive coating layer (18) is formed on a surface of the edge portion (14) (Figures 1 and 3).
Referring to claim 7, Jones et al teaches wherein the edge portion (14) is formed by anodized-coating the edge portion as well and then removing the anodized coating from the edge portion (Col. 4, lines 13-37; Figures 1 and 3). The recitation of “formed by and then removing” is regarded as a product-by-process limitation. “[E]ven 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 a 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) (citations omitted).
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Jones et al (6,132,427) in view of Cimino et al (5,382,247) as applied to claim 1 above, and further in view of Palanker et al (2008/0027428).
Referring to claim 3, Jones et al fails to teach the anodized coating layer is formed to have a thickness of 30 μm to 50 μm. Palanker et al teaches an blade comprising an anodized coating layer is formed to have a thickness of 30 μm to 50 μm (paragraph 0021). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the anodized coating layer, as taught by Jones et al, to have a thickness of 30 μm to 50 μm, as taught by Palanker et al, in order to insulate the blade to provide an exposed edge (paragraph 0021) and 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.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Jones et al (6,132,427) in view of Cimino et al (5,382,247) as applied to claim 1 above, and further in view of Phillip E. Eggers (5,496,314).
Referring to claim 4, Jones et al fails to teach wherein the non- adhesive coating layer is formed to have a thickness of 20 μm to 40 μm. Eggers teaches an analogous blade comprising non- adhesive coating layer is formed to have a thickness of 20 μm to 40 μm (Col. 7, lines 29-32). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the non- adhesive coating layer, as taught by Jones et al, to have a thickness of 20 μm to 40 μm, as taught by Eggers, in order to minimize sticking (Col. 7, lines 29-38) and 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.
Response to Arguments
Applicant's arguments filed December 15, 2025 have been fully considered but they are not persuasive. The examiner disagrees that using aluminum is incompatible with the function of Jones. While Jones does discuss the importance of a bimodal temperature profile, this can still be achieved with aluminum as aluminum is a well-known substitute for stainless steel as both material have high thermal conductivity. Cimino et al teaches that various material can be used for the electrically conductive electrode such as stainless steel or aluminum (Col. 4, lines 44-49). Aluminum has a significantly higher thermal conductivity compared to alumina and therefore a bimodal temperature profiled would still be present.
The examiner maintains that the recitations of “by performing” and “formed by” are regarded as a product-by-process limitation. “[E]ven 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 a 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) (citations omitted). The coating layer (16) as taught by Jones et al meets the structural limitations of this claim. The end results of both processes result in a coating layer formed on an outer surface of the blade.
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 SAMANTHA M GOOD whose telephone number is (571)270-7480. The examiner can normally be reached Mon to Wed, 7am to 3pm.
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/SAMANTHA M GOOD/Examiner, Art Unit 3794
/MICHAEL F PEFFLEY/Primary Examiner, Art Unit 3794