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 .
Response to Amendment
The Amendment filed September 25, 2025 has been entered. Currently, claims 1-8 have been amended, claims 9-15 have been cancelled, claims 21-25 have been newly added, and claims 1-8, 16-25 are pending in the application.
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 5 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 5 recites the limitation of "a second support body" in line 6. The recitation renders the scope of the claim as indefinite because it is unclear to Examiner whether this second support body is different from the second support body already cited earlier in the claim, or if they are the same structure. For examination purposes, Examiner will treat both electrodes as the same structure on the apparatus of claim 1.
Claim Rejections - 35 USC § 102
(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 1-5, 7, and 22-25 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Jones (U.S. Application No. 20090005775 A1).
Regarding independent claim 1, Jones discloses an endoscopic treatment device (128, 10, pa. 0156 & Figs. 1-2, 31), comprising:
a hollow tube (12) (pa. 0072);
an electrode (i.e., combination of central-head electrode 35 and secondary lead 31) (pa. 0076-0077);
an insulative support member (i.e., insulative structure surrounding plurality of primary leads 30) (pa. 0076 & Fig. 6),
a forceps (i.e., plurality of primary leads 30) configured to protrude at least partially from the hollow tube, wherein the forceps comprise a first forceps piece (i.e., a first primary lead of the plurality of primary leads 30) and a second forceps piece (i.e., a second primary lead of the plurality of primary leads 30) radially outward of the electrode (pa. 0090); and
a connector (36) located inside the hollow tube and connecting the first forceps piece and the second forceps piece (via plurality of axially-aligned lumina 38) (pa. 0078),
wherein, when the connector is moved inside the hollow tube along a longitudinal axis of the hollow tube toward a distal end (14) of the hollow tube (see Figs. 2-3), at least a portion of one of the first forceps piece and the second forceps piece is configured to protrude from the hollow tube, and extend radially outward beyond the hollow tube (pa. 0080).
Regarding claim 2, Jones discloses wherein the first forceps piece and the second forceps piece are movable (via actuator 25, pa. 0087) to protrude from and retract into the distal end of the hollow tube (pa. 0079, 0082 & Figs. 2-3).
Regarding claim 3, Jones discloses wherein each of the first forceps piece and the second forceps piece includes a first portion (34) at a distal end of the respective forceps piece and having a first length (e.g., a diameter ranging from 0.36 mm - 0.51 mm) in a direction orthogonal to the longitudinal axis of the hollow tube (pa. 0077),
wherein each of the first forceps piece and the second forceps piece includes a second portion (i.e., proximal cantilever arm structure of the plurality of primary leads 30) at a proximal end of the respective forceps piece and having a second length (e.g., a diameter ranging from 0.18 mm - 0.28 mm) in the direction orthogonal to the longitudinal axis of the hollow tube (pa. 0077), and
wherein, when each of the first forceps piece and the second forceps piece protrudes from the distal end of the hollow tube (see Fig. 2), the first length is longer than the second length (pa. 0077).
Regarding claim 4, Jones discloses further comprising:
a first wire (i.e., a conductive wire (31) found in electrode 35) configured to flow a high-frequency current, and
a second wire (i.e., a conductive wire (30) found inside the plurality of primary leads 30) connected to a proximal end of each of the first forceps piece and the second forceps piece (pa. 0077, 0086),
wherein the electrode is connected to a distal end of the first wire,
wherein the first wire is movable to be advanced and retracted in the hollow tube, and
wherein the second wire is movable to be advanced and retracted relative to the first wire (pa. 0080, 0090).
Regarding claim 5, Jones discloses wherein each of the first forceps piece and the second forceps piece includes a first support body (34) and a second support body (i.e., distal end 32 found on the first primary lead of the plurality of primary leads 30),
wherein the first support body and the second support body are located at a distal end of the respective forceps piece (pa. 0077 & Fig. 2),
wherein the first support body and a second support body are circumferentially separated from each other and are spaced apart radially from the electrode (pa. 0090 & Fig. 2a), and
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wherein an imaginary circle or polygon in a plane perpendicular to the longitudinal axis and having a periphery intersecting the first support body and a second support body (i.e., once the extend past the distal end of the hollow tube) defines an interior area through which the electrode is movable to advance and retract (see annotated Fig. 3 below).
Regarding claim 7, Jones discloses wherein a maximum distance each of the first forceps piece and the second forceps piece protrudes from the distal end of the hollow tube is smaller than a maximum distance the electrode protrudes from the distal end of the hollow tube (see Fig. 1).
Regarding claim 22, Jones discloses further comprising an inner sheath (28) disposed inside the hollow tube, wherein the connector is connected to a distal end of the inner sheath (pa. 0079).
Regarding claim 23, Jones discloses wherein the connector is formed in an annular shape (see Fig. 2).
Regarding claim 24, Jones discloses wherein the electrode (i.e., portion of the secondary lead 31) passes through an inside of the connector (via central lumen 48) (pa. 0078)
Regarding claim 25, Jones discloses wherein the connector is connected to proximal ends of the first forceps piece and the second forceps piece (pa. 0078).
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 6 and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Jones, as applied to claim 1 above, and further in view of Muyari (U.S. Application No. 2008/0177135).
Regarding claim 6, Jones discloses each of the first forceps piece and the second forceps piece being able to extend at different lengths from the hollow tube (pa. 0099).
However, Jones does not explicitly disclose wherein a maximum distance each of the first forceps piece and the second forceps piece protrudes from the distal end of the hollow tube is larger than a maximum distance the electrode protrudes from the distal end of the hollow tube.
Muyari, in the same field of endeavor, teaches a medical instrument (108) configured to be used with an endoscope (E), wherein the medical instrument comprises a blade (107, analogous to the electrode) and a plurality of legs (106, analogous to the insulative support member), wherein the legs are able to project from the distal end of endoscope (E, analogous to the hollow tube) at a greater distance than the blade (pa. 0178 & Fig. 32).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the length of extension of each of the first forceps piece and the second forceps piece since varying the length is routine and would have yielded the same expected results of projecting each of the first forceps piece and the second forceps piece beyond the hollow tube.
Regarding claim 21, Jones discloses wherein the connector is configured to move along the longitudinal axis of the hollow tube (see Fig. 2-3)
However, Jones does not disclose where the connector is configured to move with respect to the electrode.
Muyari, in the same field of endeavor, teaches the blade (107, analogous to the electrode) that is disposed so as to freely retract into and project from the sheath (105, analogous to the connector) (pa. 0178).
Examiner is interpreting the blade’s capability of moving receptively to the sheath, as also the sheath being capable, although not initially designed to, to move receptive to the blade in a scenario where the blade is held in a place and the user pushes forward on the sheath, since there is no structure disclosed in the reference which prevents this from occurring.
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the connector of Jones to allow movement receptive to the electrode, as taught by Muyari, for the purpose of more carefully/precisely controlling the application of energy on the targeted tissue.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Jones as applied to claim 1 above, and further in view of Machiya (E.P. Application No. 1726266 A1).
Regarding claim 8, Jones discloses the forceps are formed of an insulative material (pa. 0076).
However, Jones does not explicitly disclose the insulative material being formed of a resin.
Machiya, in the same field of endeavor, teaches a flexible cord (11) being formed by coating an electrical insulating material such as a fluorine resin on the outer circumference of a lead wire (pa. 0022).
It would have been prima facie obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included the resin of Machiya to the insulative material of the forceps of Jones because of its high dielectric strength, low dielectric constant, and excellent resistance to heat, chemicals, and moisture properties.
Response to Arguments
Applicant's arguments filed 09/25/2025 have been fully considered but they are not persuasive.
With regards to newly amended independent claim 1, Applicant argues that the Jones reference does not disclose a "connector located inside the hollow tube and connecting the first forceps piece and the second forceps piece" where the connector "move[s] inside the hollow tube along a longitudinal axis of the hollow tube toward a distal end of the hollow tube, at least a portion of one of the first forceps piece and the second forceps piece is configured to protrude from the hollow tube, and extend radially outward beyond the hollow tube" as presently claimed. However, Examiner, respectfully, disagrees.
Jones discloses an endoscopic treatment device (128, 10, pa. 0156 & Figs. 1-2, 31), comprising a hollow tube (12) (pa. 0072), forceps (i.e., plurality of primary leads 30) configured to protrude from the hollow tube, wherein the forceps comprise a first forceps piece (i.e., a first primary lead of the plurality of primary leads 30) and a second forceps piece (i.e., a second primary lead of the plurality of primary leads 30) (pa. 0090). Moreover, Jones discloses a connector (36) located inside the hollow tube and connecting the first forceps piece and the second forceps piece (via plurality of axially-aligned lumina 38) (pa. 0078), wherein, the connector can move inside the hollow tube along a longitudinal axis of the hollow tube toward a distal end (14) of the hollow tube (see Figs. 2-3), and at least a portion of one of the first forceps piece and the second forceps piece is configured to protrude from the hollow tube, and extend radially outward beyond the hollow tube (pa. 0080). Therefore, the 102 rejection of the Jones reference set-forth above is maintained.
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.
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/A.V.G./Examiner, Art Unit 3794 /Ronald Hupczey, Jr./Primary Examiner, Art Unit 3794