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 Objections
Claim 6 is objected to because of the following informalities: Claim 6 recites “a protective capacitor” in line 2, which should read “the protective capacitor” to provide proper antecedence in light of the recitation in claim 16 from which claim 6 depends. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1 and 3-16 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Claim 1 recites “the capacitive detector is connected to the output connection only via the conductors of the output connection” in lines 12-13, which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. This recitation is a negative limitation, which is not explicitly found in the specification as originally filed and therefore fails to comply with the written description requirement.
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 15 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 15 recites the limitation “the measuring circuit” in line 2 of the claim. There is insufficient antecedent basis for this limitation in the claim in light of the recitation of “the detection unit…for detecting a capacitance” in lines 9-10 of claim one. It is not clear if “the measuring circuit” recitation in claim 15 is referring to this detection unit or another measurement circuit. Furthermore, it is not clear if applicant intends for claim 15 to be dependent on claim 4 or one of the claims dependent on claim four.
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, 3-5, 7-12 and 14-16 are rejected under 35 U.S.C. 103 as being unpatentable over Goble et al (WO/97/24073) in view of John R. Hosier (2008/0294157).
Referring to claim 1, Goble et al teaches an electrosurgical generator (10) designed to output a high- frequency alternating voltage to an electrosurgical instrument (Page 13, lines 5-12; Figure 1) comprising a control unit (48 and 40) and an inverter (42) for high voltage that generates a high- frequency alternating voltage which is fed via an output connection to an output socket (21) for connection of the electrosurgical instrument, the output connection including conductors (pair of 40C) for supplying the high voltage to the electrosurgical instrument (Page 15, line 1 through Page 16, line 31; Figures 1 and 2) wherein a galvanic separator (42) is provided isolating the output socket from the control unit (Page 16, line 1 through Page 17, line 7; Figure 1) and wherein a detection unit (50) is provided being configured to detect when the electrosurgical instrument is plugged in the output socket (Page 15, lines 25-29 and Page 20, line 22 through Page 21, line 16; Figures 1-3) wherein the detection unit is a capacitive detector configured for detecting a capacitance of a plugged-in cable of the electrosurgical instrument (Page 11, line 26 through Page 12, line 7; Page 15, line 25 through Page 16, line 25; Figures 1-3).
Goble et al teaches that the capacitive detector is connected to the output connection via the conductors of the output connection for supplying the high voltage to the electrosurgical instrument (Page 15, lines 25-29 and Page 20, line 22 through Page 21, line 16; shown best in Figure 2) since they are all part of the same system, however fails to teach that that the capacitive detector is connected to the output connection only via the conductors of the output connection for supplying the high voltage to the electrosurgical instrument. Hosier teaches an analogous electrosurgical generator that feeds an output connection to an output socket (16) where the output connection includes conductors (20) for supplying the high voltage to the electrosurgical instrument and a capacitive detector (24) is connected to the output connection only via the conductors (20) of the output connection for supplying the high voltage to the electrosurgical instrument (paragraph 0032 and Figures 1-2). 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 connection between the capacitive detector to the output connection, as taught by Goble et al, to be only via the conductors, as taught by Hosier, in order to easily adjust the output to suit the respective instrument (paragraph 0032).
Referring to claim 3, Goble et al teaches wherein a connection of the capacitive detector (50) is configured for detecting a binary state, a first high capacitance state indicating the cable being plugged-in and a second low capacitance state indicating no cable being plugged in (the detection circuit is also connected with its inputs 50A and 50B to the connection socket and the output goes to the controller 48; Figure 1).
Referring to claim 4, Goble et al teaches wherein the capacitive detector comprises a capacitive pick-up arranged at the output socket interacting with a measuring circuit being configured to check a measured capacitance against a reference value (Page 8, line 21 through Page 9, line 5; Page 20, lines 4-9). Furthermore it is noted that the measuring circuit is not positively required.
Referring to claim 5, Goble et al teaches wherein the measuring circuit is galvanically isolated from the capacitive pick-up as various components such as transformers, capacitors, and relays are known for their galvanic isolation (Page 8, line 21 through Page 9, line 5; Page 20, lines 4-9). Furthermore, it is noted that the measuring circuit is not positively required.
Referring to claims 7-10, Goble et al teaches wherein the measuring circuit is connected to the output socket and tan output signal emitted by the measuring circuit is fed to the control unit via a protected connection; wherein the measuring circuit is configured for direct and indirect capacitance measurement and wherein the measuring circuit is configured for determining a capacitive leakage current at the output socket (Page 15, line 25 through Page 21, line 8; Figures 1-3). Furthermore, it is noted that the measuring circuit is not positively required.
Referring to claim 11, Goble et al teaches wherein a low voltage AC signal (via 40) is injected into the output connection and the measuring circuit is configured for measuring said low voltage AC signal (Page 15, line 5 through Page 17, line 28; Figures 1-3).
Referring to claim 12, Goble et al teaches a measuring circuit comprises a capacitive voltage divider connected between the out-put connection and a local ground at the output socket, said capacitive voltage divider generating a low voltage signal to be measured (Page 15, line 25 through Page 21, line 8; Figures 1-3). Furthermore, it is noted that the measuring circuit is not positively required.
Referring to claims 14 and 15, Goble et al teaches wherein the measuring circuit comprises an operational amplifier being configured for setting different DC gain and AC gain, wherein the AC gain is at least ten times, preferably more than fifty times, higher than the DC gain which is preferably set to substantially unity and wherein the measurement circuit comprises a blocking filter, preferably a notch filter, configured for blocking a switching frequency of a power supply of the electrosurgical generator (Page 15, line 25 through Page 21, line 8; Figures 1-3). Furthermore, it is noted that the measuring circuit is not positively required.
Referring to claim 16, Goble et al teaches wherein a protective capacitor (34) is provided between the capacitive pick-up (found within the capacitive detector 50) and the measuring circuit (Page 15, lines 25-29, Page 16, lines 6-10, Page 18, lines 5-14; Figures 1-2). Furthermore, it is noted that the measuring circuit is not positively required.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Goble et al (WO/97/24073) in view of John R. Hosier (2008/0294157) as applied to the claims above, and further in view of Putterbaugh et al (2014/0094120).
Referring to claim 6, Goble et al fails to expressly teach a protective capacitor is configured as a printed circuit board. Putterbaugh et al teaches an analogous electrosurgical generator comprising a protective capacitor configured as a printed circuit board (paragraphs 0048, 0067, 0073, 0089 and 0091). 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 protective capacitor, as taught by Goble et al, to be configured as a printed circuit board, as taught by Putterbaugh et al, in order to be configured of electrically conductive plates for providing an isolation device (paragraph 0048).
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Goble et al (WO/97/24073) in view of John R. Hosier (2008/0294157) as applied to the claims above, and further in view of Eggers et al (5,633,578).
Referring to claim 13, Goble et al fails to expressly teach a resistive voltage divider. Eggers et al teaches an analogous electrosurgical generator comprising a resistive voltage divider provided for providing a bias voltage for the measuring circuit (Col. 7, lines 49-67; Figure 5). 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 electrosurgical generator, as taught by Goble et al, to include a resistive voltage divider provided for providing a bias voltage for the measuring circuit, as taught by Eggers et al, in order to determine the supplied bias voltage (Col. 7, lines 49-67).
Response to Arguments
Applicant’s arguments with respect to the pending claims have been considered but are moot in view of the new ground(s) of rejection. The examiner is relying on the teachings of Hosier who teaches an analogous electrosurgical generator that feeds an output connection to an output socket (16) where the output connection includes conductors (20) for supplying the high voltage to the electrosurgical instrument and a capacitive detector (24) is connected to the output connection only via the conductors (20) of the output connection for supplying the high voltage to the electrosurgical instrument (paragraph 0032 and Figures 1-2). 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 connection between the capacitive detector to the output connection, as taught by Goble et al, to be only via the conductors, as taught by Hosier, in order to easily adjust the output to suit the respective instrument (paragraph 0032).
Furthermore, the amendment to claim 15 failed to overcome the 112(b) rejection. It is not clear if applicant intends for claim 15 to be dependent on claim 4 or one of the claims dependent on claim four to provide the antecedence for this claim limitation.
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.
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, Linda Dvorak can be reached at 571-272-4764. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LINDA C DVORAK/Primary Examiner, Art Unit 3794
/SAMANTHA M GOOD/ Examiner, Art Unit 3794