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 .
Specification
The disclosure is objected to because of the following informalities: The first paragraph of the specification should be amended to include updated patent information..
Appropriate correction is required.
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
Claim Rejections - 35 USC § 102
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.
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) 21-23, 27-29 and 33 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Johnson (US 2007/0299895).
Regarding claim 21, Johnson discloses a method of generating electrical signal waveforms by a generator, the generator comprising a processor and a memory in communication with the processor, the memory defining a first and second table [Para 0012 discusses the use of look up tables], the method comprising: retrieving, by the processor, stored phase points defining a first digital electrical signal wave shape of a first electrical signal waveform from the first table defined in memory; retrieving, by the processor, stored phase points defining a second digital electrical signal wave shape of a second electrical signal waveform from the second table defined in memory; receiving, by the processor, tissue parameter feedback; and switching, by the processor, between the phase point of the first electrical signal waveform and the phase point of the second electrical signal waveform based on the tissue parameter feedback [Para 0012-0019, Para 0038-0043, 0059, Para 0012 specifically mentions adjusting of parameters]. The examiner notes that the method steps as claimed do not actively apply the waveform to tissue. Additionally, it does not send the signal to a device for treatment of tissue. Any generator that creates waveforms is capable of the steps claimed.
Regarding claim 22, Johnson discloses the method of claim 21, wherein the tissue parameter feedback comprises at least one of tissue impedance, tissue type, or temperature of the tissue [Para 0038-0043].
Regarding claim 23, Johnson discloses the method of claim 21, wherein the tissue parameter feedback is based on a temperature of an electrode or an ultrasonic blade or an electrical impedance of an ultrasonic transducer [Para 0019 mentions the use of electrodes and adjusting if the waveform].
Regarding claim 27, Johnson discloses a method of generating electrical signal waveforms by a generator, the generator comprising a processor and a memory in communication with the processor, the memory defining a first and second table [Para 0012 discusses the use of tables], the method comprising: retrieving, by the processor, stored phase points defining a first digital electrical signal wave shape of a first electrical signal waveform from the first table defined in memory; retrieving, by the processor, stored phase points defining a second digital electrical signal wave shape of a second electrical signal waveform from the second table defined in memory; receiving, by the processor, tissue parameter feedback; and synchronize, by the processor, the phase points of the first and second electrical signal waveforms based on the tissue parameter feedback [Para 0012-0019, Para 0038-0043, 0059, Para 0012 specifically mentions adjusting of parameters]. The examiner notes that the method steps as claimed do not actively apply the waveform to tissue. Additionally, it does not send the signal to a device for treatment of tissue. Any generator that creates waveforms is capable of the steps claimed.
Regarding claim 28, Johnson discloses the method of claim 27, wherein the tissue parameter feedback comprises at least one of tissue impedance, tissue type, or temperature of the tissue [Para 0038-0043].
Regarding claim 29, Johnson discloses 29. The method of claim 27, wherein the tissue parameter feedback is based on temperature of an electrode or an ultrasonic blade or an electrical impedance of an ultrasonic transducer [Para 0019 mentions the use of electrodes and adjusting if the waveform].
Regarding claim 33, Johnson discloses a method of generating electrical signal waveforms by a generator, the generator comprising a processor and a memory in communication with the processor, the memory defining a first and second table [Para 0012 discusses the use of tables], the method comprising: retrieving, by the processor, stored phase points defining a first digital electrical signal wave shape of a first electrical signal waveform from the first table defined in memory; retrieving, by the processor, stored phase points defining a second digital electrical signal wave shape of a second electrical signal waveform from the second table defined in memory; receiving, by the processor, tissue parameter feedback; and determining, by the processor, whether to switch or synchronize the phase points of the first and second electrical signal waveforms based on the tissue parameter feedback [Para 0012-0019, Para 0038-0043, 0059, Para 0012 specifically mentions adjusting of parameters]. The examiner notes that the method steps as claimed do not actively apply the waveform to tissue. Additionally, it does not send the signal to a device for treatment of tissue. Any generator that creates waveforms is capable of the steps claimed.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 21-40 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 10,624,691. Although the claims at issue are not identical, they are not patentably distinct from each other because both the present application and the previously patented invention are directed towards a method of generating electrical signal waveforms by a generator including retrieving stored phase points defining first and second digital electrical signal wave shapes and receiving tissue parameter feedback. The use of RF or ultrasound components found in claims 23, 25, 29, 31, and 40 are found in patent claims 3, 11 and 16.
Claims 21-40 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 11766,287. Although the claims at issue are not identical, they are not patentably distinct from each other because both the present application and the previously patented invention are directed towards a method of generating electrical signal waveforms by a generator or processor including retrieving stored phase points defining first and second digital electrical signal wave shapes and receiving tissue parameter feedback. Claim 21 also discusses switching or modification of phase points based on tissue parameters (as discussed in patent claim 9 and 19). Synchronization of the phase points address in claim 27 are found in patent claim 9. The use of RF or ultrasound components found in claims 23, 25, 29, 31, and 40 are found in patent claims 3, 11 and 16.
Conclusion
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/A.L.Z/Examiner, Art Unit 3794
/MICHAEL F PEFFLEY/Primary Examiner, Art Unit 3794
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