DETAILED ACTION
The following is a Final Office Action on the merits.
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 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.
Response to Amendment
Acknowledgment is made to the amendment received 5/18/2026.
Applicant’s amendments to the specification and claims are sufficient to overcome the specification and claim objections and 35 USC 112(a)/first paragraph and 112(b)/second paragraph rejections set forth in the previous office action.
Response to Amendment
The terminal disclaimer filed on 5/18/2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of U.S. Patent No. 11,723,713 has been reviewed and is accepted. The terminal disclaimer has been recorded.
Claim Objections
Claim 9 is objected to because of the following informalities: amend “the edge” to -the double chamfered edge- in ll. 6. Appropriate correction is required.
Claim 14 is objected to because of the following informalities: amend “edge; a conductive element…” to -edge and a conductive element…- such that the “cutting element” limitation comprises both the non-conductive body and the conductive element. Appropriate correction is required.
Claim Interpretation
Claims 1, 9 & 14 recite “a soldering strip”. Under BRI, this is taken to be any strip of material capable of being soldered. Claim 7 recites "wherein the conductive element is etched onto the elongate non-conductive member” and claim 10 recites the limitation “wherein the conductive element is…printed on the double chamfered edge”. 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)
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.
Claim(s) 1, 3 & 6-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Billings (6,126,656) in view of Ebbutt et al. (2016/0324576).
Concerning claim 1, as illustrated in at least Figs. 1-8, Billings et al. disclose a cutting element for an electrosurgical device (cutting device 10 has a distal end cutting element; Col. 4, ll. 20-56), comprising:
an elongate non-conductive body defining a major longitudinal axis having a first face opposite a second face, the first face and the second face joining to define an edge (support member 12 composed of a strong, non-conductive material has a first face opposite a second face that are joined by peripheral edge 16; Col. 4, ll. 20-56);
a conductive element disposed only along the edge configured to cut tissue with monopolar radiofrequency energy (conducting wire is a wire electrode disposed only along the peripheral edge 16 of support member 12 and may be used as the active outlet of a monopolar circuit; Col. 4-5, ll. 20-19); and
While Billings discloses a “means for conducting electrical energy from an electrosurgical generator 22 to the conducting member 14” in the embodiment of Fig. 8 (Col. 6, ll. 3-12), Billings fails to disclose a conductive shaft, wherein the elongate non-conductive body includes a soldering strip disposed only on the first face and the edge, the soldering strip spanning an entire width of a proximal portion of the elongate non-conductive body transverse to the major longitudinal axis, the soldering strip being configured to electrically couple the conductive element to the conductive shaft of the electrosurgical device. However, Ebbutt et al. disclose a cutting element (214) for an electrosurgical device comprising an elongate non-conductive body (planar piece of dielectric material) having two faces, a conductive element (conductive layer) disposed on the non-conductive body, and a soldering strip (230) disposed only on a first face (bottom) and the edge, the soldering strip spanning an entire width of a proximal portion of the elongate non-conductive body transverse to the major longitudinal axis, the soldering strip (230) being configured to electrically couple the conductive element (conductive layer) to a conductive shaft (226) of the electrosurgical device. At the time the invention was effectively filed, it would have been obvious to one of ordinary skill in the art to modify the invention of Billings such that the elongate non-conductive body includes a soldering strip disposed only on the first face and the edge, the soldering strip spanning an entire width of a proximal portion of the elongate non-conductive body transverse to the major longitudinal axis, the soldering strip being configured to electrically couple the conductive element to the conductive shaft of the electrosurgical device in order to provide the benefit of an electrical connection between the conductive element and the outer shaft as taught by Ebbutt et al. ([0109]; Fig. 8)
Concerning claim 3¸ Billings discloses the first face and the second face are flat (Fig. 2 side view shows flat faces).
Concerning claim 6¸ Billings discloses a distal end of the elongate non- conductive body (12) is curved (Fig. 1-3).
Concerning claim 7¸ Billings disclose the conductive element (14) is etched onto the elongate non-conductive body (12) (Col. 4, ll. 20-56).
Concerning claim 8¸ Billings discloses the elongate non-conductive body defines a perimeter (16) and wherein the conductive element is disposed around a portion of the perimeter (Col. 4, ll. 20-56; Fig. 1-3).
Claim(s) 2, 9 & 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Billings (6,126,656) in view of Ebbutt et al. (2016/0324576), as applied to claim 1, in further view of Goble et al. (2006/0047280, previously cited).
Concerning claim 2¸ Billings in view of Ebbutt et al. fail to specifically disclose the edge is a chamfered edge. However, Goble et al. disclose a cutting element (1) for an electrosurgical device (12), comprising: elongate non-conductive bodies (4, 41) joining to define chamfered edges (51, 52). At the time the invention was effectively filed, it would have been obvious to one of ordinary skill in the art to modify the invention of Billings in view of Ebbutt et al. such that the edge is a chamfered edge in order to provide the benefit of an overall slim profile of the blade as taught by Goble et al. ([0039], [0053]; Fig. 11).
Concerning claim 9¸ as illustrated in at least Figs. 1-8, Billings et al. disclose a cutting element for an electrosurgical device (cutting device 10 has a cutting element; Col. 4, ll. 20-56), comprising:
an elongate non-conductive body having a first face opposite a second face and defining a major longitudinal axis, the first face and the second face joining to define an edge (support member 12 composed of a strong, non-conductive material has a first face opposite a second face that are joined by peripheral edge 16; Col. 4, ll. 20-56);
a conductive element disposed only along the edge configured to cut tissue with monopolar radiofrequency energy (conducting wire is a wire electrode disposed only along the peripheral edge 16 of support member 12; Col. 4-5, ll. 20-19).
While Billings discloses a “means for conducting electrical energy from an electrosurgical generator 22 to the conducting member 14” in the embodiment of Fig. 8 (Col. 6, ll. 3-12), Billings fails to disclose a conductive shaft, wherein the elongate non-conductive body includes a soldering strip disposed only on the first face and the double chamfered edge, the soldering strip spanning an entire width of a proximal portion of the elongate non-conductive body transverse to the major longitudinal axis, the soldering strip being configured to electrically couple the conductive element to the conductive shaft of the electrosurgical device. However, Ebbutt et al. disclose a cutting element (214) for an electrosurgical device comprising an elongate non-conductive body (planar piece of dielectric material) having two faces, a conductive element (conductive layer) disposed on the non-conductive body, and a soldering strip (230) disposed only on a first face (bottom) and the edge, the soldering strip spanning an entire width of a proximal portion of the elongate non-conductive body transverse to the major longitudinal axis, the soldering strip (230) being configured to electrically couple the conductive element (conductive layer) to a conductive shaft (226) of the electrosurgical device. At the time the invention was effectively filed, it would have been obvious to one of ordinary skill in the art to modify the invention of Billings fail such that the elongate non-conductive body includes a soldering strip disposed only on the first face and the double chamfered edge, the soldering strip spanning an entire width of a proximal portion of the elongate non-conductive body transverse to the major longitudinal axis, the soldering strip being configured to electrically couple the conductive element to the conductive shaft of the electrosurgical device in order to provide the benefit of an electrical connection between the conductive element and the outer shaft as taught by Ebbutt et al. ([0109]; Fig. 8)
Billings in view of Ebbutt et al. fail to disclose the edge to be a double chamfered edge. However, Goble et al. disclose a cutting element (1) for an electrosurgical device (12), comprising: elongate non-conductive bodies (4, 41) joining to define a doubled chamfered edge (51, 52) therebetween and a conductive element (2) configured to cut tissue with radiofrequency energy. At the time the invention was effectively filed, it would have been obvious to one of ordinary skill in the art to modify the invention of Billings in view of Ebbutt et al. such that the first and second face join to define a double chamfered edge therebetween in order to provide the benefit of an overall slim profile of the cutting element as taught by Goble et al. ([0039], [0053]; Fig. 11).
Claim 11 is rejected upon the same rationale as presented for claim 3.
Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Billings (6,126,656) in view of Ebbutt et al. (2016/0324576), as applied to claim 1, in further view of Podhajsky et al. (2013/0177695, previously cited).
Concerning claim 4¸ Billings in view of Ebbutt et al. fails to disclose the conductive element is composed of one from the group consisting of silver alloy and gold alloy printed on the edge. However, Podhajsky et al. disclose a cutting element (120) comprising a conductive element (140, 150, 160) formed by deposition of silver ink, gold link, or other suitable material, where deposition of the ink allows the capability to deposit smooth consistent layers of material ([0055-0056]). At the time the invention was effectively filed, it would have been obvious to one of ordinary skill in the art to modify the invention of Billings in view of Ebbutt et al. such that the silver alloy and gold alloy is printed ink in order to provide the benefit of allowing the capability to deposit smooth consistent layers of material as taught by Podhajsky et al. ([0056]) and 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. See also Ballas Liquidating Co. v. Allied industries of Kansas, Inc. (DC Kans) 205 USPQ 331.
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Billings (6,126,656) in view of Ebbutt et al. (2016/0324576), as applied to claim 1, in further view of Morris (2011/0190766, previously cited).
Concerning claim 5¸ while Billings discloses the elongate non-conductive body (12) comprises a ceramic (Col. 4, ll. 20-56), Billings in view of Ebbutt et al. fail to disclose the elongate non-conductive body is composed of zirconium toughened alumina (ZTA). However, Morris et al. disclose an element (1) for an electrosurgical device comprising a non- conductive body (9) and a conductive element (2), the non-conductive body (9) being composed of alumina toughened with zirconia. At the time the invention was effectively filed, it would have been obvious to one of ordinary skill in the art to modify the invention of Billings in view of Ebbutt et al. such that the elongate non-conductive body is composed of zirconium toughened alumina in order to provide the benefit of a ceramic insulating material that can withstand very high temperatures as taught by Morris ([0002], [0005], [0026]; Fig. 3-4) and 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. See also Ballas Liquidating Co. V. Allied industries of Kansas, Inc. (DC Kans) 205 USPQ 331.
Claim(s) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Billings (6,126,656) in view of Ebbutt et al. (2016/0324576) and Goble et al. (2006/0047280, previously cited), as applied to claim 9, in further view of Podhajsky et al. (2013/0177695).
Claim 10 is rejected upon the same rationale as applied to claim 4.
Claim(s) 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Billings (6,126,656) in view of Ebbutt et al. (2016/0324576) and Goble et al. (2006/0047280, previously cited), as applied to claim 9, in further view of Morris (2011/0190766, previously cited).
Claim 12 is rejected upon the same rationale as applied to claim 5.
Claim(s) 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Billings (6,126,656) in view of Ebbutt et al. (2016/0324576) and Goble et al. (2006/0047280, previously cited), as applied to claim 9, in further view of Sylvester et al. (2016/0120592).
Concerning claim 13, Billings in view of Ebbutt et al. and Goble et al. fail to disclose the conductive shaft is composed of stainless steel. However, Sylvester et al. disclose a cutting element (24) electrically connecting to a conductive shaft (12 and/or 54), the conductive shaft composed of stainless steel that is a metal or metal alloy that is substantially rigid in construction ([0021], [0023], [0029]). At the time the invention was effectively filed, it would have been obvious to one of ordinary skill in the art to modify the invention of Billings in view of Ebbutt et al. and Goble et al. such that the conductive shaft is composed of stainless steel in order to provide the benefit of a material that is substantially rigid in construction as taught by Sylvester et al. and 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. See also Ballas Liquidating Co. V. Allied industries of Kansas, Inc. (DC Kans) 205 USPQ 331.
Claim(s) 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Billings (6,126,656) in view Sylvester et al. (2016/0120592) and Ebbutt et al. (2016/0324576).
Concerning claim 14¸ as illustrated in at least Figs. 1-8, Billings et al. disclose a an electrosurgical device (cutting device 10; Col. 4, ll. 20-56), comprising:
a handle (handle 26; Col. 4, ll. 20-56);
a cutting element coupled to the distal end of the handle, the cutting element comprising an elongate non-conductive body having a first face opposite a second face and joining to define an edge (cutting device 10 has a distal end cutting element comprised of support member 12 composed of a strong, non-conductive material has a first face opposite a second face that are joined by peripheral edge 16; Col. 4, ll. 20-56);
a conductive element disposed only along the edge and configured to cut tissue with monopolar radiofrequency energy (conducting wire is a wire electrode disposed only along the peripheral edge 16 of support member 12 and may be used as the active outlet of a monopolar circuit; Col. 4-5, ll. 20-19).
Billings fails to disclose a conductive elongate shaft extending from the handle and defining a major longitudinal axis, the conductive elongate shaft defining a proximal end coupled to the handle and a distal end opposite the proximal end coupled to the cutting element. However, Sylvester et al. disclose an electrosurgical device (10) comprising a handle (22) and a conductive elongate shaft (12 and/or 54) extending from the handle (220) and defining a major longitudinal axis, the conductive elongate shaft (12 and/or 54) defining a proximal end coupled to the handle (24) and a distal end opposite the proximal end coupled to a cutting element (24). At the time the invention was effectively filed, it would have been obvious to one of ordinary skill in the art to modify the invention of Billings to further comprise disclose a conductive elongate shaft extending from the handle and defining a major longitudinal axis, the conductive elongate shaft defining a proximal end coupled to the handle and a distal end opposite the proximal end coupled to the cutting element in order to provide the benefit of a telescopic device with better reach and maneuverability as taught by Sylvester et al. ([0006], [0021-0022], [0029]; Fig. 1-2).
While Billings discloses a “means for conducting electrical energy from an electrosurgical generator 22 to the conducting member 14” in the embodiment of Fig. 8 (Col. 6, ll. 3-12), Billings in view of Sylvester et al. fail to disclose the elongate non-conductive body includes a soldering strip disposed only on the first face and the edge, the soldering strip spanning an entire width of a proximal portion of the elongate non-conductive body transverse to the major longitudinal axis, the soldering strip being configured to electrically couple the conductive element to the conductive shaft of the electrosurgical device. However, Ebbutt et al. disclose a cutting element (214) for an electrosurgical device comprising an elongate non-conductive body (planar piece of dielectric material) having two faces, a conductive element (conductive layer) disposed on the non-conductive body, and a soldering strip (230) disposed only on a first face (bottom) and the edge, the soldering strip spanning an entire width of a proximal portion of the elongate non-conductive body transverse to the major longitudinal axis, the soldering strip (230) being configured to electrically couple the conductive element (conductive layer) to a conductive shaft (226) of the electrosurgical device. At the time the invention was effectively filed, it would have been obvious to one of ordinary skill in the art to modify the invention of Billings in view of Sylvester et al. such that the elongate non-conductive body includes a soldering strip disposed only on the first face and the edge, the soldering strip spanning an entire width of a proximal portion of the elongate non-conductive body transverse to the major longitudinal axis, the soldering strip being configured to electrically couple the conductive element to the conductive shaft of the electrosurgical device in order to provide the benefit of an electrical connection between the conductive element and the outer shaft as taught by Ebbutt et al. ([0109]; Fig. 8)
Claim(s) 15-16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Billings (6,126,656) in view Sylvester et al. (2016/0120592) and Ebbutt et al. (2016/0324576), as applied to claim 14, in further view of and Goble et al. (2006/0047280, previously cited).
Claim 15 is rejected upon the same rationale as applied to claim 2.
Concerning claim 16, Billings in view of Sylvester et al., Ebbutt et al. and Goble et al. fail to disclose the thickness of the conductive element and the double chamfered edge is between 0.003” and 0.10”. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the invention of Billings in view of Sylvester et al., Ebbutt et al. and Goble et al. such that the thickness of the conductive element and the double chamfered edge is between 0.003” and 0.10” since it has been held that “where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device” Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 SPQ 232 (1984). In the instant case, the device of Billings in view of Sylvester et al., Ebbutt et al. and Goble et al. would not operate differently with the claimed thickness. Further, Applicant places no criticality on the range claimed, indicating simply that the thickness “may” be within the claimed range ([0037]).
Response to Arguments
Applicant’s arguments have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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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/JAYMI E DELLA/Primary Examiner, Art Unit 3794
JAYMI E. DELLA
Primary Examiner
Art Unit 3794
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