DETAILED ACTION
The following is a First Action, Non-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.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 120 & 119(e) as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed application, Application Nos. 15/841790 & 62/434753 provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application.
Accordingly, the claims are given the priority benefit date of 12/15/2016.
Specification
The disclosure is objected to because of the following informalities: amend Par. [0001] to include patent information for 15/841790. Appropriate correction is required.
The disclosure is objected to because of the following informalities: amend “may be define a thickness of 0.006” to -may define a thickness of 0.006” in Par. [0037]. Appropriate correction is required.
Claim Objections
Claim 4 is objected to because of the following informalities: amend “is composed of one from” to -is selected from- in ll. 1-2. Appropriate correction is required.
Claim 9 is objected to because of the following informalities: amend “:” to “;” in ll. 5. Appropriate correction is required.
Claim 10 is objected to because of the following informalities: amend “is one from” to -is selected from- in ll. 1. 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 § 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 15-16 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 15 recites the limitation “wherein the edge is a double chamfered edge and the double chamfered edge has a thickness of 0.006”.” However, the specification states: “the edge 52 thickness, after etching on the conductive element 54 may be define a thickness of 0.006", with a range in other embodiments from 0.003" to 0.10"” ([0037]). Thus, there is support for the edge thickness to be 0.006” when it is the edge and the conductive element, not just the edge alone.
Claim 16 depends from claim 15 and is thus also rejected.
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 16 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 16 recites the limitation “wherein the thickness of the conductive element and the double chamfered edge is between 0.003” and 0.10”; however, claim 15, upon which claim 16 depends, recites the limitation “wherein the edge is double chamfered edge and the double chamfered edge has a thickness of 0.006”. It is unclear how the thickness of both the conductive element and the double chamfered edge can have a range (0.003”-0.006”) of less than or equal to 0.006”, the thickness of edge itself. For purposes of examination, the claim will be examined as depending from claim 1.
Claim Rejections - 35 USC § 102
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.
(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.
Claim(s) 1, 3-4 & 6-8 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Cosmescu (2018/0071011).
Concerning claim 1¸as illustrated in Figs. 1-6, Cosmescu disclose a cutting element for an electrosurgical device (electrosurgery blade 10; [0027]), comprising:
a conductive shaft (conductive shaft 36; [0027]);
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 (non-conductive planar member 12 having opposite planar sides 14, 16 that join to define various edges (top, bottom, rear, cutting edge); [0027-0028]):
a conductive element configured to cut tissue with monopolar radiofrequency energy (generally triangular shaped closed loop portion 32 of conductive layer 30 is capable of receiving monopolar energy and cutting tissue; [0027]); and
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 (rectangular shaped portion 34 of conductive layer 30 is disposed only on planar side 14 and spans the width of flat back edge 26 at the proximal end of blade 10 and is capable of electrically coupling the closed loop portion 32 to conductive shaft 36; [0027-0028]).
Concerning claim 3¸ Cosmescu discloses the first face (14) and the second face are flat (16) ([0027]; Fig. 4).
Concerning claim 4¸ Cosmescu discloses the conductive element (32) is composed of one from the group consisting of silver alloy and gold alloy ([0011]).
Concerning claim 6¸ Cosmescu discloses a distal end of the elongate non- conductive body (14) is curved (Fig. 4).
Concerning claim 7¸ Cosmescu disclose the conductive element (32) is disposed onto the elongate non-conductive body (14) ([0027-0028]; Fig. 14).
Concerning claim 8¸ Cosmescu discloses the elongate non-conductive body defines a perimeter (14) and wherein the conductive element is disposed around a portion of the perimeter (Fig. 4).
The Examiner notes the claim fails to recite the conductive element disposed around a specific amount of the perimeter.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 2, 9, 11 & 13-16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cosmescu (2018/0071011), as applied to claim 1, in further view of Goble et al. (2006/0047280).
Concerning claim 2¸ Cosmescu 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 Cosmescu 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 Figs. 1-6, Cosmescu disclose a cutting element for an electrosurgical device (electrosurgery blade 10; [0027]), comprising:
a conductive shaft (conductive shaft 36; [0027]);
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 (non-conductive planar member 12 having opposite planar sides 14, 16 that join to define various edges (top, bottom, rear, cutting edge); [0027-0028]):
a conductive element configured to cut tissue with monopolar radiofrequency energy (generally triangular shaped closed loop portion 32 of conductive layer 30 is capable of receiving monopolar energy and cutting tissue; [0027]); and
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 and 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 (rectangular shaped portion 34 of conductive layer 30 is disposed only on planar side 14 and spans the width of flat back edge 26 at the proximal end of blade 10 and is capable of electrically coupling the closed loop portion 32 to conductive shaft 36; [0027-0028]).
Cosmescu fails 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 Cosmescu 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). The modified invention of Cosmescu in view of Goble et al. teach the soldering strip to be located on the double chamfered edge.
Claim 11 is rejected upon the same rationale as presented for claim 3.
Concerning claim 13, Cosmescu fails to disclose the material of the conductive shaft, and specifically wherein the conductive shaft is composed of stainless steel. However, Cosmescu discloses example conductive materials for the conductive element and soldering strip can comprise one or more materials such as, for example, stainless steel, copper, silver, gold, and/or titanium. It would have been obvious to one having ordinary skill in the art at the time the invention the invention was effectively filed to modify the invention of Cosmescu such that the conductive shaft is composed of stainless steel, 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.
Concerning claim 14¸as illustrated in Figs. 1-6, Cosmescu disclose a an electrosurgical device (electrosurgery handpiece/pencil; [0009]), comprising:
a handle (handpiece; [0009];
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 (conductive shaft 36 is coupled to an electrosurgery handpiece/pencil; [0009], [0027]);
a cutting element coupled to the distal end of the conductive elongate shaft (monopolar electrosurgery blade 10; [0026],
a conductive element configured to cut tissue with monopolar radiofrequency energy (generally triangular shaped closed loop portion 32 of conductive layer 30 is capable of receiving monopolar energy and cutting tissue; [0027]); and
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 elongate shaft of the electrosurgical device (rectangular shaped portion 34 of conductive layer 30 is disposed only on planar side 14 and spans the width of flat back edge 26 at the proximal end of blade 10 and is capable of electrically coupling the closed loop portion 32 to conductive shaft 36; [0027-0028]).
Cosmescu fails 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 Cosmescu 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). The modified invention of Cosmescu in view of Goble et al. teach the soldering strip to be located on the double chamfered edge.
Concerning claim 15, Cosmescu fails 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 Cosmescu such that the edge is a double chamfered edge 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). Cosmescu in view of Goble et al. fail to disclose the double chamfered edge having a thickness of 0.006". It would have been obvious to one having ordinary skill in the art at the time the invention the invention was effectively filed to modify the invention of Cosmescu in view of Goble et al. such that the double chamfered edge has a thickness of 0.006" and is of whatever desired or expedient size, since such a modification would have involved a mere change in the size of a component. A change in size is generally recognized as being within the level of ordinary skill in the art. In re Rose, 105 USPQ 237 (CCPA 1955).
Concerning claim 16, Cosmescu fails 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 Cosmescu such that the edge is a double chamfered edge 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). Cosmescu in view of 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 Cosmescu in view of 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 Cosmescu in view of 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]).
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cosmescu (2018/0071011), as applied to claim 1, in further view of Morris (2011/0190766).
Concerning claim 5¸ while Cosmescu discloses the elongate non-conductive body (12) comprises a ceramic ([0011]), Cosmescu fails 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 Cosmescu 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 Cosmescu (2018/0071011) and Goble et al. (2006/0047280), as applied to claim 9, in further view of Podhajsky et al. (2013/0177695).
Concerning claim 10¸ Cosmescu discloses the conductive element (32) is composed of one from the group consisting of silver alloy and gold alloy on the edge ([0011]). Cosmescu in view of Goble et al. fail to disclose the silver alloy and gold alloy to be printed ink on the double chamfered 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 Cosmescu in view of Goble 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) 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cosmescu (2018/0071011) and Goble et al. (2006/0047280), as applied to claim 9, in further view of Morris (2011/0190766).
Claim 12 is rejected upon the same rationale as applied to claim 5.
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 1-16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of U.S. Patent No. 11,723,713. Although the claims at issue are not identical, they are not patentably distinct from each other because they both recite: a cutting element for an electrosurgical device (cutting element for an electrosurgical device), comprising: a conductive shaft (a conductive shaft); 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 (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); a conductive element configured to cut tissue with monopolar radiofrequency energy (a conductive element that does not protrude from the edge and defines a flat and co-planar surface with the edge, the conductive element being disposed only along the edge, only along a midpoint of a width of the elongate non-conductive body, and only along the rounded portion of the distal end of the elongate non-conductive body, the conductive element being configured to cut tissue with monopolar radiofrequency energy); and 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 (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); a cutting element for an electrosurgical device (cutting element for an electrosurgical device), comprising: a conductive shaft (a conductive shaft); 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 a double chamfered edge (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 a double chamfered edge); a conductive element configured to cut tissue with monopolar radiofrequency energy (a conductive element that does not protrude from the double chamfered edge and defines a flat and co-planar surface with the double chamfered edge, the double chamfered edge being disposed only along a midpoint of a width of the elongate non-conductive body, the conductive element being disposed only along the double chamfered edge, only along a midpoint of the width of the elongate non-conductive body, and only along the rounded portion of the distal end of the elongate non-conductive body; the conductive element being configured to cut tissue with monopolar radiofrequency energy); and 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 and 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 (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 and 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); and an electrosurgical device (electrosurgical device), comprising: a handle (a handle); 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 (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); a cutting element coupled to the distal end of the conductive elongate shaft (a cutting element coupled to the distal end of the conductive elongate shaft); a conductive element configured to cut tissue with monopolar radiofrequency energy (a conductive element that does not protrude from the double chamfered edge and defines a flat and co-planar surface with the double chamfered edge, the double chamfered edge being disposed only along a midpoint of a width of the elongate non-conductive body, the conductive element being disposed only along the double chamfered edge only along a midpoint of the width of the elongate non-conductive body and only along the arcuate distal end of the elongate non-conductive body, the conductive element being configured to cut tissue with monopolar radiofrequency energy); and 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 elongate shaft of the electrosurgical device (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 elongate shaft of the electrosurgical device). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the patent anticipate the claims of the application. Accordingly, the application claims are not patentably distinct from the patent claims. Here, the more specific patent claims encompass the broader application claims. Following the rationale in In re Goodman cited in the preceding paragraph, where applicant has once been granted a patent containing a claim for the specific narrow invention, applicant may not obtain a second patent with a claim for the generic or broader invention without first submitting an appropriate terminal disclaimer.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: Cosmescu (2018/0092684, with support in provisional application nos. 62/362873 & 62/362968 both filed on 7/15/2016) teach a blade having a conductive element (220 or 222) and a soldering strip (222 or 220) configured to electrically coupled the conductive element to a conductive shaft (140, or 142), but fail to specifically disclose the strip “disposed only the first face and the edge” as the electrodes (220, 222) wrap around on each opposing face. Ellman et al. (2004/0049183) teach a cutting element comprising a conductive shaft (34) welded on an edge (62) to a shank (58) of a metal body (48) (Fig. 7).
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/JAYMI E DELLA/Primary Examiner, Art Unit 3794
JAYMI E. DELLA
Primary Examiner
Art Unit 3794