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 and Amendment Filed
Applicant’s response and amendment, filed November 7, 2025, has been entered and made of record. Accordingly, the status of the claims is as follows: Claims 1-4 and 6-12 are amended; claim 5 is canceled; claim 13 is newly added.
Previously Set Forth Objections and Rejections
The objection to the drawings under 37 CFR 1.83(a), as set forth in the previous Office action, is hereby overcome by the cancellation of claim 5.
The objection to the specification as set forth in the previous Office action is hereby overcome by the filing of a substitute specification on November 7, 2025.
The 35 USC 112(b) rejection of claims 5 and 9-12 as set forth in the previous Office action is hereby overcome by the cancellation of claim 5 and amendments to claims 9-12.
The 35 USC 102(a)(2) rejection of claims 1 and 3-7 as being anticipated by Woloszko et al. (U.S. Patent Application Publication No. 2001/0025177) is hereby withdrawn.
The 35 USC 103 rejection of claims 2 and 9-12 as being unpatentable over Woloszko et al. (U.S. Patent Application Publication No. 2001/0025177) is hereby withdrawn.
The 35 USC 103 rejection of claim 8 as being unpatentable over Woloszko et al. (U.S. Patent Application Publication No. 2001/0025177) in view of Desai (U.S. Patent No. 5,976,129) is hereby withdrawn.
The following new objections and grounds of rejection are set forth:
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the following elements must be shown or the feature(s) canceled from the claim(s):
First proximal portion
First proximal end
Second proximal portion
Second proximal end
First distal portion
Second distal portion
Manipulation portion
No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Objections
Claim 11 is objected to because of the following informalities: Claim 11 appears grammatically incorrect as lines 5-6. The phrase “such and the first proximal portion and the second proximal portion” appears to be misplaced and/or left behind as the result of amending. 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 1-4 and 6-13 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.
Claims 1-4 and 6-12 recite the following elements that are not described in the specification:
First proximal portion
First proximal end
Second proximal portion
Second proximal end
First distal portion
Second distal portion
Manipulation portion
It is understood that applicant is essentially renaming the portions R1, R2, L1, L2 and C as described in the specification and shown in the drawings. However, this renaming causes a misalignment between the disclosure and the claims whereby the discussion of portions R1, R2, L1, L2 and C does not immediately translate to the claimed elements. To overcome this rejection, applicant should either revert the claims to reciting R1, R2, L1 and L2 or file a substitute specification and/or drawings that identifies what claimed elements align with the portions R1, R2, L1 and L2.
As claim 13 depends from claim 9, it is likewise 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.
Claims 6 and 7 are 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 6 recites collectively that the manipulation portion is curved, is linear or has a V-shape or a trapezoidal form. The curved and linear recitations are not alternative, so that the claim effectively recites that the manipulation portion is both curved and linear. For examination purposes, it was assumed that applicant intended the recitations of curved, linear, V-shape or trapezoidal to be alternative recitations. As claim 7 depends from claim 6, it is likewise rejected.
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)(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 and 6-8 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Ward (U.S. Patent Application Publication No. 2019/0021786).
In regard to claim 1, Ward teaches an electrode assembly 300 for use with a resectoscope 20 comprised of return electrodes 304a, 304b and a cutting electrode 302 (see Figs. 4A and 4B). Figure 4A shows that, as broadly as claimed, return electrodes 304a, 304b from sections 306, 308 to the bend constitute first and second proximal portions that are linear and parallel. Figure 4A also shows that, as broadly as claimed, the parallel sections of cutting electrode 302 that extend down from the return electrodes 304a, 304b constitute first and second distal portions that are linear and parallel. Ward does not teach any type of insulative coating on either return electrodes 304a, 304b or cutting electrode 302 and as such, the entirety of return electrodes 304a, 304b and cutting electrode 302 are exposed. In regard to claim 3, Ward teaches that the cross-section diameter of the wire may range from about 0.25 mm to about 4 mm (see para. 0010). In regard to claim 4, Figure 4A shows that the angle between the first and second distal portions and the first and second proximal portions is between 35 and 120 degrees. In regard to claim 6, Figure 4A shows that the manipulation portion of cutting electrode 302 is curved and provided between the first and second distal portions and is configured to contact tissue (as it is used with a resectoscope 20). Ward also teaches that the cutting electrode may include a diameter that ranges from about 3 mm to about 10 mm (see para. 0010). With further respect to claim 6 and in regard to claim 8, Ward also teaches that the cutting electrode 302 may have different geometries including a roller cylinder (see para. 0035). In regard to claim 7, Figure 4A shows that the first and second distal portions and the manipulation portion are located in a plane.
Claim Rejections - 35 USC § 103
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 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 and 9-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Ward (U.S. Patent Application Publication No. 2019/0021786).
In regard to claim 2, Ward is silent as to the lengths of the first and second distal portions. However, given that the electrode assembly 300 is used in a resectoscope 20, which requires a small size to be able to be inserted and utilized correctly within a urethra. Accordingly, it would have been obvious for one of ordinary skill in the art at the effective filing date of the invention to make the lengths of the first and second distal portions between 0.7 mm and 1.7 mm so that the electrode assembly 300 can be inserted into and utilized correctly within a urethra. In regard to claims 9-12, it would have been obvious for one of ordinary skill in the art at the effective filing date of the invention to form the device of Ward using known wire forming techniques (e.g., deforming and bending the wire) to shape the electrode assembly 300 into the shapes shown in Ward (see Figure 4A). In regard to claim 13, it would have been obvious for one of ordinary skill in the art at the effective filing date of the invention to utilize automated quality control testing when manufacturing the electrode assembly 300 as automated quality control testing is both commonplace and well known in the art.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-5 and 6-13 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.
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 BEVERLY MEINDL FLANAGAN whose telephone number is (571)272-4766. The examiner can normally be reached Mon-Fri 7:30AM to 5:00PM.
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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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/BEVERLY M FLANAGAN/Primary Examiner, Art Unit 3794