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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on March 19, 2026 has been entered. Accordingly, the status of the claims is as follows: claims 1, 6, 8, 9 and 11 are amended; claims 2-4, 7, 10 and 12-13 remain as previously presented; claim 5 is canceled; claims 14-16 are newly added.
Previously Set Forth Objections and Rejections
The status of the objections and rejections set forth in the previous final Office action (mailed December 19, 2025) is as follows:
The objection to the drawings under 37 CFR 1.83(a) has been overcome by amendments to the specification.
The objection to claim 11 has been overcome by amendments to claim 11.
The 35 USC 112(a) rejection of claims 1-4 and 6-13 has been overcome by amendments to the specification.
The 35 USC 112(b) rejection of claims 6 and 7 has been overcome by amendments to claim 6.
The 35 USC 102(a)(2) rejection of claims 1, 3, 4 and 6-8 as being anticipated by Ward (U.S. Patent Application Publication No. 2019/0021786) is hereby maintained and is additionally applied to claims 14-16 below.
The 35 USC 103 rejection of claims 2 and 9-13 as being unpatentable over Ward (U.S. Patent Application Publication No. 2019/0021786) is hereby maintained.
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, 6-8 and 14-16 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 a cutting electrode 302 that is a single, continuous wire (see Figs. 4A-4C). Figure 4C shows that, as broadly as claimed, cutting electrode 302 has a first proximal portion 302a having a first proximal end and a second proximal portion 302b having a second proximal end where each proximal end is coupled to a respective return electrode 304a, 304b. Figure 4C also shows that the cutting electrode 302 has a first distal portion and a second distal portion that are integrally connected to the first proximal portion 302a by a first bend and to the second proximal portion 302b by a second bend. Figure 4C also shows a manipulation portion that integrally connected the first distal portion and the second distal portion. Figure 4C also shows that first proximal portion 302a is linear and parallel to second proximal portion 302b and the first distal portion is linear and parallel to the second distal portion. Figure 4C also shows that the entirety of the cutting electrode 302 is exposed. In regard to claim 3, Ward teaches that the cross-section diameter of the wire that forms the cutting electrode may range from about 0.25 mm to about 4 mm (see para. 0010). In regard to claim 4, Figures 4A and 4C shows that the angle between the first and second distal portions and the first and second proximal portions 302a, 302b is between 35 and 120 degrees. In regard to claim 6, Figures 4A and 4C show that the manipulation portion of cutting electrode 302 is configured to contact tissue (as it is used with a resectoscope 20). In regard to claims 8 and 14-16, Ward also teaches that the cutting electrode may include a diameter that ranges from about 3 mm to about 10 mm (see para. 0010). Ward also teaches that the cutting electrode 302 may have different geometries including a roller cylinder (see para. 0035). In regard to claim 7, Figures 4A and 4C show 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 filed March 19, 2026 have been fully considered but they are not persuasive.
Applicant argues that Ward fails to disclose an electrode comprising a single, continuous an electrically conductive wire and in all embodiments taught by Ward, the electrode structure is comprised of separate components that are not continuous nor even necessarily of the same material (see pages 9-10 of the RCE filed March 19, 2026). Applicant argues that Ward teaches away from the use of a single, continuous and electrically conductive wire as the use of separate components is used to increase the electrical performance of the electrode and due to the differing components, it is not a cost effective product (see page 10 of the RCE filed March 19, 2026). Applicant finally argues that to suggest that a skilled person would arrive at a single, continuous and electrically conductive wire based on the disclosure of Ward is based on impermissible hindsight (see page 10 of the RCE filed March 19, 2026).
The examiner disagrees with applicant’s interpretation of Ward. While some embodiment of Ward do teach the use of separate components (e.g., the electrode assembly 100 shown in Fig. 2), it is clear from Figures 4A-4C and paras. 0042-0045 of Ward that the electrode 300 is a single, continuous and electrically conductive wire. There is nothing, either in the Figures or the specification, to indicate that cutting electrode 302 is formed of separate components. This is unlike the embodiment of electrode assembly 100 or electrode assembly 200, which are clearly shown and described as having separate components (see, e.g., Fig. 2 and paras. 0034-0035 and Fig. 3A and paras. 0039-0040). Thus, applicant’s conclusion that all embodiments of Ward are comprised of separate components is misplaced. Finally, applicant’s argument regarding hindsight is similarly misplaced as Ward clearly teaches a single, continuous and electrically conductive wire for electrode 302.
Conclusion
All claims are identical to or patentably indistinct from, or have unity of invention with claims in the application prior to the entry of the submission under 37 CFR 1.114 (that is, restriction (including a lack of unity of invention) would not be proper) and all claims could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to entry under 37 CFR 1.114. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the filing of a request for continued examination and the submission under 37 CFR 1.114. See MPEP § 706.07(b). 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.
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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/BEVERLY M FLANAGAN/Primary Examiner, Art Unit 3794
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