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 .
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.
Election/Restrictions
Applicant's election with traverse of the Restriction Requirement dated 29 December 2025 in the reply filed on 26 February 2026 is acknowledged. The traversal is on the ground(s) that search and examination of the entire application could be made without serious burden. This is not found persuasive because the inventions have acquired a separate status in the art in view of their different classification as indicated in the Restriction Requirement which when searched individually would not sufficiently encompass a proper search for all of the additional inventions. The inventions require a different field of search such as search queries specifically looking for insulative inserts that would not necessarily cover the required areas for searching the method of making steps or the electrode carrier specifically. Therefore, for at least the above reasons, search and examination of the entire application would pose a serious burden on the Office.
The requirement is still deemed proper and is therefore made FINAL.
Claim Objections
Claim 1 is objected to because of the following informalities: “Insulation insert” in line 1 should be amended to --An insulation insert--. Appropriate correction is required.
Claims 2-4 is objected to because of the following informalities: “Insulation insert” in line 1 should be amended to --The insulation insert--. Appropriate correction is required.
Claim 20 is objected to because of the following informalities: “Electrosurgical handheld instrument” in line 1 should be amended to --An electrosurgical handheld instrument--. Appropriate correction is required.
Claim Rejections - 35 USC § 112
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 1-4 and 20 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 1 recites the limitation "the tube-like insulation insert" in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claims 2-4 and 20 are rejected by virtue of their dependency on an indefinite base claim.
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.
Claims 1, 3-4 and 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Brockmann (DE 102020118965), all citations being made to English equivalent document US 2022/0015822 as a translation.
Regarding claim 1, Brockmann discloses an insulation insert for an electrosurgical handheld device (see Figs. 1-7), the tube-like insulation insert being detachably couplable by way of a proximal end region to a distal end of a tube-like shaft of the handheld device (see [0036]) and having a central passage for accommodating a shaft (see central passage in the center insulation insert 23, Fig. 7), wherein two drilled holes for accommodating a respective electrode carrier tube of an electrode carrier are arranged opposite one another in a wall of the insulation insert and parallel to the central passage (see bore holes 35 configured for accommodating the shaft of the electrode instrument arranged opposite one another on a wall of the insulation insert and parallel to the central passage, bored holes are considered equivalent to drilled holes since boring is a form of drilling; [0033], Fig. 7).
Regarding claim 3, Brockmann further discloses wherein the two drilled holes are displaced upwardly or downwardly vis-à-vis a central longitudinal axis by the insulation insert (see bore holes 35 being displaced upwardly and downwardly relative to the central longitudinal axis of the insulation insert when rotating the view from Figure 7 90-degrees).
Regarding claim 4, Brockmann further discloses wherein the wall of the insulation insert is strengthened around the two drilled holes and otherwise reduced in terms of its wall strength (see thickened walls around the holes 35 relative to the thickness of the wall of the insulation insert as shown in Fig. 7 which strengthens them via the additional material).
Regarding claim 20, Brockmann discloses an electrosurgical handheld instrument (see Fig. 1), having a main body (see handle 18, Fig. 1) and at least one tube-like shaft connected to the main body (see inner shaft 13; [0020], Fig. 1), with an insulation insert according to Claim 1 (see rejection of claim 1 above) being couplable to a distal end of the shaft (as shown in Fig. 2) and an electrode carrier extending through the shaft and through the insulation insert (see electrode instrument 14; [0028], Fig. 2), the said electrode carrier being fastened to the main body with a proximal end (see [0032], Fig. 2) and an electrode being arrangeable at the distal end thereof (see electrode 16 arranged at a distal end of the electrode instrument 14, Fig. 2).
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 2 is rejected under 35 U.S.C. 103 as being unpatentable over Brockmann.
Regarding claim 2, Brockmann discloses the limitations of claim 1, however Brockmann fails to further disclose wherein the two drilled holes have an oval cross section, with a height of the oval cross section being greater than a width of the oval cross section. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have made the cross section of the drilled holes into an oval cross section, with a height of the oval cross section being greater than a width of the oval cross section in order to accommodate differently shaped electrode devices. Additionally, a change in form or shape is generally recognized as being within the level of ordinary skill in the art, absent any showing of unexpected results. In re Dailey et al., 149 USPQ 47. See MPEP 2144(IV)(B). In the instant case, there is nothing of record to show unexpected results that are produced from an oval shaped cross section in place of a circular cross section for the drilled holes.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SEAN W COLLINS whose telephone number is (408)918-7607. The examiner can normally be reached M-F 9:00 AM-5:00 PM ET.
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/SEAN W COLLINS/Primary Examiner, Art Unit 3794