DETAILED ACTION
Applicant's amendments and remarks, filed 9/8/26, are fully acknowledged by the Examiner. Currently, claims 1-17 are pending with claim 1 amended. The following is a complete response to the 9/8/26 communication.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 9/8/26 has been entered.
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.
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.
Claim(s) 1 and 16-17 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hancock (GB 2567480).
Regarding claim 1, Hancock teaches an electrosurgical resector tool comprising:
an energy conveying structure for carrying radiofrequency (RF) electromagnetic (EM) energy and microwave EM energy (col. 3, lines 11-20), the energy conveying structure comprising a coaxial transmission line having an inner conductor separated from an outer conductor by a dielectric material (col. 3 lines 11-20);
an instrument tip mounted at a distal end of the energy conveying structure (col. 3, lines 20-21), wherein the instrument tip comprises a first jaw and a second jaw (first and second blade elements as in col. 3, lines 21-24);
wherein the second jaw is movable relative to the first jaw between a closed position in which the first jaw and the second jaw lie alongside each other (col. 3 lines 21-29), and an open position in which the second jaw is spaced from the first jaw by a gap for receiving biological tissue (col. 3 lines 21-29);
wherein the first jaw comprises a first pair of electrodes that are electrically isolated from one another (col. 31, with 814 and 810 separated by dielectric 806), the first pair of electrodes comprising an inner electrode and an outer electrode (inner electrode 814 and outer electrode 810);
wherein the second jaw comprises a single electrode (812 on second jaw 808);
wherein the first pair of electrodes is coupled to the energy conveying structure (814 and 810 connected as in col. 31), such that the first pair of electrodes is operable as active and return electrodes for delivering RF EM energy carried by the energy conveying structure (col. 31 with 814 and 810 acting as either active);
wherein the single electrode is coupled to the energy conveying structure for delivering RF EM energy carried by the energy conveying structure (812 coupled to the energy conveying structure), such that the single electrode is operable as an active electrode when the inner electrode of the first jaw is operable as a return electrode, or is operable as a return electrode when the inner electrode of the first jaw is operable as an active electrode (col. 31);
wherein the instrument tip is operable as a microwave field emitting structure for emitting microwave EM energy carried by the energy conveying structure (col. 32, lines 1-12);
wherein the first jaw comprises a first shearing surface formed on an inner surface of the first jaw that faces towards the second jaw (first shearing surface of 808 facing the jaw with 804), the first shearing surface comprising an upper part adjacent a cutting edge of the first jaw (Fig. 9a-b with the surface of 804 having an upper part closer to the jaw gap in the open position), the cutting edge of the first jaw being at a cutting interface between the first jaw and the second jaw (interface between 808 and 804 cutting surfaces), wherein the first shearing surface further comprises a lower part disposed on an opposite side of the upper part from the cutting edge (lower part away from the jaw gap in the open position), wherein the inner electrode is present at the upper part and absent at the lower part (814 at an upper part but absent at a lower part as in Fig. 9a with portions of 806), wherein the second jaw comprises a second shearing surface formed on an inner surface of the second jaw that faces towards the first jaw (Fig. 9a-b with 808 with a second surface for cutting on the opposing side), and
wherein the first shearing surface and the second shearing surface are arranged to slide past one another when the first jaw and the second jaw are moved between the open position and closed position for providing a scissor-type cut performed on tissue grasped between the first jaw and the second jaw using a combination of RF EM energy and applied pressure shearing force (col. 2, lines 35-41 with RF and applied pressure to cut).
Regarding claim 16, Hancock teaches wherein the first pair of electrodes and the single electrode are operable together as a microwave field emitting structure for emitting microwave EM energy carried by the energy conveying structure (col. 32 microwave with the electrodes 812 and 810, 814).
Regarding claim 17, Hancock teaches an electrosurgical apparatus comprising:
an electrosurgical generator for supplying radiofrequency (RF) electromagnetic (EM) energy and microwave EM energy (col. 9, lines 28-38 electrosurgical generator for RF and microwave);
a surgical scoping device having an instrument cord for insertion into a patient's body (col. 9, lines 29-38 scoping device), the instrument cord having an instrument channel extending therethrough (col. 9, lines 29-38); and
the electrosurgical resector tool according to claim 1 inserted through the instrument channel of the surgical scoping device (col. 9, lines 29-38 and claim 1 as above).
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.
Claim(s) 2-3, 6-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hancock.
Regarding claim 2, Hancock teaches wherein:
the first jaw comprises a first planar dielectric element having an inner surface that faces towards the second jaw and an outer surface that faces away from the second jaw (planar dielectric body 806), the inner electrode being arranged on the inner surface of the first planar dielectric element and the outer electrode being arranged on the outer surface of the first planar dielectric element (Fig. 9b with 810 outside relative to 806).Hancock is not explicit the second jaw comprises a second planar dielectric element having an inner surface that faces towards the first jaw and an outer surface that faces away from the first jaw, and the single electrode comprises either:
an inner electrode arranged on the inner surface of the second planar dielectric element, or an outer electrode arranged on the outer surface of the second planar dielectric element.Hancock is not explicit regarding the second jaw comprises a second planar dielectric element, but teaches the second jaw formed from an insulator coated material.Hancock does teach dielectric materials as electrical isolators (col. 3, lines 32-34).It would have been obvious to one of ordinary skill in the art that the non-electrode material of the second jaw of Hancock as a dielectric, as a material that would allow for electrical isolation. The electrode 812 on 808 would be on the inner surface as in Fig. 9a.
Regarding claim 3, Hancock is not explicit wherein:
the inner electrode of the first jaw comprises a first conductive layer formed on the inner surface of the first planar dielectric element; and
the single electrode of the second jaw comprises a second conductive layer formed on the inner surface of the second planar dielectric element.However, Hancock teaches that electrodes may have a conductive layer (col. 5, lines 17-27).It would have been obvious to one of ordinary skill in the art that the electrodes would have a conductive layer to help with conducting an electric signal, and that this would be formed on the inner surface of the dielectric elements of the combination.
Regarding claim 6, Hancock is not explicit wherein:
the first jaw further comprises a first conductive shell that is attached to the outer surface
of the first planar dielectric element, and arranged to form at least part of the outer electrode of the
first pair of electrodes.However, Hancock teaches that electrodes may have a conductive layer (col. 5, lines 17-27).It would have been obvious to one of ordinary skill in the art that the electrodes would have a conductive layer to help with conducting an electric signal, and that this would be formed on the inner surface of the dielectric elements of the combination.
Regarding claim 7, Hancock teaches wherein:
the second jaw further comprises a second conductive shell that is attached to the outer surface of the second planar dielectric element, and arranged to form at least part of the single electrode of the second jaw.However, Hancock teaches that electrodes may have a conductive layer (col. 5, lines 17-27).It would have been obvious to one of ordinary skill in the art that the electrodes would have a conductive layer to help with conducting an electric signal, and that this would be formed on the inner surface of the dielectric elements of the combination.
Claim(s) 8-13 and 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hancock in view of Hancock (US 2016/0331455), hereafter Hancock 2016.
Regarding claim 8, Hancock does not teach wherein the outer electrode of the first jaw and the single electrode of the second jaw are electrically coupled to one another.However, Hancock 2016 teaches in par. [0069] electrodes on opposing jaws of a device coupled to each other.It would have been obvious to one of ordinary skill in the art to modify Hancock with the electrodes of opposing jaws coupled to each other as in Hancock 2016 to allow for different electrode configurations such as Figs. 4a-d in Hancock 2016 for different treatments.
Regarding claim 9, Hancock teaches wherein the instrument tip further comprises a base structure that connects the outer electrode of the first jaw and the single electrode of the second jaw to the distal end of the energy conveying structure (col. 8, lines 1-15).
Regarding claim 10, Hancock teaches wherein the base structure includes a first base part that rigidly connects the outer electrode of the first jaw to the distal end of the energy conveying structure (static base 202), and a second base part to which the second jaw is pivotably connected (pivot base to which 212 is attached), such that the second jaw is pivotable relative to the second base part (212 pivots relative to arm 218).
Regarding claim 11, Hancock teaches wherein the base structure comprises an electrically conductive material that electrically connects the outer electrode of the first jaw or the single electrode of the second jaw to a first one of the inner conductor and the outer conductor at a distal end of the coaxial transmission line (col. 6 lines 3-6 conductor connecting the inner or outer conductor to the first or second electrode).
Regarding claim 12, Hancock teaches wherein the base structure defines a cavity in which the inner electrode of the first jaw is electrically connected to a second one of the inner conductor and the outer conductor at the distal end of the coaxial transmission line (cavity holding connector 627 of coaxial transmission line 626).
Regarding claim 13, Hancock teaches wherein the cavity contains a dielectric material (dielectric shield).
Regarding claim 15, Hancock teaches electrodes connected to the inner or outer conductor (col. 32), but not explicitly wherein the outer electrode of the first jaw and the single electrode of the second jaw are both electrically connected to a first one of the inner conductor and the outer conductor, and the inner electrode of the first jaw is electrically connected to a second one of the inner conductor and the outer conductor.However, Hancock 2016 teaches in par. [0069] electrodes on opposing jaws of a device coupled to each other.It would have been obvious to one of ordinary skill in the art to modify Hancock with the electrodes of opposing jaws coupled to each other as in Hancock 2016 to allow for different electrode configurations such as Figs. 4a-d in Hancock 2016 for different treatments.
Claim(s) 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hancock, in view of Hancock 2016, in view of Medina (US 2019/0245310).
Regarding claim 14, Hancock is silent wherein the base structure comprises an opening formed in a sidewall of the base structure for injecting a dielectric material into the cavity.However, Medina teaches a dielectric material injected into a chamber from an opening as a known method of manufacture (par. [0095]).It would have been obvious to one of ordinary skill in the art to modify Hancock with dielectric injected as in Medina, to allow for the construction of the device.
Response to Arguments
Applicant’s arguments, see the remarks, filed 9/8/26, with respect to the rejection(s) of claim(s) 1-17 under 35 USC 103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Hancock (GB 2567480).
Allowable Subject Matter
Claims 4-5 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claims 4 and 5 recite extra planar dielectric elements arranged on the first or second jaws. While previously cited Hancock (US 2018/0280084) teaches a dielectric substrate 215 and 220, one of ordinary skill in the art would not look to the dielectric elements of the differing jaw format of Hancock 2018 vs that of the primary reference Hancock. Examiner has not found any piece of art that discloses, fairly suggests, or makes obvious the arrangement.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BO OUYANG whose telephone number is (571)272-8831. The examiner can normally be reached M-F 8-5 EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joanne Rodden can be reached at 303-297-4276. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BO OUYANG/Examiner, Art Unit 3794
/MICHAEL F PEFFLEY/Primary Examiner, Art Unit 3794
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