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 .
Applicant’s amendments and comments, received August 13, 2026, have been fully considered by the examiner. The following is a complete response to the August 13, 2026 communication.
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.
Claims 1, 2, 5-11 and 14-20 are rejected under 35 U.S.C.103 as being unpatentable over Heim et al (2016/0045247) in view of applicant’s disclosure (i.e. Figure 1) and further in view of Buysse et al (7,137,980).
Regarding claim 1, Heim et al provide an electrosurgical device configured to harvest RF energy, the device comprising a distal portion (17) including two electrodes (12,13) and a proximal portion (15) coupled to an electrical connector (e.g. 2 or 11) to provide RF treatment energy to the electrodes. The proximal portion includes an RF energy harvesting assembly (e.g. Figure 11) including a transformer (para. [0011], for example) configured to reduce the voltage, an AC-DC converter (or rectifier 19) and a DC-DC regulator (20) to provide a fixed voltage to one or more loads, which may include an illumination means (16) or other device. Paragraph [0013] discloses the rectifier/converter to convert the AC signal to a DC signal, and paragraph [0015] discloses the regulator that controls the voltage delivered to the load/illumination means. Paragraph [0011] further states that the power used for the illumination element is provided simultaneously with the necessary power for the surgical procedure. Heim et al fail to specifically disclose a varying treatment signal dependent on the type of tissue being contacted, or a continuous signal configured to detect activation of an operating button to signal activation of the device.
Figure 1 of applicant’s disclosure, labeled as “Prior Art”, provides the teaching that it is generally known in the art to provide a button on an electrosurgical device that receives a continuous signal (i.e. from pin 110) to detect the activation of an operating button to thereby close a switch (112) to deliver energy to the electrodes. The examiner maintains that it is generally well-known in the art to provide activation buttons to enable operation of electrosurgical devices, and Heim et al teach as much (para. [0091], as well as Figure 6, for example).
Regarding the varying treatment signal, the examiner maintains that it is generally known in the art to provide impedance sensors on electrosurgical devices to detect tissue impedance and control the level of energy accordingly. Different tissue types inherently have different impedances, and controlling the delivery of energy based on impedance levels would cause a varying signal dependent on the type of tissue contacted. To that end, Buysse et al disclose another RF system that delivers energy to either cut or coagulate tissue and varies the energy level based on sensed tissue impedance. See, for example, column 2, lines 41-51, column 3, lines 19-30 and column 4, lines 1-15. Column 4, lines 55-65 specifically discusses controlling the energy based on the type of energy being treated.
To have provided the Heim et al device with a means to provide a continuous signal to the handpiece to detect the activation of an energy button to enable operation of the device would have been an obvious consideration for one of ordinary skill in the art at the time of the invention given applicant’s disclosure of Figure 1, which is admitted prior art. Such a continuous signal and button activation detection would also enable the delivery of current to the harvesting assembly to allow for activation of the electrodes on the device as well as the activation of the additional load (i.e. illumination means). To have further provided the Heim et al system with means to vary the treatment signal based on the type of tissue being treated would have been an obvious consideration for one of ordinary skill in the art at the time of the inventions since Buysse et al fairly teach it is known to control energy delivery to an RF device dependent on the type of tissue being treated and the measured impedance.
Regarding claim 2, see paragraph [0014] which discloses the illumination means as LED’s. Regarding claim 5, the AC-DC converter (i.e. rectifier) may include a diode-capacitor circuit (para. [0013] and Figure 12). Regarding claims 6 and 7, Heim et al disclose a similar range of frequencies at paragraph [0083], and the frequency range for the continuous signal is deemed to be within well-known ranges. Regarding claim 8, see paragraph [0109] which discloses a similar range for the reduction in power to be harvested for the load. Regarding claim 9, Heim et al provide switches to provide RF energy to the device (Figure 6 and para. [0120]).
Regarding claim 10, Heim disclose a method for powering a load (i.e. illumination means) comprising providing an RF signal to an electrosurgical device, and within the electrosurgical device, isolating and reducing the RF signal to a range acceptable for DC circuits, converting the signal to a DC signal and regulating the DC signal to a fixed voltage to power the illumination means (para. [0012-00115], for example). As addressed previously, providing the Heim et al device with a continuous signal for detecting the activation of an operating button to supply power to the instrument would have been an obvious consideration for the skilled artisan for the reasoning articulated above. Also, Buysse et al providing the teaching of varying the RF energy delivered based on the type of tissue being treated and the measured impedance as addressed previously.
Regarding claim 11, see discussion of claim 2 above. Regarding claims 14 and 15, see discussion of claims 6 and 7 above. Regarding claim 16, see discussion of claim 5 and paragraph [0013]. Regarding claim 17, see paragraph [0011], for example. Regarding claim 18, the examiner maintains the fixed voltage would inherently be derived based on the acceptable tolerance of the device being powered (i.e. illumination means). Regarding claim 19, see again paragraph [0109].
Regarding claim 20, see above discussion regarding claim 1 which addresses most of the limitations, as well as the figures which disclose a three-pin connector for connecting the device to a generator (e.g. Figures 1 and 3, for example). As addressed previously, providing the Heim et al device with a continuous signal for detecting the activation of an operating button to supply power to the instrument would have been an obvious consideration for the skilled artisan for the reasoning articulated above. It is noted that the prior art admission of applicant’s Figure 1 includes a 3 pin connector, with one pin used for the continuous signal as is known in the art.
Claims 3, 4, 12 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Heim et al (‘247) in view of applicant’s disclosure and further in view of the teachings of Buysse et al (7,137,980) and Yates et al (9,795,436).
Heim et al, in view of applicant’s disclosure, teaches the harvesting circuit for powering various different devices, including illumination means (e.g. LED’s) and other systems requiring power (para. [0008], for example) as well as a continuous signal to detect activation of an operating button, but fail to expressly disclose powering a memory device for identifying information regarding the electrosurgical device. As addressed previously, Buysse et al teach that it is known to vary the treatment signal to tissue based on the type of tissue being treated and the measured impedance.
The examiner maintains that it is generally known in the art to use various forms of memory devices (e.g. ROM, EPROM) to store information regarding the parameters of the device, including model, number of uses, acceptable parameters, etc. Yates et al disclose another electrosurgical device and specifically teach the device may have means to store information regarding the device (col. 11, line 27 to col. 12, line 52, for example).
To have provided the Heim et al device, as modified by the teachings of Buysse et al and applicant’s disclosure, with a memory element on the device to identify various parameters related to the device would have been an obvious modification for one of ordinary skill in the art at the time of the invention since Yates et al teach it is fairly known to use such memory devices to identify characteristics of an electrosurgical instrument. To have powered such a memory device with the energy harvesting circuit of Heim et al would have been further obvious since Heim et al teach the energy harvesting circuit may be used to power various different elements that require relatively little power.
Response to Arguments
Applicant's arguments filed August 13, 2026 have been fully considered but they are not persuasive.
The examiner maintains that Heim et al clearly disclose a system that harvests power for an illumination source without affecting the delivery of a treatment signal to treat tissue. As addressed above, paragraph [0011] of Heim et al clearly states that the power delivered to the illumination element is simultaneous with the necessary power delivered to treat tissue. Heim et al provide a series of electrical components to control the power being delivered to treat tissue, as well as to control the power delivered to power the illumination element. The examiner is assuming that the newly added limitation “without affecting delivery of the treatment signal” is not implying that the harvested energy is coming directly from the treatment signal, as this would be impossible according to the first law of thermodynamics. Heim et al provide a signal to the device, harvest some of the energy for an illumination element and rectify the remaining signal to provide the power needed to perform the surgical procedure. Hence, the necessary power for the surgical procedure is provided even as the harvested energy is used to run the illumination element. Heim et al provide various circuitry components to ensure both the illumination element and the treatment electrode gets the appropriate amount of power. As such, the examiner maintains that Heim et al fairly teach the newly added limitations to the independent claims.
Conclusion
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 MICHAEL PEFFLEY whose telephone number is (571)272-4770. The examiner can normally be reached Mon-Fri 8 am-5 pm.
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/MICHAEL F PEFFLEY/Primary Examiner, Art Unit 3794
/M.F.P/ September 4, 2026
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