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 .
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).
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. Heim et al fail to specifically disclose 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 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). 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).
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 9, 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.
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 teaching of 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.
The examiner maintains that it is generally known in the art to use various forms of memory devices (e.g. ROM) 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 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 with respect to the pending claims have been considered but are moot because the new ground of rejection does not rely on the same prior art rejections made in the previous Office action. In particular, the examiner has now cited applicant’s own disclosure of the prior art teaching that it is known to provide a continuous signal to detect the activation of an operating button to provide power to an electrosurgical device. In as much as Heim et al provide buttons to activate the electrodes on the device, and thereby activate the energy harvesting assembly as well, the examiner maintains it would have been obvious to use a continuous signal to detect the activation of the operating buttons as applicant’s disclosure has admitted is prior art.
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.
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MICHAEL F PEFFLEY/Primary Examiner, Art Unit 3794
/M.F.P/ January 23, 2026