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 January 12, 2026, have been fully considered by the examiner. The following is a complete response to the January 12, 2026 communication.
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.
Claims 1-3 and 5-14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Woloszko et al (6,589,237).
Regarding claim 1, Woloszko et al provide a flexible hose (Figures 1 and 8) for a surgical probe comprising an electrode (512) and an electrically conductive end piece at a distal end of the hose (shown in cross-section in Figure 9). The end piece has a cutting electrode (540) that intersects a longitudinal section of the hose (Figure 9) and an insulator (612) partially covering the cutting electrode (i.e. the insulator covers the electrode legs) such that there are 2 strip-shaped electrode surfaces (Figure 9).
Regarding claim 2, the cutting electrode is metal (col. 17, lines 25-40, for example). Regarding claim 3, the cutting electrode forms a junction (see Figure 9) and the electrode has 4 different legs. Regarding claim 5, the electrode has 4 vanes (i.e. legs). Regarding claim 6, see Figure 9 with the 4 legs extending from the longitudinal center axis. Regarding claim 7, the end piece consists of an insulator (612) and a metal body (500). Regarding claim 9, there are leads that extend through a lumen in the body and connect to the electrodes at the end piece (Figure 3 and Figure 10, for example). Regarding claim 10, the end piece is inherently configured to be connectable to a cutting current source. Regarding claim 11, the electrode (512) is arranged on the hose and serves as a return electrode. Regarding claims 12 and 13, the electrode (512) is again a return electrode which is connected to the energy source and receives current from the cutting electrode (as the ground electrode).
Regarding claim 14, Woloszko et al disclose a method for using a probe comprising the probe of claim 1 as addressed previously. The probe may be used to cut tumor tissue (col. 12, lines 55-57 and col. 22, lines 55-57 and col. 38, lines 5-10, for example).
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 4 is rejected under 35 U.S.C. 103 as being unpatentable over Woloszko et al 6,589,237).
The embodiment of Figure 9 shows an electrode with two crossing members having a flattened shape, and not a shape recited in claim 4. However, Figure 56A of Woloszko et al shows that similar wire electrodes may extend from the body in a curved fashion. Providing such a curved shape to the electrodes of Figure 9 would result in a distal electrode surface having an ellipsoid or ball shape.
To have provided the Woloszko et al electrodes of Figure 9 with a curved shape as seen in Figure 56A would have been an obvious design consideration for one of ordinary skill in the art at the time of the invention since the two embodiments are substantially similar having wire electrodes extending across an opening of the hose/shaft for treating tissue.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-14 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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/March 26, 2026
Prosecution Insights