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 .
Claim Objections
Claim 16 is objected to because of the following informalities: claim 13 has been amended to include a portion of claim 16 and therefore needs to be amended to read “according to claim 15, the one or more channels being configured to receive the one or more electrical terminals therein and prevent fluid from passing therebetween”. Appropriate correction is required.
Claim Rejections - 35 USC § 102
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-4, 12, 19 and 20 are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Seebach et al (U.S. Patent 4,738,263).
Referring to claim 1, Seebach et al teaches an electrosurgical return electrode (Col. 1, lines 5-8) comprising: a conductive layer (22) configured to conduct electrical current (Col. 3, line 59 through Col. 4, line 1), the conductive layer (22) having one or more apertures (24/26) extending therethrough (Col. 3, lines 54-62; Figure 1); and a plug connected to the conductive layer (Figure 1), the plug comprising: a base (36) having an internal structural component (inside portion shown in Figure 3 and labeled in Figure below) and an outer layer (external portion of 36 that is not within the labeled internal structure below), the structural component (inside portion of 36) having one or more bosses (38) configured to extend through the one or more apertures in the conductive layer (Col. 4, lines 16-28; Figures 1 and 3), the outer layer comprising a socket (protrusion of 36 labeled below) and one or more channels (labeled in Figures below) leading to the socket (Col. 5, lines 3-20; Figures 1-3); and a cap (32) disposed adjacent to the conductive layer and opposite to the base (Figures 1 and 6), the cap and the base being laser welded together or the conductive layer, the base, and the cap being joined together via an adhesive (Col. 4, lines 29-50; Figures 1, 3 and 6). Furthermore, the recitation of being laser welded together and/or joined together via an adhesive is regarded as a product-by-process limitation. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. In re Thorpe, 777 F.2d 695, 698; 227 USPQ 964, 966 (Fed. Cir. 1985).
It is noted that Merriam Webster defines “socket” as an opening or hollow that forms a holder for something. Seebach’s labeled portion of 36 is an opening that forms a holder for the connector leads 12 and 14 as shown best in Figures 1 and 2.
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Referring to claim 2, Seebach et al teaches wherein each of the one or more bosses (38) comprise a recess (40) in an end thereof, and the cap comprises one or more posts (34) on an interior surface that configured to be received in the recesses of the one or more bosses (Col. 4, lines 16-50; Figures 1, 3 and 6).
Referring to claim 3, Seebach et al teaches wherein the one or more bosses (38) comprise a plurality of bosses with top ends that lie within a single common plane (Col. 3, line 54 through Col. 4, line 50; Figures 1, 3 and 6).
Referring to claim 4, Seebach et al teaches wherein the one or more posts (34) comprise a plurality of posts, each of the posts (34) having a shoulder (45) that lies within a single common plane (Col. 4, line 29 through Col. 4, line 2; Figure 6).
Referring to claim 12, Seebach et al teaches wherein the base and the cap have one or more structural features that support one or more electrical terminals connected to the conductive layer (Col. 3, lines 54-62 and Col. 5, lines 3-30; Figures 1, 3 and 6).
Referring to claim 19, Seebach et al teaches an electrosurgical return electrode (Col. 1, lines 5-8) comprising: a conductive layer (22) configured to conduct electrical current (Col. 3, line 59 through Col. 4, line 1), the conductive layer (22) having one or more apertures (24/26) extending therethrough (Col. 3, lines 54-62; Figure 1); and a plug connected to the conductive layer (Figure 1), the plug comprising: a base (36) having a structural component (inside portion shown in Figure 3 and labeled in above Figure) and an outer layer (outside portion of 36 shown in Figure 4 and external portion of 36 that is not within the labeled internal structure in above Figure) covering at least a portion of the structural component, the outer layer comprising a socket (protrusion of 36 labeled in Figure above) and one or more channels (labeled in Figure above) leading to the socket, the structural component having one or more bosses (38) configured to extend through the one or more apertures in the conductive layer (Col. 4, lines 16-28; Figures 1 and 3); and a cap (32) disposed adjacent to the conductive layer and opposite to the base (Figures 1 and 6), the cap having one or more features (34) configured to engage with the one or more bosses (38) (Col. 4, lines 15-50; Figures 1, 3 and 6), one or both of the base and the cap having one or more apertures extending therethrough and configured to have an adhesive injected therethrough to file voids between the conductive layer, the base, and the cap to secure the conductive layer, the base, and the cap together (Col. 4, lines 29-50).
Furthermore, the recitation of having an adhesive injected is regarded as a product-by-process limitation. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. In re Thorpe, 777 F.2d 695, 698; 227 USPQ 964, 966 (Fed. Cir. 1985).
It is noted that Merriam Webster defines “socket” as an opening or hollow that forms a holder for something. Seebach’s labeled portion of 36 is an opening that forms a holder for the connector leads 12 and 14 as shown best in Figures 1 and 2.
Referring to claim 20, Seebach et al teaches a connector cable (12 and 14) hardwired to the conductive layer (22), the connector cable (12 and 14) comprising one or more conductors that extends through the plug (Col. 4, lines 54-62 and Col. 5, lines 3-20; Figures 1-6).
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 7-8 are rejected under 35 U.S.C. 103 as being unpatentable over Seebach et al (U.S. Patent 4,738,263).
Referring to claim 7, Seebach et al fails to expressly teach that the outer layer is made of a softer material than the structural component. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the outer layer to be made of a softer material than the structural component, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416. See also Ballas Liquidating Co. v. Allied industries of Kansas, Inc. (DC Kans) 205 USPQ 331.
Referring to claim 8, Seebach et al teaches wherein the structural component (inside portion shown in Figure 3) comprises a platform (bottom portion) from which the one or more bosses (38) extend (Figure 3).
Claims 13-16 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Seebach et al (U.S. Patent 4,738,263) in view of Hall et al (PG Pub 2020/0015853).
Referring to claim 13, Seebach et al teaches an electrosurgical return electrode (Col. 1, lines 5-8) comprising: a conductive layer (22) configured to conduct electrical current (Col. 3, line 59 through Col. 4, line 1), the conductive layer (22) having one or more apertures (24/26) extending therethrough (Col. 3, lines 54-62; Figure 1); and a plug connected to the conductive layer (Figure 1), the plug comprising: a base (36) having a structural component (inside portion shown in Figure 3 and labeled in Figure below) and an outer layer (external portion of 36 shown best in Figure 4 and that is not within the labeled internal structure above) covering most of the structural component, the structural component comprising one or more bosses (38) configured to extend through the one or more apertures in the conductive layer (Col. 4, lines 16-28; Figures 1 and 3); the outer layer comprising a socket (protrusion of 36 labeled above) and one or more channels (labeled in Figures above) leading to the socket (Col. 5, lines 3-20; Figures 1-3). It is noted that Merriam Webster defines “socket” as an opening or hollow that forms a holder for something. Seebach’s labeled portion of 36 is an opening that forms a holder for the connector leads 12 and 14 as shown best in Figures 1 and 2. Seebach et al teaches a cap (32) disposed adjacent to the conductive layer and opposite to the base (Figures 1 and 6), the cap having one or more recesses (space between 34 and 58) for receiving the one or more basses therein (Col. 5, lines 4-40; Figure 6).
Seebach et al fails to teach that the caps is made of transparent material. Hall et al teaches an analogous surgical device that utilizes transparent material that is responsive to laser and allows for laser to pass therethrough (paragraphs 0030 and 0034). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the one or more bosses and the cap, as taught by Seebach et al, to be formed of a material responsive material that is transparent to allow for the laser to pass therethrough, as taught by Hall et al, in order to allow for laser welding (paragraphs 0030 and 0034). Furthermore, a change in material has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416. See also Ballas Liquidating Co. v. Allied industries of Kansas, Inc. (DC Kans) 205 USPQ 331.
Referring to claim 14, Seebach et al is silent regarding the size of the cap.
Due to a lack of disclosed criticality or unexpected result, it would have been an obvious matter of design choice to have the cap have a thickness of about 0.030 inches or about 0.040 inches adjacent to the one or more recesses, since such a modification would have involved a mere change in the size of a component. A change in size is generally recognized as being within the level of ordinary skill in the art. In re Rose, 105 USPQ 237 (CCPA 1955).
Referring to claim 15, Seebach et al teaches comprising one or more electrical terminals (12 and 14) connected to the conductive layer (Col. 3, lines 54-62; Figure 1).
Referring to claim 16, Seebach et al teaches wherein the one or more channels (labeled above) being configured to receive the one or more electrical terminals (12 and 14) therein and prevent fluid from passing therebetween (Col. 5, lines 3-30; Figure 3).
Referring to claim 18, the modified Seebach reference teaches wherein the structural component comprises one or more legs (56) that extends through the outer layer and adjacent to the socket (Figure 3).
Allowable Subject Matter
Claims 9 and 10 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.
Response to Arguments
Applicant’s arguments with respect to the pending claims have been considered but are moot due to new grounds of rejection. Upon further consideration the examiner has found that Seebach teaches the recitations of the outer layer comprising a socket and one or more channels leading to the socket as outlined above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SAMANTHA M GOOD whose telephone number is (571)270-7480. The examiner can normally be reached Mon to Wed, 7am to 3pm.
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/SAMANTHA M GOOD/Examiner, Art Unit 3794
/MICHAEL F PEFFLEY/Primary Examiner, Art Unit 3794
Prosecution Insights