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 .
Election/Restrictions
Applicant’s election without traverse of Species I in the reply filed on January 16, 2026 is acknowledged.
Information Disclosure Statement
The information disclosure statement filed December 28, 2023 fails to comply with 37 CFR 1.98(a)(2), which requires a legible copy of each cited foreign patent document; each non-patent literature publication or that portion which caused it to be listed; and all other information or that portion which caused it to be listed. It has been placed in the application file, but the information referred to therein has not been considered.
Claim Objections
Claims 3 and 4 are objected to because of the following informalities:
Claim 3 recites “a single common plain” in lines 2-3, which should read “a single common plane”.
Claim 4 recites “a single common plain” in line 3, which should read “a single common plane”.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 9-10 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 9 recites the limitation "one or more apertures" in line 2 and “the one or more apertures” in line 2. There is insufficient antecedent basis for this limitation in the claim in light of the recitation of “one of more apertures” in line 3 of claim one. It is not clear if these are the same apertures or different apertures.
Claim Rejections - 35 USC § 102
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.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
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 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 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).
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 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 shown in Figure 3) and an outer layer (outer covering shown best in Figure 4) covering at least a portion of the structural component, 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).
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 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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 7-10 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 teaches wherein the base (36) comprises an internal structural component (inside portion shown in Figure 3) and an outer layer formed (shown in Figure 1) (Figures 1 and 3), however 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 from which the one or more bosses (38) extend (Figure 3).
Referring to claim 9, Seebach et al teaches wherein the platform comprises one or more apertures extending therethrough, the one or more apertures having part of the outer layer passing therethrough (Col. 4, lines 29 through Col. 5, lines 10; Figure 3).
Referring to claim 10, Seebach et al teaches wherein the one or more bosses (38) are not covered by the outer layer (Figure 3).
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Seebach et al (U.S. Patent 4,738,263) as applied to claims 7-9 above, and further in view of Cartmell et al (4,669,468).
Referring to claim 11, Seebach et al teaches wherein the output layer comprises one or more channels (52/54) (Col. 5, lines 14-19; Figure 3). Seebach et al fails to expressly teach wherein the outer layer comprises a socket. Cartmell et al teaches an analogous electrosurgical return electrode comprising an outer layer comprising a socket (26) (Col. 3, lines 46-57; Figures 1-2). 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 output layer comprising one or more channels, as taught by Seebach et al, to comprise a socket, as taught by Cartmell et al, in order to easily snap fitted to a return line of an electrosurgical generator (Col. 3, lines 46-57).
Claims 13-16 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 and an outer layer 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); 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 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 outer layer comprises one or more channels (52 and 54) therein, the one or more channels 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).
Claims 17 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) as applied to claim 13-16 above, and further in view of Cartmell et al (4,669,468).
Referring to claim 17, Seebach et al teaches an outer layer, however fails to teach a socket. Cartmell et al teaches an analogous electrosurgical return electrode comprising an outer layer comprising a socket (26) configured to receive a cable connector for selective connection with the one or more electrical terminals (Col. 3, lines 46-57; Figures 1-2). 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 output layer comprising one or more channels, as taught by Seebach et al, to comprise a socket configured to receive a cable connector for selective connection with the one or more electrical terminals, as taught by Cartmell et al, in order to easily snap fitted to a return line of an electrosurgical generator (Col. 3, lines 46-57).
Referring to claim 18, the modified Seebach reference teaches wherein the structural component comprises one or more legs (projections on left side of figure 3 near arrow 50) that extends through the outer layer and adjacent to the socket (Figure 3).
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