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 .
Information Disclosure Statement
The information disclosure statement filed December 29, 2025 has been entered and the references cited therein have been considered by the examiner.
Response and Amendment Filed
Applicant’s response and amendment, filed February 5, 2026, has been entered and made of record. Accordingly, the status of the claims is as follows: Claims 1 and 4-13 are amended; claims 2 and 3 are canceled; claim 14 is newly added.
Previously Set Forth Objections and Rejections
The following is the status of the objections and rejections set forth in the previous non-final Office action ailed October 8, 2025:
The objection to the specification has been overcome by the filing of a new specification.
The 35 USC 112(b) rejection of claim 5 has been overcome by amendments to claim 5.
The 35 USC 102(a)(2) rejection of claims 1-6, 9, 10, 12 and 13 as being anticipated by Ward (U.S. Patent Application Publication No. 2019/0021786) is hereby withdrawn.
The 35 USC 103 rejection of claims 7, 8 and 11 as being unpatentable over Ward (U.S. Patent Application Publication No. 2019/0021786) is hereby withdrawn.
The nonstatutory double patenting rejection of claims 1-13 as being unpatentable over claims 1-7 of copending application No. 18/233,987 in view of Ward (U.S. Patent Application Publication No. 2019/0021786) is hereby withdrawn.
The following new grounds of rejection are set forth:
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)(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.
Claim(s) 14 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Hahnen (U.S. Patent N. 5,569,244).
In regard to claim 14, Hahnen teaches a cautery probe 112 having a distal electrode 122 mounted between a pair of arms 123, 125 (first and second proximal ends) that are joined at their proximal ends to an electrode lead 127 (see Figs. 3 and 4). Figures 3 and 4 show that the arms 123, 125 have a first proximal portion adjacent to the arm 123 and a second proximal portion adjacent to the arm 125 where the first proximal portion is parallel and rectilinear to the second proximal portion. Figures 3 and 4 also show that electrode 122 has a first distal portion adjacent to the first proximal portion and a second distal portion adjacent to the second proximal portion and the first and second distal portions are connected by a central portion. The central portion has a triangular cross section with three surfaces where the central portion is thus both flattened and non-circular in cross section (see Figs. 3 and 4 and col. 3, lines 11-29).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claim 14 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 6 of copending Application No. 18/233,987 in view of Hahnen (U.S. Patent N. 5,569,244).
This is a provisional nonstatutory double patenting rejection.
Claims 1 and 6 of copending Application No. 18/233,987 teach all of the features of claim 14 with the exception of a flattened portion. However, as is set forth above, Hahnen teaches a flattened portion. Hahnen thus demonstrates that a flattened portion on a cutting electrode was well known in the art. Accordingly, it would have been obvious for one of ordinary skill in the art at the effective filing date of the invention to provide the cutting electrode of copending Application No. 18/233,987 with a flattened portion, in the manner disclosed by Hahnen.
Allowable Subject Matter
Claims 1 and 4-13 are allowed.
The following is a statement of reasons for the indication of allowable subject matter: The prior art does not teach or fairly suggest the invention as recited in amended claims 1 and 4-13. Specifically, the prior art does not teach or fairly suggest an electrode wire with a flattened portion at the central portion that has an oval, elliptical or rectangular shaped cross section or a height-to-width ratio from 1:1.5 to 1:4 and smooth transitions between the cross section of the flattened portion and the rounded corners of the other parts of the wire so that smaller radii of curvature are not formed at these transition points (amended independent claim 1). As noted by applicant in the response filed 2/5/2026 and as discussed at the interview on 12/17/2025, Ward does not teach such a flattened portion as there is no indication in Ward that the section 402b is anything other than circular in cross section (albeit thinner in diameter) (see Fig. 5 and para. 0048 of Ward). Similarly, Hahnen (applied to claim 14 above) does not teach a flattened portion with the specific height-to-width ratio recited in amended independent claim 1.
Response to Arguments
Applicant’s arguments, filed with the response of February 5, 2026, with respect to the rejection(s) of claim(s) 1 and 4-13 over Ward have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Hahnen, as set forth above.
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 BEVERLY MEINDL FLANAGAN whose telephone number is (571)272-4766. The examiner can normally be reached Mon-Fri 7:30AM to 5:00PM.
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.
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/BEVERLY M FLANAGAN/Primary Examiner, Art Unit 3794