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 .
Response to Amendment
The amendment filed 07/02/2026 has been entered. Claims 1, 3-15 remain pending in the application. Applicant’s amendments to the claims have overcome the objections and rejections previously set forth in the Non-Final Office Action mailed 04/06/2026.
Response to Arguments
Applicant's arguments with respect to claims 1, 3-15 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. The claim amendments changed the scope of the claimed invention. See new grounds for rejection below.
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 1, 3-15 is rejected under 35 U.S.C 103 as being unpatentable over Fan (US 20110295066) herein referred to as Fan and Hendrick et al. (US 20220296225) herein referred to as Hendrick in further view of Brockmann et al. (US 20220249153) herein referred to as Brockmann.
Regarding Claim 1, Fan discloses A resectoscope (Figure 1) with an outer tube (Figure 1 , 102) and an inner tube arranged in the outer tube (Figure 1, 108) and with a working element comprising a main body (Figure 1, 130), wherein the inner tube is attached with a proximal end to the main body (Figure 1, 108), wherein at least one optical unit is arranged in the inner tube (Figure 1, 110; Paragraph [0073]; wherein the internal instrument is a telescope 110 that includes an objective lens at the distal end and an optical train leading to a viewing lens at the proximal end), and the inner tube is formed as an inflow for a rinsing fluid (Paragraph [0074]; wherein the inner sheath 108 can define a fluid supply opening 113 positioned at its distal end through which opening the working fluid can exhaust from the inner sheath to provide an inflow), and a volume between the outer tube and the inner tube is formed as an outflow for a flushing fluid (Figure 2A, 123), wherein that a cross section of a distal region of the inner tube differs from a cross section of a proximal region of the inner tube, neither the cross section of the distal region nor the cross section of the proximal region being circular (Figure 36; wherein proximal region is 208a, and the distal region which is not labeled but is seen to be the separated portion which is labeled as 108b in Figure 35). However, Fan does not explicitly disclose a cross section of a central region of the inner tube between the proximal and the distal region along the inner tube changes continuously from a cross-sectional shape of the proximal region to a cross-sectional shape of the distal region such that a laminar flow of the rinsing fluid in and outside the inner tube is achieved.
Hendricks discloses an inner tube for a resectoscope (Figure 33A) wherein a cross section of a central region of the inner tube between the proximal and the distal region along the inner tube changes continuously from a cross-sectional shape of the proximal region to a cross-sectional shape of the distal region (See annotated Figure 33A below; wherein the cross-section of the distal portion is going to be a larger oval and the cross-section of the proximal portion is going to be a smaller portion). Therefore, it would have been obvious to one of the ordinary skill in the art before the effective filing date of the claimed invention to have modified the inner tube taught by Fan to include a continuous change of the cross-section shape as taught by Hendricks. The motivation being to allow for translation of elements through the tube while preventing from rotating with respect to the distal region (Hendrick, Paragraph [0136]).
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Brockmann discloses a resectoscope (Figure 1) wherein a laminar flow of the rinsing fluid in and outside the inner tube is achieved (Paragraph [0017]; wherein the rectilinear configuration of the distal portions leads optimally to a laminar flow of the irrigation liquid inside the shaft. By virtue of this rectilinear and parallel routing of the electrode casing tubes at least along the entire length of the distal end portion, the flow behavior of the irrigation liquid is virtually undisturbed, as a result of which swirling in front of the optical unit is suppressed). Therefore, it would have been obvious to one of the ordinary skill in the art before the effective filing date of the claimed invention to have modified the inner tube of Fan in view of Hendricks to contain a rectilinear shape to ensure laminar flow of the fluid as taught by Brockmann such that Fan discloses “smooth flow” and lower likely hood of flow separation in which should allow for laminar flow in Paragraph [0095], wherein the rectilinear shape of Hendricks ensures there is always laminar flow. The motivation being the flow behavior of the irrigation liquid is virtually undisturbed, as a result of which swirling in front of the optical unit is suppressed (Brockmann, Paragraph [0017]).
Regarding claim 3, Fan and Hendricks in further view of Brockmann discloses the resectoscope as claimed in claim 1. Fan also discloses wherein the cross section of the proximal region has a waist (Figure 36, 210), by which the cross section is divided into two regions, namely an upper region and a lower region (Figure 36; wherein the region before the waist is seen as the lower region and the region after the waist is seen as the upper region).
Regarding claim 4, Fan and Hendricks in further view of Brockmann discloses the resectoscope as claimed in claim 3. Fan also discloses wherein a cross-sectional area of the upper region is equal to, smaller than or larger than a cross-sectional area of the lower region (Figure 36; wherein the cross-section area of the upper region is larger than the cross-sectional area of the lower region since it’s a larger shape).
Regarding claim 5, Fan and Hendricks in further view of Brockmann discloses the resectoscope as claimed in claim 3. Fan also discloses wherein a cross-sectional area of the upper region is oval or elliptic (Figure 36; Paragraph [0094]; wherein the cross section of the upper region is oblong which is an oval shape), wherein a longer axis of symmetry of the cross-sectional area intersects a horizontal plane through the inner tube perpendicularly, such that a channel for the flushing fluid forms between a circular optical unit and an upper portion of a wall of the inner tube (Figure 2A, 123).
Regarding claim 6, Fan and Hendricks in further view of Brockmann discloses the resectoscope as claimed in claim 1. Fan also discloses wherein the cross section of the distal region of the inner tube has at least one -undercut for fixing an electrode carrier with an electrode (Figure 23, 117).
Regarding claim 7, Fan and Hendricks in further view of Brockmann discloses the resectoscope as claimed in claim 1. Fan also discloses wherein the distal region of the inner tube has at least one receptacle, in for the releasable coupling of an electrically insulating attachment (Figure 24A, 168; Paragraph [0010])
Regarding claim 8, Fan and Hendricks in further view of Brockmann disclose the resectoscope of claim 1. Brockmann also discloses wherein the length of the distal region of a tube is 60mm to 210mm (Claim 6). Therefore, it would have been obvious to one of the ordinary skill in the art before the effective filing date of the claimed invention to have modified the length of the distal region taught by Fan in view of Hendricks to be within the length as taught by Brockmann. The motivation being this length leads optimally to a laminar flow of the irrigation liquid inside the shaft (Brockmann, Paragraph [0017])
Regarding claim 9, Fan and Hendricks in further view of Brockmann discloses the resectoscope as claimed in claim 1. Fan also discloses wherein the cross section of the proximal region of the inner tube has an upper region and a lower region (Figure 36; wherein the region before the waist is seen as the lower region and the region after the waist is seen as the upper region), wherein the upper region is round (Figure 36; Paragraph [0094]; wherein the cross section of the upper region is oblong which is an oval shape), and the lower region two opposite straight and parallel or concave cross-sectional flanks (See annotated Figure 36 below)
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Regarding claim 10, Fan and Hendricks in further view of Brockmann discloses the resectoscope as claimed in claim 1. Brockmann also discloses Brockmann discloses a resectoscope (Figure 1) wherein the length of the proximal region of a tube is 24mm to 200mm (Claim 6). Therefore, it would have been obvious to one of the ordinary skill in the art before the effective filing date of the claimed invention to have modified the length of the proximal region taught by Fan in view of Hendricks to be within the length as taught by Brockmann. The motivation being this dimensioning allows this electrode instrument to be coupled to and uncoupled from the working element in a particularly simple manner. (Brockmann, Paragraph [0016]).
Regarding claim 11, Fan and Hendricks in further view of Brockmann discloses the resectoscope as claimed in claim 1. Fan also discloses wherein the upper regions of the proximal and distal region have the same cross-sectional shape (Figure 35, 108a & 108b; wherein the upper and lower regions are identical), and in that the lower regions of the proximal and distal region have the same cross- sectional shape (Figure 35, 108a & 108b; wherein the upper and lower regions are identical).
Regarding claim 12, Fan and Hendricks in further view of Brockmann discloses the resectoscope as claimed in claim 1. Fan also discloses wherein a proximal end of the inner tube is firmly connected to, or joined together with the main body of the working element (Figure 4 & 5).
Regarding claim 13, Fan and Hendricks in further view of Brockmann discloses the resectoscope as claimed in claim 1. Fan also discloses wherein a proximal end of the inner tube has a press-in portion, with which the inner tube can be pressed into the main body (Paragraph [0121]; wherein the proximal end of inner tube is pressed into the working element of the main body).
Regarding claim 14, Fan and Hendricks in further view of Brockmann discloses the resectoscope as claimed in claim 13. Fan also discloses wherein the cross section of the press-in portion has an upper region and a lower region (Figure 14; See annotated Figure 36 below), wherein the upper region is round (See annotated Figure 36 below), and the lower region has two opposite concave cross-sectional flanks (See annotated Figure 36 below).
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Regarding Claim 15, Fan and Hendricks in further view of Brockmann discloses the resectoscope as claimed in claim 13. However, Fan in view of Hendricks does not explicitly disclose wherein the length of the press-in portion is 5 mm to 20mm.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to cause the device of Fan in view of Hendricks to have a length of the press-in portion is 5 mm to 20mm since it has been held that “where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device” Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 SPQ 232 (1984). In the instant case, the device of Fan would not operate differently with the claimed length and since the inner sheaths can have any of a variety of lengths (Paragraph [0094]), the device would function appropriately having the claimed length. Further, applicant places no criticality on the range claimed.
Conclusion
THIS ACTION IS MADE FINAL. 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 ALYSSA M PAPE whose telephone number is (703)756-5947. The examiner can normally be reached M-F 7:30-5:00.
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ALYSSA M. PAPE
Examiner
Art Unit 3794
/JOANNE M RODDEN/Supervisory Patent Examiner, Art Unit 3794
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