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 .
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.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the multiple annular contact surfaces arranged concentrically as claimed in claims 2 and 6 must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Objections
Claim 3 is objected to because of the following informalities: “each cylindrical electrode” should be amended to --the cylindrical electrode--. 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 3-6 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 3 recites the limitation "the range". There is insufficient antecedent basis for this limitation in the claim.
Claim 4 recites the limitation "the area of contact" in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim 5 recites the limitation "the range" in line 4. There is insufficient antecedent basis for this limitation in the claim.
Claim 6 is rejected as being dependent upon an indefinite base claim.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-4 are rejected under 35 U.S.C. 103 as being unpatentable over Britva et al. (US 2015/0045857) in view of Pope et al. (US 2008/0312651).
Regarding claim 1, Britva discloses a system for heating biological tissue via RF energy (see Figs. 4-8), the system comprising a source of RF energy (see [0022]) at frequency in excess of 25 MHz (see 30 MHz to 100 MHz, [0022] and [0030]) and an applicator incorporating an electrode (see applicator 10 incorporating electrode array with multiple spaced contact regions 14, Fig. 6) connected to the RF source for introducing the RF energy into the biological tissue (see [0030], claim 1), wherein the electrode an end remote from the RF source defining an annular surface for contacting the biological tissue (see annular outer surface of the array of electrodes 14, Fig. 4), the outer diameter of the annular surface exceeding 3 cm (see in excess of 4 cm, [0028]). However, Britva fails to disclose the electrode comprising a hollow cylinder of which an end remote from the RF source defines the annular surface.
Pope teaches a system for heating tissue (see Figs. 6-9B) including an electrode comprising hollow cylinders of which an end remote from the RF source defines a convex annular surface (see annular electrodes 32, Figs. 6-7A, see also [0080]). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the electrode as disclosed by Britva to comprise hollow cylinders of which an end remote from the RF source defines the annular surface in light of Pope, since the modification would have been a matter of simple substitution for the purpose of distributing the contact area of the electrode uniformly over the total area of the applicator tip in order to minimize the edge effect of a singular electrode (see Pope [0054]).
Regarding claim 2, Britva in view of Pope further teaches wherein the system comprises a plurality of concentric cylindrical electrodes each formed of a hollow cylinder of which an end remote from the RF source defines an annular surface for contacting the biological tissue (see Pope: Figs. 6-7A), and wherein the electrodes are configured such that RF currents flow in parallel along all the cylindrical surfaces of the electrodes in the same direction as one another (RF currents flow out through each annular electrode in the same direction in Pope and Britva, which is considered flowing in parallel as claimed, see also Pope: Fig. 8B).
Regarding claim 3, Britva in view of Pope teaches the limitations of claim 1, however fails to specifically teach wherein the wall thickness of the cylindrical electrode is in the range of 5 mm to 6 mm. However, 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 wall thickness of the cylindrical electrodes of Britva in view of Pope to have a wall thickness in the range of 5 mm to 6 mm 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 Britva in view of Pope would not operate differently with the claimed wall thickness since the cylindrical electrodes would function appropriately for distributing the contact area when having the claimed wall thickness. Further, applicant places no criticality on the range claimed, indicating simply that the diameter “may” be within the claimed range (Specification [0027]).
Regarding claim 4, Britva in view of Pope further teaches wherein the, or at least one, annular surface is formed with indentation to increase the area of contact with the biological tissue (see Pope: “convex”, [0080]).
Claims 5 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Britva et al. (US 2015/0045857).
Regarding claim 5, Britva discloses a method of treatment of biological tissue which comprises applying RF energy (see [0022]) at a frequency in excess of 25 MHz to the tissue (see 30 MHz to 100 MHz, [0022] and [0030]) using an electrode having at least one annular contact surface (see applicator 10 incorporating electrode arrays with multiple spaced, annular contact regions 14, Fig. 6) of which the outer diameter exceeds 3 cm (see in excess of 4 cm, [0028]). However, Britva fails to specifically teach the radial dimension of the annular surface lies on the range of 5 mm to 6 mm.
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 wall thickness of the cylindrical electrodes of Britva to have a radial dimension in the range of 5 mm to 6 mm 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 Britva would not operate differently with the claimed radial dimension since the annular electrodes would function appropriately for distributing the contact area when having the claimed radial dimension. Further, applicant places no criticality on the range claimed, indicating simply that the diameter “may” be within the claimed range (Specification [0027]).
Regarding claim 6, Britva further discloses wherein the electrode comprises multiple annular contact surfaces arranged concentrically (see outer circle of annular contact surfaces 14 arranged concentrically with an inner circle of annular contact surfaces 14 as shown in Fig. 4).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SEAN W COLLINS whose telephone number is (408)918-7607. The examiner can normally be reached M-F 9:00 AM-5:00 PM ET.
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/SEAN W COLLINS/Primary Examiner, Art Unit 3794