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 1 is objected to because of the following informalities: Line 1: “Apparatus for use” should read –An apparatus for use--. Appropriate correction is required.
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 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.
Claims 1-3 and 8-14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Rink et al., US 4994060, herein referred to as “Rink”.
Regarding claim 1, Rink discloses an apparatus for use in a surgical procedure (Figures 1 and 4), the apparatus comprising: a tool (Figures 1 and 4 and Col. 2, line 20) comprising: a handle at a proximal region of the tool (Abstract, first sentence); an elongate shaft extending in a distal direction from the handle (Figure 1: arterial catheter tube 34), the elongate shaft having proximal (Figure 1: proximal end of arterial catheter tube 34 is not pictured) and distal portions (Figure 1), the distal portion of the shaft being sized and shaped to be inserted into a subject during a surgical procedure (Abstract, first sentence); a tissue-treatment tip disposed at the distal portion of the shaft (Figure 4), the tissue-treatment tip configured to contact tissue of the subject (Col. 5, lines 37-53) and: defining a tissue-treatment tip surface that is configured to face the tissue (Col. 5, lines 7-9), and being shaped to define a beam deflector having a deflector surface (Figure 3: substrate member 11 and counterbore 13 and Col, 5, lines 1-7); and an optical fiber positioned to emit laser energy into the beam deflector (Figure 4: optical fiber 37 and Col. 5, lines 1-18), wherein a first portion of the deflector surface is shaped and positioned so as to reflect the laser energy toward the tissue-treatment tip surface (Figures 3-4 and Col. 5, lines 4-7), wherein a second portion of the deflector surface is configured to absorb the laser energy and thermally conduct the absorbed energy to the tissue-treatment tip surface (Figure 4: band 16 and Col. 5, lines 4-7), and wherein the tissue-treatment tip surface is configured to thermally conduct the absorbed energy to the tissue by contacting the tissue (Figure 4 and Col. 5, lines 4-9).
Regarding claim 2, Rink discloses the apparatus according to claim 1, wherein the beam deflector is shaped to define a cavity (Figure 3: central bore 12), wherein the first portion of the deflector surface is a first portion of an internal surface of the cavity (Figures 3-4 and Col. 5, lines 4-7), and wherein the second portion of the deflector surface is a second portion of the internal surface of the cavity (Figure 3: band 16 is a second portion of the internal surface of central bore 12).
Regarding claim 3, Rink discloses the apparatus according to claim 1, wherein the first portion of the deflector surface is a reflective coating (Figure 4: layer 17 and Col. 3, lines 53-57).
Regarding claim 8, Rink discloses the apparatus according to claim 1, wherein an angular orientation of the tissue- treatment tip is fixed with respect to an angular orientation of the handle (Figure 1).
Regarding claim 9, Rink discloses the apparatus according to claim 8, wherein a distance of the tissue-treatment tip from the handle is fixed (Figure 1: reduced diameter neck 35 and arterial catheter tube 34).
Regarding claim 10, Rink discloses the apparatus according to claim 1, wherein the beam deflector comprises an optical light guide (Col. 3, lines 35-40).
Regarding claim 11, Rink discloses the apparatus according to claim 10, wherein the optical light guide comprises sapphire or diamond (Col. 3, lines 35-40).
Regarding claim 12, Rink discloses the apparatus according to claim 10, wherein the optical light guide comprises a material having a melting point that is higher than 1700 degrees Celsius (Col. 3, lines 35-40, wherein the melting point of sapphire is about 2040-2050 degrees Celsius).
Regarding claim 13, Rink discloses the apparatus according to claim 1, wherein the optical fiber is a first optical fiber (Figure 1: optical fiber 37 above sleeve member 31), and the tool further comprises a second optical fiber (Figure 1: optical fiber below sleeve member 31), each optical fiber being positioned to emit laser energy into a respective region of the beam deflector (Col. 5, lines 1-18 and Col. 6, lines 6-10).
Regarding claim 14, Rink discloses the apparatus according to claim 13, wherein the tool is configured such that emitting laser energy into a respective part of the beam deflector causes: a respective region of the first portion of the deflector surface to reflect the laser energy toward the tissue-treatment tip surface (Col. 5, lines 1-7), and a respective region of the second portion of the deflector surface to absorb the laser energy and thermally conduct the absorbed energy to a respective portion of the tissue-treatment tip surface (Col. 5, lines 5-9).
Claim Rejections - 35 USC § 103
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 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 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.
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 4-7 are rejected under 35 U.S.C. 103 as being unpatentable over Rink.
Regarding claim 4, Rink discloses the apparatus according to claim 1, but does not explicitly disclose an apparatus wherein the second portion of the deflector surface comprises tungsten.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify band 16 of Rink so that it comprises tungsten, 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.
Regarding claim 5, Rink discloses the apparatus according to claim 1, but does not explicitly disclose an apparatus wherein the second portion of the deflector surface comprises molybdenum.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify band 16 of Rink so that it comprises molybdenum, 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.
Regarding claim 6, Rink discloses the apparatus according to claim 1, but does not explicitly disclose an apparatus wherein the second portion of the deflector surface comprises stainless steel.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify band 16 of Rink so that it comprises stainless steel, 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.
Regarding claim 7, Rink discloses the apparatus according to claim 1, but does not explicitly disclose an apparatus wherein the second portion of the deflector surface comprises a cobalt-chrome alloy.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify band 16 of Rink so that it comprises a cobalt-chrome alloy, 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.
Claims 15-18 are rejected under 35 U.S.C. 103 as being unpatentable over Rink in view of Nau, JR. et al., US 20130253489, herein referred to as “Nau”.
Regarding claim 15, Rink discloses the apparatus according to claim 13, but does not explicitly disclose an apparatus wherein the tool further comprises a controller, the controller being configured to separately control: emission of laser energy from the first optical fiber, and emission of laser energy from the second optical fiber.
However, Nau teaches an apparatus wherein the tool further comprises a controller (Figure 1A: controller 42), the controller being configured to separately control: emission of laser energy from the first optical fiber, and emission of laser energy from the second optical fiber ([0080]: “It should be noted that any one of the laser fibers may be configured to transmit energy at different wavelengths depending on the surgical treatment (e.g., sealing, cutting and/or sensing). In other embodiments, a particular laser or light fiber may be configured to perform a particular surgical treatment (e.g., sealing, cutting and/or sensing). ”).
It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to modify the apparatus disclosed by Rink so that it includes a controller as taught by Nau so that the apparatus can be configured to transmit different wavelengths based on the desired surgical treatment (Nau [0080]).
Regarding claim 16, Rink discloses the apparatus according to claim 1, but does not explicitly disclose an apparatus wherein the tissue-treatment tip surface comprises a plurality of discrete tissue-contact elements, each of the tissue-contact elements defining a respective tissue-treatment tip surface.
However, Nau teaches an apparatus wherein the tissue-treatment tip surface comprises a plurality of discrete tissue-contact elements (Figure 7A: light-receiving elements 642a-d), each of the tissue-contact elements defining a respective tissue-treatment tip surface ([0091]).
It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to modify the apparatus disclosed by Rink so that it includes a plurality of discrete tissue-contact elements, each of the tissue-contact elements defining a respective tissue-treatment tip surface as taught by Nau so that the apparatus can be configured to transmit different wavelengths based on the desired surgical treatment (Nau [0080] and [0091]).
Regarding claim 17, Rink in view of Nau discloses the apparatus according to claim 16, and Nau further discloses an apparatus wherein the tissue-treatment tip defines a housing (Figure 7A: jaw member 620) that is shaped to define a divider that separates between a first one of the tissue-contact elements and a second one of the tissue-contact elements (Figure 7A: there are gaps in channel 640 between each of light-receiving elements 642a-d).
It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to modify the apparatus disclosed by Rink so that the tissue-treatment tip defines a housing that is shaped to define a divider that separates between a first one of the tissue-contact elements and a second one of the tissue-contact elements as taught by Nau so that the apparatus can be configured to transmit different wavelengths based on the desired surgical treatment (Nau [0080] and [0091]).
Regarding claim 18, Rink in view of Nau discloses the apparatus according to claim 17, and Nau further discloses an apparatus wherein the divider comprises an insulating material ([0084]: “Reflective groove(s) 340 may be made from a polished metal or a coating may be applied to the jaw member 320 if the jaw member 320 is formed from a non-metal and/or non-reflective material (e.g., plastic).”).
It would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to modify the apparatus disclosed by Rink so that the divider comprises an insulating material as taught by Nau so that only certain parts of the apparatus reflect light (Nau [0084]).
Conclusion
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/N.W.R./Examiner, Art Unit 3794
/SEAN W COLLINS/Primary Examiner, Art Unit 3794