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 .
A complete action on the merits of pending claims 1-15 appears herein.
Response to Arguments
Applicant's arguments filed 12/22/2025 have been fully considered but they are not persuasive.
Applicant argues “the irrigation ports of Davison (74, 84) are oriented somewhat inwardly and toward each other such that the surgical fluid couplings would combine. Although Davison contains a generic statement in [0054] that the irrigation ports can be positioned at different orientations than shown, Davison also clearly states it is desirable to have irrigation openings oriented to ‘promote electrical conductivity between electrodes.’ Applicant submits that a person skilled in the art would not be motivated to modify Davison to arrive at the subject matter of the amended claims, as doing so would change the principle of operation of Davison by directing the surgical fluid away from the opposing electrodes and not ‘promot[ing] electrical conductivity between electrodes.’ MPEP § 2143.01(VI).”
Examiner respectfully disagrees. As shown in Fig. 4 and 5 of Davison, end effector (50) has top and bottom radial irrigation openings (74 and 84). The streams from the top irrigation opening (84) angled upward and the stream from the bottom irrigation opening (74) angled downward would not cross or combine. Furthermore, Davison teaches various orientations/numbers of irrigation openings. Therefore, one of ordinary skill in the art would be able to change the orientations/locations of irrigation openings (74, 84) to further separate the fluid streams/couplings (e.g. disposing opening (70) at the distal end of electrode (70) and disposing opening (80) at the proximal end of electrode (80)) as doing so would be a mere rearrangement of parts well within the ability of one of ordinary skill in the art.
Claim Rejections - 35 USC § 102
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1-15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Davison (US 2019/0059988 A1).
Regarding claims 1 and 11, Davison teaches
a generator configured to provide electrical energy; (Fig. 1, Char. 12: source of electrical power) and
a device (Fig. 1, Char. 10: instrument) comprising:
a proximal portion comprising an electrical connector configured to electrically couple to the generator; (Fig. 1, Char. 20: cable assembly) and
a distal portion comprising:
a first electrode (Fig. 4, Char. 70: electrode) extending distally from an elongated shaft, (Fig. 1 and 4, Char. 40: shaft) wherein the first electrode is configured to provide a delivered electrical current to a target treatment site within a patient, (Par. [0046]) and wherein the first electrode defines a first irrigation port (Fig. 5: the bottom radial irrigation opening (74)) configured to release a surgical fluid into the target treatment site to create a first surgical fluid coupling; (Par. [0054] and [0056]) and
a second electrode extending distally from the elongated shaft, (Fig. 4, Char. 80: electrode) wherein the second electrode is configured to receive a return electrical current from the target treatment site, (Par. [0047]: Electrodes 70 and 80 are configured to operate in a bipolar fashion (the electrodes (70 and 80) would act as both active and return electrodes)) and wherein the second electrode defines a second irrigation port (Fig. 4: the top radial irrigation opening (84)) configured to release the surgical fluid into the target treatment site to create a second surgical fluid coupling, (Par. [0054] and [0056]) the second surgical fluid coupling separate and distinct from the first surgical fluid coupling; (Fig. 4-5: The fluid streams of the bottom radial irrigation opening (74) and the top radial irrigation opening (84) would not cross or combine)
wherein the distal portion of the electrosurgical device defines at least one aspiration port (Fig. 4, Char. 52: opening) configured to proximally aspirate the surgical fluid from the target treatment site. (Par. [0056])
wherein the first and second irrigation ports are oriented to release the surgical fluid outwardly away from the device along a lateral axis of the device. (Fig. 4 and 5)
Regarding method claim 6, the claim is rejected by the same or substantially the same rationale as applied to the rejection of apparatus claims 1 and 11, since operation of the prior art relied on to reject apparatus claims 1 and 11 would naturally result in the step of method claim 6 being satisfied.
Regarding claims 2 and 12, Davison further teaches the electrosurgical device further comprising an aspiration tube coupled to the elongated shaft, the aspiration tube defining the aspiration port. (Par. [0052] and Fig. 12, Char. 120: lower lumen)
Regarding method claim 7, the claim is rejected by the same or substantially the same rationale as applied to the rejection of apparatus claims 2 and 12, since operation of the prior art relied on to reject apparatus claims 1 and 12 would naturally result in the step of method claim 7 being satisfied.
Regarding claims 3 and 13, Davison further teaches a distal portion of the aspiration tube is disposed between the first electrode and the second electrode along a lateral axis of the electrosurgical device, and disposed below the first electrode and the second electrode along a vertical axis of the electrosurgical device. (Fig. 4-5)
Regarding method claim 8, the claim is rejected by the same or substantially the same rationale as applied to the rejection of apparatus claims 3 and 13, since operation of the prior art relied on to reject apparatus claims 3 and 13 would naturally result in the step of method claim 8 being satisfied.
Regarding claims 4 and 14, Davison further teaches a first outer lateral portion of the first electrode defines the first irrigation port and wherein a second outer lateral portion of the second electrode defines the second irrigation port, (Fig. 4: Radial irrigation openings 74 and 84 are disposed on the first outer lateral portions of electrodes (70) and (80) respectively) such that the electrosurgical device is configured to release the surgical fluid in an outward-radial direction relative to a longitudinal axis of the electrosurgical device. (Par. [0054])
Regarding method claim 9, the claim is rejected by the same or substantially the same rationale as applied to the rejection of apparatus claims 4 and 14, since operation of the prior art relied on to reject apparatus claims 4 and 14 would naturally result in the step of method claim 9 being satisfied.
Regarding claims 5 and 15, Davison further teaches the surgical fluid comprises saline. (Par. [0054])
Regarding method claim 10, the claim is rejected by the same or substantially the same rationale as applied to the rejection of apparatus claims 5 and 15, since operation of the prior art relied on to reject apparatus claims 5 and 15 would naturally result in the step of method claim 9 being satisfied.
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.
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/LINDA C DVORAK/Primary Examiner, Art Unit 3794
/N.S.B./ Examiner, Art Unit 3794