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.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 05/11/2026 has been entered.
Response to Arguments
Applicant’s arguments with respect to claim(s) 05/11/2026 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.
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 (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 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.
Claim(s) 1-15 are rejected under 35 U.S.C. 103 as being unpatentable over Greeley (US 2009/0222001 A1) in view of Davison (US 2019/0059988 A1).
Regarding claims 1 and 11, Greeley teaches a medical system (Fig. 1) comprising:
a generator configured to provide electrical energy; (Fig. 2, Char. 14: electrosurgical unit) and
a device (Fig. 7) comprising:
a proximal portion comprising an electrical connector configured to electrically couple to the generator; (Fig. 1 and 7, Char 36: plug) and
a distal portion (Fig. 9) comprising:
a first electrode (Fig. 9, Char. 114a: electrode) extending distally from an elongated shaft, (Fig. 8, Char. 147: outer member) wherein the first electrode is configured to provide a delivered electrical current to a target treatment site within a patient, (Fig. 16; Par. [0091]) and wherein the first electrode defines a first irrigation port (Fig. 9, Char. 185a: fluid outlet) configured to release a surgical fluid into the target treatment site to create a first surgical fluid coupling; (Fig. 9 and 16; Par. [0072] and [0091]) and
a second electrode (Fig. 9, Char. 114b: electrode) extending distally from the elongated shaft, (Fig. 8, Char. 147: outer member) wherein the second electrode is configured to receive a return electrical current from the target treatment site, (Fig. 16; Par. [0091]; Claim 1: the electrodes operate in a bipolar configuration) and wherein the second electrode defines a second irrigation port(Fig. 9, Char. 185b: fluid outlet) configured to release the surgical fluid into the target treatment site to create a second surgical fluid coupling, (Fig. 9 and 16; Par. [0072] and [0091]) the second surgical fluid coupling separate and distinct from the first surgical fluid coupling; (Fig. 16 and Par. [0091])
wherein the first irrigation port is oriented to release the surgical fluid outwardly away from the device in a direction opposite the second electrode, (Fig. 9 and 16) and wherein the second irrigation power is oriented to release the surgical fluid outwardly away from the device in a direction opposite the first electrode, (Fig. 9 and 16) such that the second surgical fluid coupling is separate and distinct from the first surgical fluid coupling. (Fig. 16 and Par. [0091])
Greeley, as applied to claims 1 and 11 above, is silent regarding wherein the distal portion of the electrosurgical device defines at least one aspiration port configured to proximally aspirate the surgical fluid from the target treatment site.
Davison, in a similar field of endeavor, teaches an electrosurgical device comprising fluid ports disposed in electrodes; (Fig. 4-5; and Par. [0054]-[0056]) 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])
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 Greeley, as applied to claims 1 and 11 above, to incorporate the teachings of Davison, and configure the distal end of shat assembly (101) of Greeley to include the distal suction opening (52) of Davison. Doing so would allow for blood and debris to be drawn away from the treatment zone to prevent said blood/debris from getting in the way of or otherwise interfering with the treatment procedure, as suggested in Davison. (Par. [0056])
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, the combination of Greeley/Davison, as applied to claims 1 and 11 respectively above, teaches the electrosurgical device further comprising an aspiration tube coupled to the elongated shaft, the aspiration tube defining the aspiration port. (Davison: Par. [0052] and Fig. 12, Char. 120: lower lumen – it is implicit that this feature be present in the Greeley/Davison combination based on the rejection to claims 1 and 11 above.)
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, the combination of Greeley/Davison, as applied to claims 2 and 12 respectively above, 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. (Davison: Fig. 4-5 – it is implicit that this feature be present in the Greeley/Davison combination based on the rejection to claims 1 and 11 above.)
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, the combination of Greeley/Davison, as applied to claims 1 and 11 respectively above, teaches a first outer lateral portion of the first electrode defines the first irrigation port (Greeley: Fig. 9: 185a: outlet opening) and wherein a second outer lateral portion of the second electrode defines the second irrigation port, (Greeley: Fig. 9: 185b: outlet opening) 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. (Greeley: Fig. 16-17)
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, the combination of Greeley/Davison, as applied to claims 1 and 11 respectively above, teaches the surgical fluid comprises saline. (Greeley: Par. [0040])
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
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NICHOLAS SHEA BORSCH whose telephone number is (571)272-5681. The examiner can normally be reached Monday-Thursday 7:30AM-5:30PM EST.
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/N.S.B./Examiner, Art Unit 3794
/JOANNE M RODDEN/Supervisory Patent Examiner, Art Unit 3794
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