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 .
This office action is in response to applicant’s communication of 7/14/2026. Currently claims 1 and 3-20 are pending and rejected below.
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 (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 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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-20 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Cohen (US 4,832,048).
Cohen discloses a electrosurgical probe (figures 1-4) comprising: an elongated shaft (18/18a, 28, 28a, 38) comprising a lumen (18a) extending along a longitudinal axis from a proximal end portion to a distal end portion; an insulating layer (20a) disposed on the distal end portion of the elongated shaft; a supply electrode (30a) disposed on the insulating layer over a distal extent of the elongated shaft; and a return electrode (28a) comprising an exposed portion of the elongated shaft proximal of the insulating layer (see figure 4).
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Concerning the amended claim language of “…wherein the elongated shaft comprises a conductive material forming the return electrode…” examiner is of the position that the elongate shaft (18/18a, 28, 28a, 38) comprises conductive material forming the return electrode (28a). It is recommended applicant greater define the “return electrode” structure or configuration, or separate the “shaft” element and the “return electrode” from being claimed as a “shaft” comprises a conductive material forming the “return electrode” (see claim 1 language as examiner is of the positon that as claimed the prior art return electrode may be constructed to make up the shaft of the device).
Concerning claim 3 and the distal extent of the elongated shaft forms an orifice (opening near 57) in connection with the lumen (as in figure 4 distal section).
Concerning claim 4 and the distal extent of the conductive material of the elongated shaft is formed into radially converging walls that define the orifice (again see orifice 57 and interior of 30a).
Concerning claim 5 and the radially converging walls form an interior dome-shaped wall forming an interface between the orifice and the lumen (see dome structure 38 and 38a as in figures 2 and 4 for examples).
Concerning claim 6 and the insulating layer (20a) covers the distal end portion over an exterior surface of the elongated shaft (18a) and an interior surface of the orifice (near 60 as in figure 4) and the lumen (as in figure 4).
Concerning claim 7 and the insulating layer (20a) comprises a coating that extends over an insulating distance from the distal extent to the return electrode over both the exterior surface and the interior surface (note polyurethane material over the steel wire braided material of wall 20 and 20a).
concerning claim 8 and the supply electrode (30a) is printed over the distal extent of the insulating layer and a first conductive connection (52a) of the supply electrode extends over the exposed portion of the elongated shaft (as in the distal tip of figure 4).
Concerning claim 9 and the first conductive connection (52a) is enclosed within an insulating sleeve (24a) over the exposed portion of the elongated shaft and conductively connects the supply electrode (30a) to an active control connection (54) of a control console.
Concerning claim 10 and a second conductive connection (32) conductively connected to the proximal end portion of the elongated shaft, wherein the second conductive connection conductively connects the return electrode (28a) to a return connection (36) of a control console.
Concerning claim 11, Cohen discloses method for providing an electrosurgical probe (figures 1-4), the method comprising: coating a distal end portion of a hollow conductive shaft with a first insulating layer (note inner polyurethane material under the steel wire braided material of wall 20 and 20a and shaft (18/18a, 28, 28a, 38)); applying a conductive coating (52a and 30a) over a distal extent of the first insulating layer forming a supply electrode (30a); applying a second insulating layer over the hollow conductive shaft from a proximal end portion to the distal end portion (note outer polyurethane material over the steel wire braided material of wall 20 and 20a); and forming a gap proximal of the first insulating layer and distal of the second insulating layer, wherein the gap forms a return electrode (note return electrode 28a and 22a gap).
Concerning the claim language of “…the hollow conductive shaft …” examiner is of the position that the elongate shaft (18/18a, 28, 28a, 38) is hollow and comprises a conductive material forming the return electrode (28a) It is recommended applicant greater define the “return electrode” structure or configuration, or separate the “shaft” element and the “return electrode” from being claimed as a “shaft” together comprises a conductive material forming the “return electrode” (see claim 1 language as examiner is of the position that as claimed the prior art return electrode may be constructed to make up the shaft of the device).
Concerning claim 12 and applying a third insulating layer extending longitudinally along a portion of the gap (note portion of outer polyurethane material over 22a).
Concerning claim 13 and conductively connecting the supply electrode (30a) to a proximal end portion of the hollow conductive shaft via a conductive trace (52a), wherein the conductive trace is insulated from the hollow conductive shaft by the third insulating layer (outer polyurethane material over 52a).
Concerning claim 14 and the second insulating layer 20a forms an insulating tube enclosing the hollow conductive shaft (18a), the third insulating layer, and the conductive trace (52a) from the proximal end portion to the distal end portion proximal of the gap 22/24).
Concerning claim 15 and the first insulating layer (note inner polyurethane material under the steel wire braided material of wall 20 and 20a) is applied to the distal end portion over an exterior surface of the hollow conductive shaft (18/18a, 28, 28a, 38) and an interior surface of an orifice and a lumen formed within the hollow conductive shaft (as shown in figure 4 and 20a).
Concerning the amended claim language of “…the hollow conductive shaft …” examiner is of the position that the elongate shaft (18/18a, 28, 28a, 38) is hollow and comprises a conductive material forming the return electrode (28a) It is recommended applicant greater define the “return electrode” structure or configuration, or separate the “shaft” element and the “return electrode” from being claimed as a “shaft” together comprises a conductive material forming the “return electrode” (see claim 1 language as examiner is of the position that as claimed the prior art return electrode may be constructed to make up the shaft of the device).
Concerning claim 16 and the distal end portion of the conductive hollow shaft (18/18a, 28, 28a, 38)) in a torpedo shape having an exterior wall that converges radially on the orifice (note profile as shown in figure 2).
Concerning claim 17 Cohen discloses an electrosurgical probe (figures 1-4), comprising:an elongated shaft (18a) comprising a lumen extending along a longitudinal axis from a proximal end portion to a distal end portion; a first insulating layer (20a) disposed on the distal end portion of the elongated shaft; a supply electrode (30a) disposed on the first insulating layer over a distal extent of the elongated shaft; a second insulating layer (note outer polyurethane material over the steel wire braided material of wall 20 and 20a) extending over an exterior surface of the elongated shaft from the proximal end portion to the distal end portion; and a return electrode (28a) defined by an exposed portion of the elongated shaft proximal of the first insulating layer and distal of the second insulating layer (as in figure 4 for example).
concerning claim 18 and comprising: an insulated conductive connection (52a) in conductive connection with the supply electrode and extending across the exposed portion between the first insulated layer and the second insulated layer (as in figure 4 for example).
concerning claim 19 and the insulated conductive connection (52a) comprises an inner insulating layer (inner layer of 24a) in connection with the exposed portion, an outer insulating layer (outer layer of 24a), and a conductive element (52a) enclosed between the inner insulating layer and the outer inner insulating layer (figure 4 for example).
Concerning claim 20 and at least a portion of the insulated conductive connection (52a) is enclosed within the second insulating layer (note outer polyurethane material over the steel wire braided material of wall 20 and 20a).
Response to Arguments
Applicants’ arguments filed 7/174/2026 have been fully considered but they are not persuasive. Applicant argues that Cohen fails to disclose wherein “the elongated shaft comprises a conductive material forming the return electrode…”. Examiner disagrees.
As stated in the rejection above, concerning the amended claim language of “…wherein the elongated shaft comprises a conductive material forming the return electrode…” examiner is of the position that the elongate shaft (18/18a, 28, 28a, 38) comprises conductive material forming the return electrode (28a). Examiner is of the position that the applicant is claiming the “shaft” as also containing the “return electrode” as the claim states the shaft “comprises” the “return electrode”.
It is recommended applicant greater define the “return electrode” structure or configuration, or separate the “shaft” element and the “return electrode” from being claimed as a “shaft” comprises a conductive material forming the “return electrode” (see claim 1 language as examiner is of the positon that as claimed the prior art return electrode may be constructed to make up the shaft of the device).
It is recommended that applicant distinguish the “return electrode” from the prior art is that is where applicant feels novelty lies.
The elements disclosed in COHEN are fully capable of satisfying all structural, functional, spatial, and operational limitations in the amended claims, as currently written, and the rejection is made. See rejection discussion above.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 PHILLIP A GRAY whose telephone number is (571)272-7180. The examiner can normally be reached M-F 9-5 EST (FLEX).
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Tsai can be reached at (571)270-5246. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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PHILLIP A. GRAY
Primary Examiner
Art Unit 3783
/PHILLIP A GRAY/Primary Examiner, Art Unit 3783
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