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.
Election/Restrictions
Claims 22-29 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected method, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 03/05/2026.
Applicant's arguments filed 03/05/2026 have been fully considered but they are not persuasive. Applicant argues that because claim 22 recites the features of claim 1, the subject matter of the claims is sufficiently related that a thorough search for the subject matter of the remainder of the claims would encompass the same search as the unelected method of claims 22-29. The Examiner does not agree, because the method proposed in claims 22-29 constitutes a new, patentably distinct invention. Further, the claims of 22-29 extend beyond the scope of claim 1 that are not required to be searched and considered in the examination of claim 1, such as manufacturing processes and additional modules.
Therefore, the restriction is still deemed proper and therefore made FINAL.
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.
Claim 4 is 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.
Regarding claim 4 specifically, claim 1 recites a communication module but claim 4 also introduces a communication control module. It is unclear between which module is used for communication between the electro surgical generator and control base module, or how these modules are different from one another. The Examiner cannot determine if these are two, distinct modules for communication or not. Appropriate correction is required.
Claim Rejections - 35 USC § 102
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 1-5, 7-9, 12-13, 15, 17-18, and 20-21 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by JP 2001522256A (herein after, Cited Document 1).
Regarding claim 1, Cited Document 1 describes "an electrosurgical generator (system 1) for generating a power supply signal for supplying to an electrosurgical instrument (surgical device 19), comprising a plurality of functional modules (computer unit 3, module 13, and base unit shown in Fig. 2) and a communication module (network board 271), wherein the plurality of functional modules include at least one inverter module for generating a power supply signal for supplying high-frequency energy for at least one of the electrosurgical instruments (as described below, it is recognized that the module 13 of the invention described in Cited Document 1 includes an inverter). Referring to lines 11-27 on page 37 of Cited Document 1, a module 13 for performing ultrasonic waves or bipolar coagulation is described. Then, it is clear that the module 13 for performing ultrasonic waves or bipolar coagulation supplies high-frequency energy to the surgical device 19 connected thereto. Furthermore, considering that power from a DC power supply is supplied to the module 13 in Fig. 2, the fact that the module 13 for performing ultrasonic waves or bipolar coagulation to generate high-frequency energy includes an "inverter" is as follows. At least one of the functional modules is provided with a combined identifier to make it distinguishable from the other functional modules (see lines 3-14 on page 48 and Fig. 25 of Cited Document 1), at least one of the functional modules or the communication module is adapted to identify each of the functional modules by the combined identifier (see lines 3-14 on page 48 and Fig. 25 of Cited Document 1), and a bus system (backplane 101: see line 27 on page 19 to line 5 on page 20) is provided for communication between the functional modules and / or with the communication module, and / or each of the plurality or all of the functional modules is configured to control each of the functional modules and / or to control each of the functional modules. Having a control base module (CPU245, neuron circuits 541, 627) for operating communication with another of the functional modules and / or the communication module; Electrosurgical generator (See, in particular, line 12 on page 18 to line 9 on page 20, lines 15-17 on page 30, line 27 on page 32 to line 9 on page 33, lines 11-27 on page 37, lines 3-14 on page 48, line 24 on page 72 to line 3 on page 73, lines 20-27 on page 77, and the drawing 1,2,17,18,21,25,33,35 of Cited Document 1).
Regarding claim 2, the limitations of claim 1 are taught as described above. Cited Document 1 discloses that "the plurality of functional modules include an input power module (power supply 2) for supplying power to the electrosurgical generator" with an energy distribution module (see Figs. 33 and 35) for controlling the supply of power from at least one of the inverter modules to at least one of the output modules, the electrosurgical generator further comprises the communication module (backplane 101) coupled to two or more of the functional modules to provide communication between the communication module or two or more functional modules, and a module detector (see lines 21-25 on page 60 of Cited Document 1) for detecting which of the functional modules is implemented and configured.
Regarding claim 3, the limitations of claim 1 are taught as described above. Cited Document 1 discloses the limitations “wherein two or more of the modules each having a communication interface for communicating with other modules and/or with the communication module and/or a self-configuring communication network is provided” in lines 15-17 on page 30, line 27 on page 32 to line 9 on page 33, line 24 on page 72 to line 3 on page 73, and lines 20-27 on page 77.
Regarding claim 4, the limitations of claim 1 are taught as described above. Cited Document 1 discloses the limitations in “a plurality of the functional modules each have a control base module for controlling the module, wherein each of these functional modules is prepared for providing at least one module function, and in the control base module a modular control method is implemented, that has at least a communication control module for operating the communication of the module and a function control module for controlling the function of the module” in lines 15-17 on page 30, line 27 on page 32 to line 9 on page 33, line 24 on page 72 to line 3 on page 73, and lines 20-27 on page 77.
Regarding claim 5, the limitations of claim 1 are taught as described above. Cited Document 1 teaches “in each of at least one of the plurality of functional modules, - a plurality of function control modules is provided, each as a software control unit for controlling different module functions of a functional module such that each module function is assigned to a function control module and - for selecting a module function a corresponding function control module is selected” in lines 15-17 on page 30, line 27 on page 32 to line 9 on page 33, line 24 on page 72 to line 3 on page 73, and lines 20-27 on page 77. It is recognized that “a plurality of the control base modules are provided as software units”, in addition to line 10 on page 43 to line 9 on page 44 that also describes that a module function is selected.
Regarding claim 7, the limitations of claim 1 are taught as described above. Cited Document 1 teaches “a configuration file is given, including predetermined configurations in order to select and/or control base modules, and optionally, the electro surgical generator is adapted to conduct a check, whether the actually chosen and/or set control base module matches the predetermined configuration” with set up file described in line 10 on page 43 to line 9 on page 44.
Regarding claim 8, the limitations of claim 1 are taught as described above. Cited Document 1 teaches the limitation “wherein the electrosurgical generator is adapted to execute one, a plurality, or all of the communication steps of the list comprising: - receive information from functional modules, - evaluate the information received, - extract control commands from the evaluated information, - transmit control commands extracted from the evaluated information, - transmit received information to other functional modules and - check if transmitted information matches the functional module to which they were transmitted” in line 27 on page 32 to line 9 on page 33, which describes performing at least a communicative step of receiving information from the functional module and therefore teaches the limitation as described.
Regarding claim 9 and 13, the limitations of claim 1 are taught as described above. Cited Document 1 teaches the limitation “wherein the communication device is coupled to the modules via communication wires and/or connected to the bus system for communication” in line 27 on page 19 to line 5 on page 20, which teaches a communication module coupled to the functional module via a communication line, and moreover, lines 23-26 on page 38 also described that a serial bus system is used.
Regarding claim 12, the limitations of claim 1 are taught as described above. Cited Document 1 teaches the limitation “wherein the electro surgical generator is adapted to – identify a connection situation reflecting an overall situation of modules currently installed and/or currently connected in the electrosurgical generator” in line 21 on page 60 to line 3 on page 64.
Regarding claim 15, the limitations of claim 1 are taught as described above. Cited Document 1 teaches the limitation “wherein a plurality of all of the functional modules each comprise a data interface for building a communication or participating in a communication with the communication module and/or with other functional modules” in computer unit 3, module 13, with base unit in Fig. 2, and the connection portion with the backplane 101 in network board 271 corresponding to the data interface.
Regarding claim 17, the limitations of claim 1 are taught as described above. Cited Document 1 teaches the limitation “an enabling function is implemented wherein the enabling function is adapted to enable a particular functional module to operate and/or to execute a particular function, such that the particular functional module can only operate or execute the particular function if it is enabled by the enabling function, wherein - for enabling - a central enabling unit is provided, and/or - decentralized enabling units are provided such that each functional module comprises an enabling unit” in line 28 on page 38 to line 10 on page 39, lines 22-26 on page 45, and lines 13-15 on page 63.
Regarding claim 18, the limitations of claim 1 are taught as described above. Cited Document 1 teaches the limitation “wherein - the electro surgical generator comprises a configuration file, having stored an intended setup of the electro surgical generator, defining which functional modules to be used in the electro surgical generator, and/or - the electro surgical generator is adapted to compare the setup of the electro surgical generator stored in the configuration file with an actually identified set up of the electro surgical generator” in line 10 on page 43 to line 9 on page 44, and lines 9-13 on page 46.
Regarding claim 20, the limitations of claim 1 are taught as described above. Cited Document 1 teaches the limitation “wherein the electro surgical generator comprises a support frame or casing on all functional modules and the support frame or casing comprises a power supply for supplying electrical power to the electro surgical generator” in lines 19-25 on page 34.
Regarding claim 21, the limitations of claim 1 are taught as described above. Cited Document 1 teaches the limitation “wherein the electro surgical generator comprises a support frame or casing on which all functional modules and the support frame or casing comprises a power supply for supplying electrical power to the electro surgical generator” with mount portion 7, instruction cart 21, and power supply 275.
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 10-11, 14, 16, and 19 are rejected under 35 U.S.C. 103 as being unpatentable over JP 2001522256A (herein after, Cited Document 1).
Regarding claims 10, 11, and 14, the limitations of claim 1 are taught as described above. Cited Document 1 does not explicitly teach the claimed limitations. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the design choice of the bus systems, as taught in Cited Document 1. The specific configuration of the "bus system" is a design matter that could have been appropriately selected by a person skilled in the art according to the communication speed, communication amount, ease of implementation, etc. of each module.
Regarding claim 16, the limitations of claim 1 are taught as described above. Cited Document 1 teaches "at least one of the functional modules has a configurable or selectable module configuration, and the electrosurgical generator is adapted such that for each functional module, the module configuration is set or selected according to the identified settings of the electrosurgical generator" is described in line 21 on page 60 to line 3 on page 64 of Cited Document 1. In addition, the specific configurations of the "functional module" and the "communication module" are design matters that could have been appropriately selected by a person skilled in the art according to the ease of implementation, etc.
Regarding claim 19, the limitations of claim 1 are taught as described above. Cited Document 1 teaches the "display 5" of the invention which corresponds to the "display module" of the invention according to Claim 19. In addition, since the "network board 271" of the invention described in Cited Document 1 can also communicate with the outside, it corresponds to the "external communication module" of the invention according to Claim 19. In addition, the "foot control assembly 15" of the invention described in Cited Document 1, the "user interface" and the "flat panel display 5" described in lines 2-7 on page 31 correspond to the "input module" of the invention according to Claim 19. The "module detector" is described in lines 21-25 on page 60 of Cited Document 1 as described above for Claim 2. Then, specific control of the "display module" and the "external communication module" is a design matter that could have been appropriately selected by a person skilled in the art in consideration of operability, convenience, etc.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Abigail M Bock whose telephone number is (571)272-8856. The examiner can normally be reached M-F 7:30am - 5:00pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Linda Dvorak can be reached at 5712724764. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ABIGAIL BOCK/Examiner, Art Unit 3794
/LINDA C DVORAK/Primary Examiner, Art Unit 3794