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 .
Election/Restrictions
Applicant's election with traverse of Groups I, II and III, and species 1, in the reply filed on 03/06/2026, is acknowledged. The traversal is on the ground(s) that Groups I and II and Groups II and III do not lack unity of invention. This is not found persuasive because a phone call was made on 04/21/2026 to correct the typo made by the examiner. Groups I and III and Groups II and III lack unity of invention because the groups do not share the same or corresponding technical feature of a plurality of adjacently arranged strand shape or bead shaped structures. Groups I and II lack unity of invention because even though the inventions of these groups require the technical feature of a plurality of arranged strand shape or bead shaped structures, this technical feature is not a special technical feature as it does not make a contribution over the prior art in view of US10842572B1 to Viswanathan. Additionally, it was argued that the splines 230 of Viswanathan are not adjacently arranged due to the inner catheter shaft 220 being arranged between the splines 230. This is not found persuasive because the word “adjacent” is defined as having a common endpoint or border, as defined by the Merriam Webster dictionary and splines 230 are seen to have a common endpoint hence they are seen to be adjacent such as in FIG 2B. The requirement is still deemed proper and is therefore made FINAL.
Claims 5, 6, and 14-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected species, electrosurgical system and method for producing an active electrode for an electrosurgical instrument, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 03/06/2026.
Claim 12 withdrawn by the examiner from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected species that contain connectors which require one or more cutout(s), there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 03/06/2026.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 01/03/2024 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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 1-4, 7-8, 10-11 and 13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hovda et al (US6355032B1) herein referred to as “Hovda”.
Regarding claim 1, Hovda teaches: An active electrode for an electrosurgical instrument, ([Abstract] an electrosurgical instrument with a plurality of electrodes) the active electrode comprising: a plurality of adjacently arranged strand-shaped or bead-shaped structures; (See FIG 5 showing a plurality of adjacently arranged strand shape structures) and an electrode area comprising surface regions of each of the plurality of strand-shaped or bead-shaped structures (See FIG 5 where the electrode area has surface regions of the strand shape structures).
Regarding claim 2, Hovda teaches: The active electrode as claimed in claim 1, wherein in the plurality of strand-shaped or bead-shaped structures each include ends and each of both ends of each of the plurality of adjacently arranged strand-shaped or bead-shaped structures are mechanically rigidly connected to one or more ends of others of the plurality of strand-shaped or bead-shaped structures (See annotated FIG 5 below).
Regarding claim 3, Hovda teaches: The active electrode as claimed in claim 1, wherein the strand-shaped or bead-shaped structures each have an arcuate form (See annotated FIG 5 below).
PNG
media_image1.png
666
901
media_image1.png
Greyscale
Regarding claim 4, Hovda teaches: The active electrode as claimed in claim 1, wherein the strand-shaped or bead-shaped structures are arranged parallel to one another or as a portion of circles on a spherical surface (See annotated FIG 5 above).
Regarding claim 7, Hovda teaches: The active electrode as claimed in claim 1, wherein at least one of the strand-shaped or bead-shaped structures has a circular cross section or a cross section with a circular-arc-shaped edge portion ([col 14: line 7] electrode area can be circular. See also FIG 5).
Regarding claim 8, Hovda teaches: The active electrode as claimed in claim 7, wherein the radii of the circular cross sections or the circular-arc-shaped edge portions of the cross sections are in the range from 0.1 mm to 0.5 mm ([col 14: lines 3-5] diameter of the electrodes with a circular cross section is from 0.01mm to 5mm. When the radius is found by dividing the diameter by 2, the range becomes 0.005mm to 2.5mm which includes the claimed range).
Regarding claim 10, Hovda teaches: The active electrode as claimed in claim 1, however, Hovda does not explicitly teach: wherein at least one strand-shaped structure is formed by an additive method or by an injection molding method
The end result of the product taught in Hovda possesses the same properties as the claimed invention, that is, the strand shaped structure that form the electrode. (“Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985)).
Regarding claim 11, Hovda teaches: The active electrode as claimed in claim 1, wherein at least one strand-shaped structure is formed from a wire and joined to the remaining strand-shaped or bead-shaped structures ([col 12: lines 54-57] the electrodes can be formed from wires and coupled to the others).
Regarding claim 13, Hovda teaches: An electrosurgical instrument comprising an active electrode, according to claim 1 ([Abstract] an electrosurgical instrument with electrodes).
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.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Hovda in view of Eggers et al (US6228078B1) herein referred to as Eggers.
Regarding claim 9, Hovda discloses: The active electrode as claimed in claim 1, however, Hovda does not explicitly disclose: wherein neighboring strand-shaped or bead-shaped structures have a maximum spacing in the range from 0.1 mm to 1 mm.
Eggers discloses: wherein neighboring strand-shaped or bead-shaped structures have a maximum spacing in the range from 0.1 mm to 1 mm ([col 11: lines 43-45] electrode terminals are spaced from each other preferably about 0.1mm to 2mm which encompasses the range as claimed).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the spacing of the electrodes as disclosed in Hovda in view of Eggers to include the range from 0.1mm to 1 mm since it has been held that “[i]n the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists”. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). There is no criticality on the range claimed, indicating that simply “neighboring strand-shaped or bead- shaped structures have in particular a maximum spacing in the range from 0.1 mm to 0.5 mm or in the range from 0.1 mm to 1 mm.” (Applicant specification [0040]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTINA M GANAN-SINGH whose telephone number is (571)272-3194. The examiner can normally be reached Monday to Friday 7:30am to 5:00pm.
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, Joanne M Rodden can be reached at 3032974276. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/C.G.S/Examiner, Art Unit 3794
/JOANNE M RODDEN/Supervisory Patent Examiner, Art Unit 3794
Prosecution Insights