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.
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(4) because reference character “86” has been used to designate both an input and a programmable filter (page 20 lines 13-22). Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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.
Claims 16-35 are 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 claims 16-35, claim 16 has several issues which render the claim indefinite. First, “configured to simultaneously generating” is non-idiomatic English. Second, it is not clear how many electrosurgical instruments are configured for use with the generator since the claim recites “at least one” twice (i.e. are there at least two or it is the same “at least one” instrument that is in view?). Third, there is no antecedent basis for “the low frequency output” so that it is at least not clear if this is the “power output in a low frequency rage” as recited in the preamble or some other low frequency output. Fourth and relatedly, there is no antecedent basis for “the high frequency output.” Claims 17-35 depend from claim 16 and are therefore also indefinite.
Regarding claims 18 and 21, claim 16 recites a “power output.” But claim 18 recites “the output power” while claim 21 then recites a “the power output.” The inconsistency makes it unclear if these are the same or different elements as that recited in claim 16.
Regarding claim 23, claim 16 is directed to a generator “configured to” provide an output to an instrument, the instrument is therefore recited functionally not positively. But claim 23 positively recites the instrument (i.e. “located remotely at” not configured to be located remotely at, and “cable connecting” not cable configured for connecting). Therefore, it is unclear whether the instrument is required by the claim or not.
Regarding claim 26, “provided configured” is non-idiomatic English which makes the claim unclear.
Regarding claim 35, it is not clear how many selectable bypass elements there are since both claim 35 and claim 26 (from which claim 35 depends) recite “a selectable bypass.” Further “provided configured” is non-idiomatic English. Further, use of the word “optional” here makes it unclear if the claim requires a single frequency output mode or not.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 27 rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 27 excludes limitations from the claim from which it depends, rendering it improper. See also MPEP 608.02(n)(III) for a discussion of the scenario presented in claim 27. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Allowable Subject Matter
Claims 16-26 and 28-35 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
The following is a statement of reasons for the indication of allowable subject matter: dual frequency electrosurgical generators are common in the art such as illustrated by figure 3 of Friedrichs (US 2017/0209202) and figure 1 of Noack (US 2017/0325874). Such systems are so common, in fact, that the prior art occasionally simply states that such generators may be used while providing no details (e.g. 904 in fig. 21, paragraph [0391] of US 2019/0201075 to Shelton), which illustrates that such generators are well known to those of ordinary skill in the art. However, there are innumerable circuit elements that can be used to provide this functionality and the prior art does not teach or suggest the specifically claimed structure and structural relationships of a dual frequency electrosurgical generator as recited in the independent claim. More specifically, while inverters are almost ubiquitous in the art (e.g. paragraph [0037] of US 2017/0312004 to Allen which passingly mentions that a single inverter can output ultrasound, microwave and RF frequencies), there are no disclosures of using low/high frequency driving units for outputting low/high frequency reference signals which are combined by a modulation unit into a combined reference signal which is then supplied to a multilevel inverter for the purpose of generating the dual frequency output for use by an instrument.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIEL WAYNE FOWLER whose telephone number is (571)270-3201. The examiner can normally be reached Monday-Friday (9-5).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Stoklosa can be reached at 571-272-1213. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DANIEL W FOWLER/Primary Examiner, Art Unit 3794