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 .
Response to Amendment
This action is in response to the amendment filed on 7/31/2026. In the amendment, claims 1, 4-7, 9, & 16 have been amended & claim 2 has been cancelled. The previous claim objections have been overcome by the amendments. The specification has also been amended to correct objections made in the previous office action.
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 6 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.
Claim 6 now positively recites ‘an electrode’ in the limitation previously rejected as lacking antecedent basis, however, the claim is still deemed indefinite since it is unclear if by this positive recitation, applicant is attempting to claim ‘an electrode’ as part of the surgical device or just using ‘an electrode’ as a benchmark for the outlet orifice locations. If applicant intends to claim the electrode in this claim as part of the claimed invention, further clarification of how the electrode is associated with the device is required for clarity.
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)(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, 3-11, 13, 14 & 16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Barry et al. (US Pub. No. 2016/0038219 A1).
Regarding claim 1, Barry et al. disclose a surgical device 30 (Figs. 3-5) for dissecting an anatomical tissue comprising: a main body 300 (Figs. 3-5) extending along a longitudinal direction and having a first end and a second end comprising a contact portion 102a,b (Figs. 3-5) adapted to come into contact with the anatomical tissue, said contact portion 102a,b in particular having a spatula shape (seen best in Fig. 4A), wherein the contact portion 102a,b comprises a first sub-portion 102b and a second sub-portion 102a extending over the first sub-portion 102b (Fig. 5); a first dissecting means 402b (Figs. 4A-4B) positioned on the first sub-portion 102b; and a second dissecting means 402a (Figs. 4A-4B) positioned on the second sub-portion 102a, wherein the first dissecting means 402b is disposed on an end region of the second end and the second dissecting means 402a is retracted and spaced from the first dissecting means 402b along the longitudinal direction of the main body at a distance d (seen in Fig. 5; described in paragraph [0038] as ‘arrow D2’), wherein said surgical device 30 further comprises a fluid dispensing means 160 (Fig. 4A; paragraph [0023]) positioned on the second sub-portion 102a and side-by-side to the second dissecting means 402a (Fig.4B shows the side-by-side positioning; since the dissecting means 402a is located on a flattened portion of the contact portion 102a, the dispensing means 160 - extends in part to 134a/136a- extends side by side since the axis extending through 134a/136a extends parallel to the axis extending through 402a), said fluid dispensing means 160 being connectable to a fluid reservoir through a connector (shown in Fig. 6 - paragraphs [0018] & [0023]) at the first end, and wherein the fluid dispensing means comprises at least a first nozzle 136b (Fig. 5) configured to dispense carbon dioxide (a source of carbon dioxide is not positively recited as part of the claimed invention, therefore, the nozzle merely needs to be capable of dispensing carbon dioxide; since the nozzle of Barry et al. meets the structural requirements of the nozzle in the claim (i.e. by being a nozzle), the nozzle of Barry et al. is considered to be capable of dispensing carbon dioxide as claimed; until further structure is provided that would teach away from the nozzle of Barry et al. is added to the claim in conjunction with this function, the nozzle of Barry et al. will continue to read on this).
Regarding claim 3, Barry et al. further disclose wherein the second dissecting means 402a comprises a second nozzle 136a for dispensing a pressurized fluid, for a hydro- dissection of the anatomical tissue, said second dissecting means 402a being connectable to a fluid reservoir through a connector at the first end (via 134a; paragraphs [0019] & [0023]).
Regarding claim 4, Barry et al. further disclose wherein the first nozzle 136b comprises a first outlet orifice (seen in Fig. 5) and the second nozzle 136a comprises a second outlet orifice (seen in Fig. 5), the first nozzle 136b being side-by-side to the second nozzle 136a, and wherein the first outlet orifice and the second outlet orifice are arranged on the same plane orthogonal to the longitudinal direction of the main body (when aligned as seen in Fig. 4B).
Regarding claim 5, Barry et al. further disclose wherein the first nozzle 136b comprises a first outlet orifice (shown in Fig. 5) and the second nozzle 136a comprises a second outlet orifice (shown in Fig. 5), the first nozzle 136b being side-by-side to the second nozzle 136a (seen in Fig. 4B when they are in alignment), and wherein the first outlet orifice is retracted and spaced from the second outlet orifice along the longitudinal direction of the main body at a distance (shown in Fig. 5).
Regarding claim 6, Barry et al. further disclose wherein the distance between the first outlet orifice for the emission of fluid from the first nozzle 136b and the electrode 102a is greater than the distance between the second outlet orifice for the emission of fluid from the second nozzle 136a and the electrode 102a (a straight line drawn from the nozzle 136b to any location on electrode 102a would be greater in length than a straight line drawn from the nozzle 136a to the same location on electrode 102a).
Regarding claim 7, Barry et al. further disclose wherein the second nozzle 136a are sliding along the longitudinal direction (L) of the main body (seen in Fig. 5
Regarding claim 8, Barry et al. further disclose wherein the first dissecting means 402b (Figs. 4A-4B) comprises: a. an electrode 102b (paragraph [0027]) for an electro-dissection of the anatomical tissue, said electrode 102b being connectable to a current generator via a connector at the first end (NOTE: ‘current generator’ is not positively recited as part of the claimed invention with the phrasing ‘being connectable to’; paragraph [0040] notes that electrical cord 40 connects the device to an electrosurgical unit to provide the electrodes with bipolar and monopolar power output).
Regarding claim 9, Barry et al. further disclose wherein the second sub-portion 102a is sliding with respect to the first sub-portion 102b so that the distance between the second dissecting means 402a and the first dissecting means 402b along the longitudinal direction (L) of the main body is variable (Fig. 5).
Regarding claim 10, Barry et al. further disclose an actuation portion 114, 116 (paragraphs [0022] & [0024]) arranged on the main body and having a first button 114 for activating the first dissecting means 402b (activates electrode 102b of the dissecting means when in bipolar power mode) and a second button 116 for activating the second dissecting means 402a (activates electrode 102a of dissecting means when in monopolar power mode).
Regarding claim 11, Barry et al. further disclose (via incorporated reference 2012/0004657) a flow regulator 68 (paragraphs [0056]-[0057] of ‘657) arranged on the main body for varying the flow of fluid dispensed by the fluid dispensing means.
Regarding claim 13, Barry et al. further disclose wherein the contact portion 102a,b is removably attachable to the main body at the second end (paragraph [0033] - connection via sleeve portions 412a,b).
Regarding claim 14, Barry et al. further disclose wherein the contact portion is deformable (paragraph [0025] discloses that 102a,b can be made from suitable electrically conductive metals to include gold; gold is a metal that is considered to be ‘deformable’ since in its pure state is considered to be extremely flexible) and comprises a protruding portion to be directed towards the anatomical tissue to be separated (contact portion 102a,b protrudes from the connecting sleeves 412a,b).
Regarding claim 16, Barry et al. further disclose wherein the flow of fluid dispensed is variable between 0 L/min and 1 L/min (Fig. 4 of incorporated reference 2012/0004657 shows the flow rate ranges from 0 to 32 cc/min which equates to 0 to 0.032 L/min which is within the claimed range).
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.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Barry et al. (US Pub. No. 2016/0038219 A1) in view of Wagner et al. (US Pub. No. 2020/0305963 A1).
Regarding claim 12, Barry et al. fail to further disclose an analysis module having at least one a light spectrum analyzer and one or more sensors for monitoring in real time the electrical and thermodynamic behavior of the device. However, Wagner et al. teach incorporating sensor(s) into an electrosurgical tool to detect a light spectrum in order to control, regulate, and/or monitor (analyzer inherent via ‘monitoring’) an electrosurgical measure to improve the reliability of the method and the reproducibility of the work result (paragraphs [0074] & [0075]). Therefore, it would have been desirable for one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the sensors for light spectrum analysis/monitoring into the electrosurgical device of Barry et al., as suggested and taught by Wagner et al., in order to improve the reliability of the electrosurgical procedure.
Claims 15, 18, & 19 are rejected under 35 U.S.C. 103 as being unpatentable over Barry et al. (US Pub. No. 2016/0038219 A1).
Regarding claims 15 and 19, Barry et al. fail to explicitly disclose wherein the distance d between the first dissecting means and the second dissecting means and/or the fluid dispensing means is at least 0.5 mm [claim 15]; wherein the distance between the first dissecting means and the second dissecting means and/or the fluid dispensing means is at least 1 mm [claim 18]; and wherein the distance between the first dissecting means and the second dissecting means and/or the fluid dispensing means is between 2 mm and 3 mm [claim 19]. However, since the distance between the first and second dissecting means and, thus, the fluid dispensing means respectively, is variable because of the sliding of the dissecting means 402a relative to dissecting means 402b, it is considered that all of these distances can be achieved. Further, choosing this distance is up to the user during the dissection method based on parameters that occur during the procedure.
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Barry et al. (US Pub. No. 2016/0038219 A1) in view of Zhang (CN 206565944U).
Regarding claim 17, Barry et al. fail to explicitly disclose a length of the protruding portion, in particular the claimed length range of between 40 mm and 60 mm. However, Zhang teach an electrode needle catheter to enter and treat anatomical tissue/muscle having a length range of 20-75mm to accommodate a range of anatomical locations (English translation ‘In this embodiment, the wire electrode catheter has a diameter of 0.25 mm to 0.65 mm, and a smaller diameter needle is selected as much as possible so as to relieve the needle from piercing the skin (the skin surface of the tested muscle can be coated with a Thick layer of lidocaine compound ointment local anesthesia), a length of 20-75 mm, according to muscle anatomical location and shape of the structure to determine the catheter scale, easy to determine the depth.’). It is considered that one of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious to choose a length falling within the range suggested and taught by Zhang, to include the claimed range between 40mm and 50mm, for the protruding portion (electrode) of Barry et al.’s device.
Response to Arguments
In the Remarks filed on 7/31/2026 alongside the claim amendments, applicant’s only argument in view of the prior art is that ‘Barry et al. fails to disclose ‘a first nozzle configured to dispense carbon dioxide’. No further arguments are provided. Examiner has updated the rejection of claim 1 to reflect the amended language with explanation of the rejection as being anticipated by Barry et al. See the above rejection for this explanation.
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 ASHLEY LAUREN FISHBACK whose telephone number is (571)270-7899. The examiner can normally be reached M-F 7:30a-3:30p.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Darwin Erezo can be reached at (571) 272-4695. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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ASHLEY LAUREN FISHBACK
Primary Examiner
Art Unit 3771
/ASHLEY L FISHBACK/Primary Examiner, Art Unit 3771 September 29, 2026
