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 .
Applicant’s amendments and comments, received April 28, 2026, have been fully considered by the examiner. The following is a complete response to the April 28, 2026 communication.
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.
Claim 4 lacks proper antecedent basis for “the light source”. It appears claim 4 should depend from claim 12, and not from claim 11.
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 2, 10, 11 and 13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Johnson (5,154,709).
Regarding independent claim 11, Johnson provides an accessory for an electrocautery pencil comprising an elongated body (10) having proximal and distal ends and a receptacle (18) configured to receive an electrocautery pencil therein. See Figures 3 and 4, for example. There is an electrode channel (23) defined within the elongate body between an electrode aperture (distal opening where electrode extends as seen in Figure 3) and an electrocautery connector aperture (24), the aperture providing an opening into the receptacle (18). An airflow channel is defined within the elongate body between an airflow intake aperture (i.e. distal opening) proximate the distal end and an airflow exit aperture (22) proximate the proximal end to allow air to pass through the elongate body. The electrode channel is configured to slidably receive an external electrode (26) and guide the electrode into a functional alignment with the electrocautery pencil (Figure 3) to facilitate a releasable engagement with the pencil, thereby coupling the accessory to the pencil through the insertion of the pencil (Figure 3).
Regarding claim 2, there is a holding portion (19/24) proximate the receptable to secure the received pencil in the receptacle. See, for example, Figures 2A and 2B. Regarding claim 11, the electrode channel is positioned in the airflow channel (Figures 2-4). Regarding claim 13, there is an airflow exit connector (17) defining the proximal end of the airflow channel.
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.
Claims 14 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Johnson (‘709) in view of the teaching of Vayser et al (10,456,190).
Johnson fails to expressly disclose a heat sink and an insulator for the accessory. The examiner maintains given that the Johnson device secures an electrode, the accessory would necessarily be made from an insulative material. However, in order to further teach such a feature, attention is directed to Vayser et al who expressly disclose the use of a heat sink (col. 2, lines 61-67) as well as the use of insulative materials (col. 8, lines 56-67) in the fabrication of a tubular holder for holding an electrode of an electrosurgical pencil.
To have provided the Johnson device with an insulator and a heat sink for the accessory that houses an electrode for an electrocautery pencil would have been an obvious consideration for one of ordinary skill in the art at the time of the invention since Vayser et al fairly teach it is known to use such materials in an analogous electrosurgical pencil device.
Claims 1, 3, 4, 7-9, 12, 16 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Johnson (‘709) in view of the teaching of Cheng (2011/0060332) and DeCarlo (8,506,565).
Regarding claim 1, Johnson discloses an accessory for an electrosurgical pencil comprising a body (10) having proximal and distal ends and a device connector (14) provided at the proximal end of the body configured to detachably couple to a handle of an electrocautery pencil (Figure 3). There is an airflow unit having at least one airflow channel extending between the proximal and distal ends of the body (Figures 2 and 4), the airflow unit comprising an airflow intake aperture (i.e. distal opening) and an airflow exit aperture (22) at the proximal end of the body. An electrode is disposed at the distal end of the body (Figure 3), the electrode configured and positioned further from the proximal end of the body than the airflow intake aperture (Figure 3). Johnson fails to disclose a light unit for the accessory, and a conductive connector for transmitting electricity from the device connector to the electrode.
DeCarlo disclose another accessory for an electrosurgical pencil that is releasably attachable to the pencil such that the electrode may be connected to the accessory. In particular, DeCarlo teach that it is known to provide a conductive connector (300) which receives electrical energy from the stem (404) when inserted into the pencil, and which also receives the stem of the electrode. DeCarlo also teach that it is known to provide a light source in the accessory to provide lighting at the surgical site. Cheng is cited merely to teach that it is generally known to provide a light source (i.e. LED) in an airflow tube that also houses an electrode for an electrosurgical pencil.
To have provided the Johnson device with an electrical connector to provide electrosurgical energy to the electrode when the accessory is connected to the electrosurgical pencil would have been an obvious consideration for one of ordinary skill in the art at the time of the invention since DeCarlo fairly teach it is known to connect an accessory to an electrosurgical pencil and thus to an electrode with such a conductive connector. To have further provided the Johnson device with a light source in the airway of the accessory would have been an obvious consideration to the skilled artisan at the time of the invention since DeCarlo fairly teaches it is known to provide an LED on a similar accessory for a pencil, and further since Cheng teaches it is known to provide such an LED in an open lumen of an electrosurgical pencil device.
Claims dependent from Independent Claim 1:
Regarding claim 3, the electrode is configured to extend from the airflow unit in each of the Johnson, Cheng and DeCarlo device. Regarding claim 9, Cheng provides an external access for removing the light unit (Figure 2, for example).
Claims dependent from Independent Claim 11
Regarding claims 4 and 12 (it is assumed claim 4 should depend from claim 12), Johnson provides the accessory of claim 11 and DeCarlo and Cheng provide the teaching of providing a light source positioned in an airflow channel of an accessory as addressed with respect to claim 1 above. Both DeCarlo and Cheng provide a power source for the light source. Regarding claim 8, Cheng provides a holder to hold the light source in a channel (Figure 2).
Claims dependent from Independent Claim 16
Regarding claim 7, Johnson provides the electrode channel within the airflow channel (Figures 2 and 4). Regarding claim 20, Cheng discloses a light holder to hold the light source in the channel.
Claims 5, 6, 18 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Johnson (‘709) in view of the teachings of Cheng (2011/0060332) and DeCarlo (8,506,565) and further in view of the teaching of Vayser et al (‘190).
The combination of the DeCarlo and Cheng teachings has been addressed previously. Vayser et al provides the teaching of using insulative materials and a heat sink as addressed in the rejection of claims 14 and 15 above. To have provided the Johnson device, as modified by the teachings of DeCarlo and Cheng, with an insulator and a heat sink for the accessory that houses an electrode for an electrocautery pencil would have been an obvious consideration for one of ordinary skill in the art at the time of the invention since Vayser et al fairly teach it is known to use such materials in an analogous electrosurgical pencil device.
Allowable Subject Matter
Claim 17 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. The prior art fails to disclose the specific electrode channel having a discontinuous outer wall and a longitudinal slot as required by this claim.
Response to Arguments
Applicant’s arguments with respect to the pending claims have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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 MICHAEL PEFFLEY whose telephone number is (571)272-4770. The examiner can normally be reached Mon-Fri 8 am-5 pm.
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, 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.
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.
/MICHAEL F PEFFLEY/Primary Examiner, Art Unit 3794
/M.F.P/June 24, 2026
Prosecution Insights