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
Applicant's election with traverse of Group I in the reply filed on 11 May 2026 is acknowledged. The traversal is on the ground(s) that that examining the claims together places no undue burden on the Examiner, although no specific evidence is provided or argument made. This is not found persuasive for the reasons discussed in the Office Action mailed 25 March 2026. The requirement is still deemed proper and is therefore made FINAL. Claims 18-26 withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 11 May 2026.
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, 2, 12 and 13 are rejected under 35 U.S.C. 102(a)(1) as being clearly anticipated by Hancock (US 2018/0333202).
Regarding claims 1, 2, 12 and 13, Hancock discloses an RF/microwave instrument (abstract) for cutting and coagulation ([0023]) that includes an instrument with first (23, fig. 2A) and second surfaces (27) on opposite sides of a planar body (33, [0161]). The first and second surfaces are symmetrical about the longitudinal axis of the tip and in this embodiment cover at least a majority of the planar body (fig. 2A). The instrument further includes a coaxial feed cable with an inner conductor connected to the first conductive element (22, [0158]) and a dielectric separating the inner conductor from an outer conductor (abstract) connected to the second conductive element (25). Hancock further discloses that the instrument tip is a half wave resonator that operates at 5.8 GHz as is common in the art ([0245]). Claim 1 also recites that the first conductive element has a pattern (which all conductive elements have) “configured to set an electrical length of the instrument tip” to be greater than that of “a reference instrument tip.” This “reference instrument tip” is not positively recited. Instead, this limitation is a functional limitation. While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function, because apparatus claims cover what a device is, not what a device does (Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990)). Thus, if a prior art structure is capable of performing the intended use as recited in the preamble, or elsewhere in a claim, then it meets the claim. In this case, since the first conductive element of Hancock sets an electrical length of the tip to be greater than the electrical length of some hypothetical (i.e. any conceivable) “reference instrument tip,” it meets the requirements of the claim.
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 3-11, 15 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Hancock in view of Stasz (US 4,862,890).
Regarding claims 3, 4, 8 and 9, Hancock does not disclose two conductive regions, the first region being located in a middle two quarters of the tip and having a width 90% or less the width of a second conductive region which is proximal or distal. However, there are numerous configurations of conductive elements known in art, thus indicating the configuration of conductive elements is well within the level of ordinary skill in the art. Stasz discloses an electrosurgical device for cutting and coagulating tissue (similar to Hancock as noted above) that includes a first conductive region substantially smaller than second conductive regions which are proximal and distal to the first region, where the second conductive regions fill a majority or an entirely of the instrument tip in which they reside (fig. 3). The “instrument tip” can be defined such that the first region lies within the middle two quarters of the tip where the claimed distal zone/quarter and proximal zone/quarter are not defined with respect to any other part of the instrument. If necessary, the proximal/distal quarters can be differently defined from the middle two quarters since “instrument tip” is undefined. Stasz does not disclose how much smaller that first region is from the second region, but the first region is smaller than the second region by some amount (fig. 3). It has been held that the combination of known elements according to known methods to yield predictable results, and/or the simple substitution of one known element for another, are obvious modifications (MPEP 2141(III)). Therefore, before the application was filed, it would have been obvious to one of ordinary skill in the art to modify the instrument of Hancock to use any commonly known electrode arrangement, including the first central conductive region and second proximal/distal conductive region(s) as taught by Stasz, that would produce the predictable result of allowing a user to treat tissue in a desired manner. Further, it has been held that a change of size/proportion is an obvious modification (MPEP 2144.04(IV)(A)). Therefore, it would have been obvious to one of ordinary skill in the art to choose any size/proportion for the first region smaller than the second region, including 90% or less, that would produce the predictable result of a conductive region that can be used to treat tissue in a desired manner. Regarding the claim language of “inductive/capacitive,” this is being interpreted as extremely broad rather than indefinite. Metal is not inherently “inductive” or “capacitive” (which include the parameters of the electrical signals applied to the metal) and it is not even clear where this induction/capacitance is being measured or what electrical parameters applied to the metal might result in induction/capacitance. Therefore, Hancock as modified to meet the structural requirements of these claims are understood to include the “inductive/capacitive element” being at least some part of the pattern as defined with respect to the various “instrument tip” and/or “quarters” as broadly as claimed.
Regarding claims 5-7, 10, 11 and 16, Hancock does not disclose a lengthening section that increases the physical length of the first conductive element, where the lengthening section has an undulating shape and includes branches extending along the peripheral edges of the planar body (also the edges of the planar body) forming a conductive loop encircling a non-conductive region at a distal zone of the tip. However, there are numerous configurations of conductive elements known in art, thus indicating the configuration of conductive elements is well within the level of ordinary skill in the art. Stasz discloses another embedment of a conductive pattern that includes a lengthening section that increases the physical length of the conductive element, where the lengthening section has three undulations so that it is therefore “undulating,” the undulations between sections that extend along the peripheral edge of the planar body forming a conductive loop encircling a non-conductive region at a distal zone of the tip (fig. 6). It has been held that the combination of known elements according to known methods to yield predictable results, and/or the simple substitution of one known element for another, are obvious modifications (MPEP 2141(III)). Therefore, before the application was filed, it would have been obvious to one of ordinary skill in the art to modify the instrument of Hancock to use any commonly known electrode arrangement, including a lengthening section including an undulating loop extending along edges of the distal zone of an instrument tip, such as taught by Stasz, that would produce the predictable result of allowing a user to treat tissue in a desired manner. It is noted that since the instrument tip is not defined, and since the electrical pathway defined by the undulating loop is longer than at least some physical length of the tip, Hancock as modified is understood to include the pattern setting the electrical length of the tip to be greater than a physical length of the tip.
Regarding claim 15, it is not clear if the instrument of Hancock has a curved distal end. However, curved distal ends are common in the art, such as taught by Stasz (figs 1, 3-6, etc.) and it has been held that the change of shape is an obvious modification (MPEP 2144.04(IV)(B)). Therefore, before the application was filed, it would have been obvious to one of ordinary skill in the art to modify the instrument of Hancock to have any commonly known distal tip shape, including curved as taught by Stasz, that would produce the predictable result of a device that can be used to treat tissue in a desired manner.
Claim 14 are rejected under 35 U.S.C. 103 as being unpatentable over Hancock in view of Garito (US 2009/0069802).
Regarding claim 14, Hancock discloses the instrument tip includes a spacer with a proximal transmission line (i.e. 33 can be divided up into a planar body and a spacer which includes the proximal transmission line 19a/b) but does not disclose that the spacer has a chamfered edge. However, chamfers are extremely common in the art and there is no evidence that shaving the corner off an edge does anything other than what a person of ordinary skill in the art would expect. Garito discloses an electrosurgical system and generally teaches that the proximal end of an element can have a right angle or a 45-degree chamfer ([0044]) which is understood to be a teaching of functional equivalence (MPEP 2144.06). Therefore, before the application was filed, it would have been obvious to one of ordinary skill in the art to modify the proximal end of any part of Hancock, including the spacer, to have any commonly known edge, including a chamfer as taught by Garito, that would produce the predictable result of a device that functions in a desired manner.
Claim 17 are rejected under 35 U.S.C. 103 as being unpatentable over Hancock in view of Richards (US 5,769,879).
Regarding claim 17, Hancock does not disclose the materials for the planar body, other than the material is dielectric ([0161]). However, selecting functional materials for medical instruments is well within the level of ordinary skill in the art. Richards discloses a medical instrument with a dielectric material and teaches the material can be any of several commonly known materials including ferrite (col. 3 lines 44-55). Therefore, before the application was filed, it would have been obvious to use any commonly known dielectric material in the instrument of Hancock, including ferrite as taught by Richards, that would produce the predictable result of an instrument that can be used to treat tissue in a desired manner.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Regarding the general teaching that an antenna can have a wide range of shapes, including straight, curved, hoop or undulating, see figures 3A-D of US 2015/0313670 to Shroff. Regarding another planar microwave antennas that may be relevant, see US 2012/0101492 to Hancock and US 2010/0249769 to Nau. Regarding an undulating antenna that creates an electrical length longer than a physical length, see figure 14 of US 2013/0072924 to Burgener. Regarding a wide range of electrode configurations on jaws, including electrode that are undulating and having some parts wider than others, see figures 8-11B of US 2009/00458589 to Takashino.
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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/DANIEL W FOWLER/Primary Examiner, Art Unit 3794
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