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
The preliminary amendment filed June 13th, 2024 has been entered. Claims 1-10 are canceled. Claims 11-20 are new. Claims 11-20 remain pending.
Claim Objections
Claim 15 is objected to because of the following informalities: “the wire” (line 2) should be –the electrically conductive wire—, as introduced in claim 11. Appropriate correction is required.
Claim 16 is objected to because of the following informalities: “the wire” (line 2) should be –the electrically conductive wire—, as introduced in claim 11. Appropriate correction is required.
Claim 17 is objected to because of the following informalities: “the wire” (line 2) should be –the electrically conductive wire—, as introduced in claim 11. Appropriate correction is required.
Claim 20 is objected to because of the following informalities: “the wire” (line 2) should be –the electrically conductive wire—, as introduced in claim 11. Appropriate correction is required.
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 11-20 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.
Claim 11 recites the limitation "the two ends of the wire" in line 2. There is insufficient antecedent basis for this limitation in the claim. First, independent claim 11 introduces an electrically conductive wire, independent claim 11 does not introduce the electrically conductive wire comprising two ends; second, the examiner notes that “the wire” as recited in lines 2 & 3 should be –the electrically conductive wire—, as introduced in claim 11; third, the examiner notes that “the handheld instrument” as recited in line 3 should be –the electrosurgical handheld instrument—, as introduced in claim 11. Claims 12-20 are rejected by virtue of their dependency on independent claim 11.
Claim 12 recites “the two portions R and L adjoining the electrode carrier with two first ends and there being a portion C that connects the two portions R and L to one another between two ends of the portions R and L” and “, claim 11 introduces “two ends of the wire being connectable to an electrode carrier”; it is unclear how the “two first ends” and “two ends”, of claim 12, are related to each other and to the “two ends”, as introduced in claim 11 (e.g. are they the same or different); which renders the claim indefinite; for examination purposes the examiner is considering “two first ends”, and the “two ends”, of claim 12, to be the same and also be the same as the “two ends”, as introduced in claim 11. Further the examiner notes that “the wire” (in line 2) should be –the electrically conductive wire—, as introduced in claim 11, and “the portion “R and L” should be –the two portions R and L”, as introduced in claim 12.
Claim 13 recites the limitation "the two portions R and L" in line 2; there is insufficient antecedent basis for this limitation in the claim; claim 13 depends from claim 11 which does not introduce two portions R and L; for examination purposes the examiner is considering the electrically conductive wire comprising two portions R and L. Further the examiner notes that “the wire” (in line 2) should be –the electrically conductive wire—, as introduced in claim 11.
Claim 14 recites the limitation "the portion C" in line 2; there is insufficient antecedent basis for this limitation in the claim; claim 14 depends from claim 11 which does not introduce a portion C; for examination purposes the examiner is considering the electrically conductive wire comprising a portion C.
Claim 18 recites the limitation "the portions R, L, and C" in line 2; there is insufficient antecedent basis for this limitation in the claim; claim 18 depends from claim 11 which does not introduce portions R, L, and C; for examination purposes the examiner is considering the electrically conductive wire comprising portions R, L, and C.
Claim 19 recites the limitation "the portions R, L, and C" in line 2; there is insufficient antecedent basis for this limitation in the claim; claim 19 depends from claim 11 which does not introduce portions R, L, and C; for examination purposes the examiner is considering the electrically conductive wire comprising portions R, L, and C.
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 11-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ward (US 20140236143 A1), hereinafter “Ward”.
Regarding claim 11, as best understood in view of the 112(b) rejection above, Ward discloses an electrode for an electrosurgical handheld instrument consisting of an electrically conductive wire ([0045]; Figure 4A—element 302), the two ends of the wire being connectable to an electrode carrier of the handheld instrument ([0045] & [0047]; Figures 4A & 4C—element 302a, 302b, 306, & 308; the examiner is considering the two ends to be portions 302a & 302b that are received in electrode carrier 306 & 308), wherein the wire has a cross section of from 0.5 mm to 1.0 mm ([0012]; the electrically conductive wire may include a cross-section diameter in the range of about 0.25 mm to about 4 mm).
Regarding claim 12, as best understood in view of the 112(b) rejection above, Ward discloses all of the limitations of claim 11, as described above.
Ward further discloses wherein the wire has two portions R and L, the two portions R and L adjoining the electrode carrier with two first ends ([0045] & [0047]; Figures 4A & 4C—elements 302a & 302b; see figure below; the examiner is considering the two portions R and L to be the right elongated portion 302b and the left elongated portion 302a) and there being a portion C that connects the two portions R and L to one another between two ends of the portions R and L ([0045] & [0047]; Figures 4A & 4C—element 302; see figure below; the examiner is considering the portion C to be the looped portion at the distal end of the two portions R and L).
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Regarding claim 13, as best understood in view of the 112(b) rejection above, Ward discloses all of the limitations of claim 11, as described above.
Ward further discloses wherein the two portions R and L of the wire are aligned parallel to one another and rectilinearly ([0037], [0045], & [0047]; Figures 4A & 4C—elements 302a & 302b; see figure in above rejection of claim 12; the examiner is considering the two portions R and L to be the right elongated portion 302b and the left elongated portion 302a; the two portions are portrayed as being aligned parallel to one another and rectilinearly).
Regarding claim 14, as best understood in view of the 112(b) rejection above, Ward discloses all of the limitations of claim 11, as described above.
Ward further discloses wherein the portion C is configured as an arc or bow ([0037], [0045] & [0047]; Figures 4A & 4C—element 302; see figure in above rejection of claim 12; the examiner is considering the portion C to be the looped portion of the electrically conductive wire 302; suitable cutting electrode loop geometries include “radial, circular, elliptical, curved, rounded, bowed, arc, arch, crescent, semicircle, roller cylinder and so forth”).
Regarding claims 15 & 16, Ward discloses all of the limitations of claim 11, as described above.
Ward further discloses wherein the wire consists of an electrically conductive material with a very high melting point (claim 15); wherein the melting point is at least 2000°C (claim 16) ([0012]; the electrically conductive wire may be formed from a metal such as tungsten; as Tungsten is a known material in the art that comprises a known melting point of 3422°C, the electrically conductive wire would be formed of a an electrically conductive material (e.g. Tungsten) that has a melting point of at least 2000°C).
Regarding claim 17, Ward discloses all of the limitations of claim 11, as described above.
Ward further discloses wherein the wire has a round or circular cross section ([0012]; the electrically conductive wire may have a cross-sectional shape that is “circular, hemicircular, square, rectangular, triangular, polygonal and combinations of the above”).
Regarding claim 18, as best understood in view of the 112(b) rejection above, Ward discloses all of the limitations of claim 11, as described above.
Ward further discloses wherein the portions R, L and C lie in a plane, or wherein the portions R, L and C lie in two different planes ([0045] & [0047]; Figures 3B, 4A & 4C—elements 302a & 302b; see figure in above rejection of claim 12; the examiner is considering the two portions R and L to be the right elongated portion 302b and the left elongated portion 302a and the C portion to be the looped portion at the distal end of the two portions R and L; the portion C is shown as extending in a plane that is perpendicular to the plane in which the portions R and L extend (e.g. two different planes); the examiner notes the rest are in the alternative).
Regarding claim 19, as best understood in view of the 112(b) rejection above, Ward discloses all of the limitations of claim 11, as described above.
Ward further discloses wherein the portions R, L and C are arranged at a right angle to one another ([0045] & [0047]; Figures 3B, 4A & 4C—elements 302a & 302b; see figure in above rejection of claim 12; the examiner is considering the two portions R and L to be the right elongated portion 302b and the left elongated portion 302a and the C portion to be the looped portion at the distal end of the two portions R and L; the portion C is shown as extending perpendicularly to the portions R and L extend (e.g. at a right angle)).
Regarding claim 20, Ward discloses all of the limitations of claim 11, as described above.
Ward further discloses wherein the wire has a cross section of 0.8 mm ([0012]; the electrically conductive wire may comprise a cross-sectional diameter in the range from 0.25 mm to about 4 mm).
Conclusion
Accordingly, claims 11-20 are rejected.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARINA D TEMPLETON whose telephone number is (571)272-7683. The examiner can normally be reached M-F 8:00am to 5:00pm EST.
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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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/M.D.T./Examiner, Art Unit 3794
/JOSEPH A STOKLOSA/Supervisory Patent Examiner, Art Unit 3794