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 amendment filed June 9th, 2026 has been entered. Claims 11-15 & 17-20 are amended. Claims 1-10 are canceled. Claims 11-20 remain pending.
Response to Arguments
Applicant’s arguments with respect to claims 11-20 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; as necessitate by amendment.
Claim Objections
Claim 14 is objected to because of the following informalities: “the central portion” should be – the central section—; as introduced in claim 11. Appropriate correction is required.
Claim 18 is objected to because of the following informalities: “the central portion” should be – the central section—; 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.
Claim 12 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 12 recites “wherein the electrically conductive wire has a first portion of the electrically conductive wire and a second portion of the electrically conductive wire” and “a central portion of the electrically conductive wire that connects the first portion of the electrically conductive wire to the second portion of the electrically conductive wire”; Claim 11 introduces “a central section of the electrically conductive wire defines an arc such that the central section of the electrically conductive wire curves continuously between a first portion of the electrically conductive wire and a second portion of the electrically conductive wire”; it is unclear if the “a first portion”, “a second portion”, and “a central portion” (of claim 12) are the same as or different than the “a first portion”, “a second portion”, and “a central section” (as introduced in claim 11), which renders the claim indefinite. For examination purposes the examiner is considering them to be the same.
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 11-20 are rejected under 35 U.S.C. 103 as being unpatentable over Ohyama et al. (US 20040019351 A1), hereinafter “Ohyama”, in view of Ward (previously presented-US 20140236143 A1), hereinafter “Ward”.
Regarding claim 11, Ohyama discloses an electrode for an electrosurgical handheld instrument consisting of: an electrically conductive wire ([0060]; Figures 3 & 4—element 61), a first end of the electrically conductive wire and a second end of the electrically conductive wire configured to connect to an electrode carrier of the electrosurgical handheld instrument ([0060] & [0167]; Figures 4 & 31—elements 61 & 62; the examiner is considering the first end and the second end to be defined by the proximal ends of the treatment electrode 61 that are coupled to the bifurcating arms 62); and a central section of the electrically conductive wire defines an arc such that the central section of the electrically conductive wire curves continuously between a first portion of the electrically conductive wire and a second portion of the electrically conductive wire ([0060], [0074], [0167], & [0168]; Figures 4, 11, & 31—element 61; see figures below; the examiner is considering the central section to be the arc-shaped portion of the electrode 61, the first portion to be a first distal end portion of the parallel arm portions of the electrode 61, and the second portion to be a second distal end portion of the parallel arm portions of the electrode 61; the central section of the electrode is substantially semi-circular and arc-shaped (Figure 11 portrays the central section defines an arc such that the central section curves continuously between the first portion and the second portion of the electrically conductive wire)).
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Ohyama does not disclose wherein: the electrically conductive wire has a cross section of from 0.5 mm to 1.0 mm.
Ward teaches an electrically conductive wire ([0037]; Figure 2—element 100); wherein: the electrically conductive wire has a cross section of from 0.5 mm to 1.0 mm ([0012]; a cross-section diameter of the wire may range from 0.25 mm to 4 mm).
A person of ordinary skill in the art, before the effective filing date of the claimed invention, would have been motivated to modify the electrically conductive wire, as disclosed by Ohyama, to include wherein the electrically conductive wire has a cross section of from 0.5 mm to 1.0 mm, as taught by Ward, as both references and the claimed invention are directed toward electrosurgical devices comprising electrically conductive wires for use with a resectoscope. As disclosed by Ohyama, the electrically conductive wire is configured to resect tissue ([0084]). As disclosed by Ward, the electrically conductive wire is configured to resect tissue and may have a cross-section diameter in the range from 0.25 mm to about 4 mm ([0012] & [0037]). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the electrically conductive wire, as disclosed by Ohyama, to include wherein the electrically conductive wire has a cross section of from 0.5 mm to 1.0 mm, as taught by Ward, as such a modification would provide for a known and suitable cross-section diameter for an electrically conductive wire that is configured to resect tissue, and further it would have been obvious to one having ordinary skill in the art at the time the invention was made to include wherein the electrically conductive wire has a cross section of from 0.5 mm to 1.0 mm, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Regarding claim 12, as best understood in view of the 112(b) rejection above, Ohyama in view of Ward disclose all of the limitations of claim 11, as described above.
Ohyama further discloses wherein the electrically conductive wire has a first portion of the electrically conductive wire and a second portion of the electrically conductive wire, the first portion of the electrically conductive wire and the second portion of the electrically conductive wire adjoining the electrode carrier with the first end of the electrically conductive wire and the second end of the electrically conductive wire and there being a central portion of the electrically conductive wire that connects the first portion of the electrically conductive wire to the second portion of the electrically conductive wire between the first end of the first portion of the electrically conductive wire of and the second end of the second portion of the electrically conductive wire (see above rejection of claim 11).
Regarding claim 13, Ohyama in view of Ward disclose all of the limitations of claim 11, as described above.
Ohyama further discloses wherein the first portion of the electrically conductive wire is parallel and rectilinear to the second portion of the electrically conductive wire ([0060]; Figure 4—element 61; see figure in above rejection of claim 11).
Regarding claim 14, Ohyama in view of Ward disclose all of the limitations of claim 11, as described above.
Ohyama further discloses wherein the central portion of the electrically conductive wire is configured as a bow ([0074]; Figure 11—element 61).
Regarding claims 15-16, Ohyama in view of Ward disclose all of the limitations of claim 11, as described above.
Ohyama does not disclose wherein the electrically conductive wire consists of an electrically conductive material with a high melting point (claim 15); wherein the high melting point is at least 2000°C (claim 16).
Ward further teaches wherein the electrically conductive wire consists of an electrically conductive material with a high melting point (claim 15); wherein the high melting point is at least 2000°C (claim 16) ([0012]; the electrically conductive wire may be formed of 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 an electrically conductive material (e.g. Tungsten) that has a melting point of at least 2000°C).
A person of ordinary skill in the art, before the effective filing date of the claimed invention, would have been motivated to modify the material of the electrically conductive wire, as disclosed by Ohyama, to include wherein the electrically conductive wire consists of an electrically conductive material with a high melting point of at least 2000°C, as further taught by Ward, as both references and the claimed invention are directed toward electrosurgical devices comprising electrically conductive wires for use with a resectoscope. As disclosed by Ohyama, the electrically conductive wire is configured to resect tissue when high-frequency current flows from the electrically conductive wire ([0084]). As disclosed by Ward, the electrically conductive wire is configured to resect tissue when high-frequency current flows from the electrically conductive wire and the electrically conductive wire may be formed from a metal such as tungsten ([0012] & [0037]). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the material of the electrically conductive wire, as disclosed by Ohyama, to include wherein the electrically conductive wire consists of an electrically conductive material with a high melting point of at least 2000°C, as further taught by Ward, as such a modification would provide for a known and suitable material for an electrically conductive wire that is configured to resect tissue when high-frequency current is applied, and further it would have been obvious to one having ordinary skill in the art at the time the invention was made to include wherein the electrically conductive wire consists of an electrically conductive material with a high melting point of at least 2000°C, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
Regarding claim 17, Ohyama in view of Ward disclose all of the limitations of claim 11, as described above.
Ohyama further discloses wherein the electrically conductive wire has a round or circular cross section ([0060]; Figures 4, 11, & 31—element 61; the electrically conductive wire is wire-shaped; figures 4, 11, & 31 portray the electrically conductive wire 61 as comprising a round or circular cross-section).
Regarding claim 18, Ohyama in view of Ward disclose all of the limitations of claim 11, as described above.
Ohyama further discloses wherein: the first portion of the electrically conductive wire, the second portion of the electrically conductive wire, and the central portion of the electrically conductive wire lie in a plane; or the first portion of the electrically conductive wire, the second portion of the electrically conductive wire, and the central portion of the electrically conductive wire lie in two different planes ([0060]; Figures 4 & 6—element 61; the central arced section of the conductive wire is shown as being perpendicular to the first portion and the second portion (as shown in Figure 6); the examiner notes the rest “wherein: the first portion of the electrically conductive wire, the second portion of the electrically conductive wire, and the central portion of the electrically conductive wire lie in a plane” are in the alternative).
Regarding claim 19, Ohyama in view of Ward disclose all of the limitations of claim 11, as described above.
Ohyama further discloses wherein the first portion of the electrically conductive wire, the second portion of the electrically conductive wire, and the central portion of the electrically conductive wire are arranged at a right angle to one another ([0060]; Figures 4 & 6—element 61; the central arced section of the conductive wire is shown as being perpendicular/at a right angle to the first portion and the second portion (as shown in Figure 6)).
Regarding claim 20, Ohyama in view of Ward disclose all of the limitations of claim 11, as described above.
Ohyama does not disclose wherein the electrically conductive wire has a cross section of 0.8 mm.
Ward further teaches wherein the electrically conductive wire has a cross section of 0.8 mm ([0012]; a cross-section diameter of the wire may range from 0.25 mm to 4 mm).
A person of ordinary skill in the art, before the effective filing date of the claimed invention, would have been motivated to modify the electrically conductive wire, as disclosed by Ohyama, to include wherein the electrically conductive wire has a cross section of 0.8 mm, as further taught by Ward, as both references and the claimed invention are directed toward electrosurgical devices comprising electrically conductive wires for use with a resectoscope. As disclosed by Ohyama, the electrically conductive wire is configured to resect tissue ([0084]). As disclosed by Ward, the electrically conductive wire is configured to resect tissue and may have a cross-section diameter in the range from 0.25 mm to about 4 mm ([0012] & [0037]). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the electrically conductive wire, as disclosed by Ohyama, to include wherein the electrically conductive wire has a cross section of 0.8 mm, as further taught by Ward, as such a modification would provide for a known and suitable cross-section diameter for an electrically conductive wire that is configured to resect tissue, and further it would have been obvious to one having ordinary skill in the art at the time the invention was made to include wherein the electrically conductive wire has a cross section of 0.8 mm, since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F. 2d 272, 205 USPQ 215 (CCPA 1980).
Conclusion
Accordingly, claims 11-20 are rejected.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Woloszko et al. (US 20050251134 A1) teaches a central section of the electrically conductive wire defines an arc such that the central section of the electrically conductive wire curves continuously between a first portion of the electrically conductive wire and a second portion of the electrically conductive wire ([0128] & [0135]; Figures 31C & 31D).
THIS ACTION IS MADE FINAL. 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 MARINA D TEMPLETON whose telephone number is (571)272-7683. The examiner can normally be reached M-F 8:00am to 5:00pm EST.
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.
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/M.D.T./Examiner, Art Unit 3794
/JOSEPH A STOKLOSA/Supervisory Patent Examiner, Art Unit 3794
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