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.
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(4) because reference character “26” has been used to designate both an electrical switch and an average value detector. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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 15 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.
Regarding claim 15, there is no antecedent basis for “the line” which renders the claim indefinite.
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 1-10, 14 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Goodman (US 2014/0353869) in view of Goble (US 2008/009849) and Rencher (US 2013/0237982).
Regarding claims 1, 3 and 4, Goodman discloses what can be considered a generic electrosurgical forceps treatment system (fig. 8) that includes a generator ([0033]) configured to output a first value for a first coagulation mode and a second value for a second cutting mode ([0040]) based on the position of an activation device (80) which is located in an instrument (10). The instrument (10) also includes at least two electrodes (fig. 3B) connected to the generator by a line (8). Note that Goodman specifically notes that different combinations of electrodes are used for coagulation and cutting ([0040]) which requires switching of some kind. Goodman is cited at least in part because there are no details about the circuitry allowing the system to function, thus establishing that the level of ordinary skill in the art includes a working knowledge of such elements. Thus, Goodman does not disclose details regarding the switch control signal, a switch between the line and the electrodes or the generator control signal. However, all of these elements are common in the art and there is no evidence that including them produces an unexpected result (within the meaning of MPEP 716.02(a)). Regarding the switch between the line and the electrodes, Goble discloses a very similar system for coagulation/cutting using different sets of electrodes and teaches that the switches can either be between the generator and the line or between the line and the electrodes ([0047]). Therefore, before the application was filed, it would have been obvious to one of ordinary skill in the art to modify the system of Goodman to include the switches anywhere between the generator and electrodes, including between the line and the electrodes as taught by Goble, that would produce the predictable result of allowing the system and/or a user to switch between coagulation and cutting with sets of electrodes. Regarding the switch control signal, electrically alterable switches controlled by generators are common in the art. Goble, for example, discloses switching between coagulation and cutting modes (abstract) using an electronic switch (fig. 5A, 51 being inside of 45) controlled by a generator (fig. 1, see also [0048]). Therefore, before the application was filed, it would have been obvious to one of ordinary skill in the art to further modify the system of Goodman to use any commonly known instrument switch for switching between coagulation and cutting modes, including an electronic switch controlled by a generator as taught by Goble, to produce the predictable result of allowing a user to control the modes. Regarding the generator control signal, using resistors connected to switches is a commonly used mechanism to allow a generator to distinguish between input signals. Rencher discloses a related coagulation/cutting system that uses different resistor values (R1, R1, fig. 10) connected to switches (615, 619) to allow the activation device to activate the generator (fig. 1). Therefore, before the application was filed, it would have been obvious to further modify the system of Goodman to include an instrument with resistors associated with the coagulation and cutting switches on the activation device, such as taught by Rencher, that would produce the predictable result of allowing a user to coagulate or cauterize tissue as desired.
Regarding claim 2, Goodman does not disclose what frequency the generator produces, more evidence that these details are a matter for a person of ordinary skill in the art to decide. Goble, however, discloses the generator operates at 400 kHz ([0036]). Therefore, before the application was filed, it would have been obvious to one of ordinary skill in the art to further modify the system of Goodman to operate any frequencies commonly known to be useful for coagulation and cutting, including 400 kHz as taught by Goble, that would produce the predictable result of treating tissue in a desired manner.
Regarding claim 5, Goodman does not disclose the voltages of the first and second values, more evidence that these details are a matter for a person of ordinary skill in the art to decide. Goble, however, discloses the generator operates at a lower peak-to-peak voltage for coagulation than cutting ([0037]). Therefore, before the application was filed, it would have been obvious to one of ordinary skill in the art to further modify the system of Goodman to operate at any commonly known coagulation/cutting voltages known to be useful for coagulation and cutting, a lower peak-to-peak voltage for coagulation, that would produce the predictable result of treating tissue in a desired manner.
Regarding claims 6-9, the signal that allows the generator to determine the state of the coagulation/cutting switches in Goodman as modified (using the different resistors of Rencher) can be considered a carrier signal used to generate the generator control signal. Whatever element generates that signal can be considered a “control device.”
Regarding claims 6 and 10, the signal that the generator produces to control the electronic switch can be considered a carrier signal.
Regarding claim 14, Goodman does not specifically disclose where in time the generator control signal and the switch control signal are located. However, for relative start and end times, there are only limited options: the start time of one is before, after, or equal to the other, and the end time of one is before, after, or equal to the other. It has been held that choosing from a finite number of identified, predictable solutions with a reasonable expectation of success is an obvious modification (MPEP 2141(III)). Therefore, before the application was filed, it would have been obvious to one of ordinary skill in the art to order the control signals in an appropriate manner, including the generator control starting after the switch control and ending before the switch control, that would produce the predictable result of treating tissue using the system in a safe and effective manner.
Regarding claim 15, Goodmen when modified as discussed above performs the recited method. More specifically, the carrier signal can be considered the switch control signal while the generator control signal can be considered to be derived from an unclaimed, second carrier signal. That is, none of the claims including claim 15 require that the single carrier signal is related to both the generator control signal and the switch control signal (or that the steps of the claim 15 must be performed in the order they are listed in the claim).
Claims 11 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Goodman, Goble and Rencher, further in view of Zbedlick (US 2004/0193021).
Regarding claims 11 and 12, the system of Goodman as modified does not disclose the signal carrier having a variable duty ratio. However, using duty ratio to encode information is common in the electrical communication art and there is no evidence that the electrical parameter used to convey information produces an unexpected result. Zbedlick discloses a medical system that communicates information and teaches that this information can be encoded in a number of ways including a variable duty ratio ([0024], [0052]). Therefore, before the application was filed, it would have been obvious to one of ordinary skill in the art to further modify the system of Goodman to use any commonly known electrical parameter to communicate information, including a variable duty ratio as taught by Zbedlick, to the generator and/or the switch, that would produce the predictable result of allowing the system to communicate between the various components.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Goodman, Goble and Rencher, further in view of Orszulak (US 2013/0267947)
Regarding claim 13, Goodman does not disclose that an average value detector for “extracting” the switch control signal. However, the prior art is very familiar with using both values, and the average of values, for many purposes and there is no evidence that averaging the switch control signal (completely undefined in claim 13) produces an unexpected result. Orszulak discloses a coagulation and cutting system (fig. 1) and teaches that various tissue/energy properties can be determined, including averages of various values as well as other calculations ([0017], [0045], where averages must be generated by an “average value detector”). Therefore, before the application was filed, it would have been obvious to one of ordinary skill in the art to further modify the system of Goodman to use any commonly known electrical parameter, including one or more averages as taught by Orszulak, to comprise the control portion of the control signal, to produce the predictable result of allowing the system to operate in a coagulate or cut mode.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Regarding the teaching that using a low-pass filter on DC voltages collected from a signal with a duty cycle as a “crude” way to determine duty cycle, see paragraph [0007] of US 2008/0013668 to Willis. Regarding another teaching that peak-to-peak voltages should be lower for coagulation than cutting, see paragraph [0044] of US 2006/0036237 to Davison.
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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