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 .
Specification
The disclosure is objected to because of the following informalities: the status of application 17/301,597 in paragraph 0001 needs to be updated.
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 1-8 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 1 recites “a second sensed” in line 8, which is vague and indefinite because it is not clear what is being sensed. The examiner is reading this as “a second sensed signal”.
Claim 1 recites the limitation "the second sensed signal" in line 11. There is insufficient antecedent basis for this limitation in the claim in light of the previously recited “a second sense” in line 8 of the claim.
Claim Rejections - 35 USC § 102
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.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-6 are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Yates et al (2019/0201091).
Referring to claim 1, Yates et al teaches a method for providing electrosurgery, the method comprising: producing a first signal having a first frequency; producing a second signal having a second frequency; combining the first signal and the second signal to form a combined signal (paragraph 0263); delivering the signal from a handpiece having two tips to a target (1104, 1106, 1108) (paragraph 0276; Figure 15); collecting a first sensed signal at the first frequency that has traveled through the target along a first path (via 912 or 914) (paragraphs 0264-0265; Figure 14); collecting a second sensed at the second frequency that has traveled through the target along a second path (via 924 or 914) (paragraphs 0264-0265; Figure 14); and adjusting a power of the first signal based on a power of the first sensed signal and a power of the second sensed signa; (paragraph 0264; Figure 14).
Referring to claim 2, Yates et al teaches wherein the first path is the same as the second path (for example either 912 and 914 or 924 and 914) (paragraphs 0264-0265; Figure 14).
Referring to claim 3, Yates et al teaches wherein the first path and the second path both extend from one of the two tips to the other of the two tips (paragraphs 0264-0265 and 0276-0286; Figures 14 and 15).
Referring to claim 4, Yates et al teaches wherein the first path is different from the second path (for example 913 and 924) (paragraphs 0264-0265; Figure 14).
Referring to claim 5, Yates et al teaches wherein the first path extends between one of the two tips to a return pad, and the second path extends between the one of the two tips and the other of the two tips (paragraphs 0264-0265 and 0276-0286; Figures 14 and 15).
Referring to claim 6, Yates et al teaches wherein adjusting the power of the first signal comprises estimating an impedance of the target at a region adjacent the two tips and adjusting the power of the first signal based on the impedance (paragraphs 0264-0265 and 0276-0286; Figures 14 and 15).
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 7-8 are rejected under 35 U.S.C. 103 as being unpatentable over Yates et al (2019/0201091) as applied to claim 1 above, and further in view of Nott et al (2019/0274716).
Referring to claim 7, Yates et al fails to teach a band pass filter. Nott et al teaches an analogous method for providing electrosurgery comprising applying a first band pass filter along the first path around the first frequency; and applying a second band pass filter along the second path around the second frequency (paragraphs 0691-0692). 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 method of electrosurgery, as taught by Yates et al, to apply a first and second band pass filter, as taught by Nott et al, in order to tune to different frequencies and the location of the tissue grasped by the end effector corresponds to the particular detected signals (paragraphs 0691-0692).
Referring to claim 8, Yates et al fails to teach a band pass filter. Nott et al teaches an analogous method wherein the first band pass filter and the second band pass filter have varying frequencies (paragraphs 0691-0692), however fails to expressly teach that they do not overlap. Due to a lack of disclosed criticality or unexpected result 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 first and second band pass filters, as taught by Nott et al, to not have overlapping frequency ranges, 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
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SAMANTHA M GOOD whose telephone number is (571)270-7480. The examiner can normally be reached Mon to Wed, 7am to 3pm.
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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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/SAMANTHA M GOOD/Examiner, Art Unit 3794
/MICHAEL F PEFFLEY/Primary Examiner, Art Unit 3794
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