DETAILED ACTION
This action is in response to preliminary amendments received on 7/24/2024. It is acknowledged that claims 7, 10 and 12 have been amended and new claims 13-20 added. A complete action on the merits of claims 1-20 follows below.
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 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.
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 7-9 and 13-17 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 pre-AIA the applicant regards as the invention.
Claim 7 recites the limitation “the secondary coil of the high-frequency transformer”. There is insufficient antecedent basis for this limitation in the claim. It is noted that claim 7 depends on claim 1, which does not introduce a transformer nor a secondary coil. It is therefore unclear what secondary coil of the high-frequency transformer is being referred to. Clarification and appropriate correction is required.
Claims 8-9 and 13-17 are rejected due to dependency over claim 7.
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, 6, 12 and 18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hameed (US Patent No. 8,486,058).
Regarding Claim 1, Hameed teaches a high-frequency circuit for a low-temperature biopsy (“present invention provides an Electro Surgical Generator (ESG) optimized for lung biopsy” abstract), comprising a control circuit (controller Fig. 1) and an amplification circuit (“the final amplifier (final output)” Col. 6, ll. 39-40 and Fig. 2), wherein the amplification circuit comprises: an amplification unit and a high-frequency power transistor Q2 (Fig. 2); an input end of the amplification unit (through R2 at the bottom of Fig. 2) is connected to an output end of the control circuit (Fig. 1 shows the connection of the controller and the final output and Fig. 4 shows the timing circuit in the controller), to receive a high-frequency driving signal generated by the control circuit (Col. 4, ll. 59-62); an output end of the amplification unit is connected to a base of the high-frequency power transistor Q2 (Fig. 2), and a collector of the high-frequency power transistor is a high-frequency energy output end or connected to a high-frequency energy output end (output shown in Fig. 2); and the high-frequency energy output end outputs high-frequency energy (Col. 6, ll. 58-60 and Fig. 1).
Regarding Claim 2, Hameed teaches wherein the amplification unit comprises: a power transistor Q1 and a transformer T1; and a base of the power transistor Q1 is connected to the output end of the control circuit, to receive a high-frequency driving signal generated by the control circuit (through R2 at the bottom of Fig. 2); and a collector of the power transistor Q1 is connected to a first end of a primary coil of the transformer T1 (Fig. 2), and a first end of a secondary coil of the transformer is connected to the base of the high-frequency power transistor Q2 (Fig. 2).
Regarding Claim 6, Hameed teaches further comprising: a high-frequency transformer T2, wherein the high-frequency transformer is connected in series between the collector of the high-frequency power transistor Q2 and the high-frequency energy output end (marked output in Fig. 2).
Regarding Claim 12, Hameed teaches a high-frequency system for a low-temperature biopsy, wherein the high-frequency system is used for a biopsy (“present invention provides an Electro Surgical Generator (ESG) optimized for lung biopsy” abstract), and comprises a high-frequency circuit for the low-temperature biopsy according to claim 1 (see the rejection of claim 1).
Regarding Claim 18, Hameed teaches wherein the amplification unit comprises: a power transistor Q1 and a transformer T1; and a base of the power transistor Q1 is connected to the output end of the control circuit (through R1 shown on the bottom of Fig. 2), to receive a high-frequency driving signal generated by the control circuit (Col. 4, ll. 59-62); and a collector of the power transistor Q1 is connected to a first end of a primary coil of the transformer (Fig. 2), and a first end of a secondary coil of the transformer is connected to the base of the high-frequency power transistor Q2 (Fig. 2).
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 3 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Hameed as applied above in view of Behl (US Patent No. 5,817,092) in view of Winstrom (US Pub. No. 2020/0323577).
Regarding Claims 3 and 19, Hameed teaches further comprising: a first capacitor, a second capacitor, a first current-limiting resistor and a second current-limiting resistor (“the circuitry comprises at least one capacitor and at least one resistor. More preferably, there are three capacitors and two resistors” Col. 7, ll. 65-67 and Fig. 2); however, only shows a resistor R1 connected between the output end of the control circuit and the base of the power transistor Q1 without showing any capacitor and the second current-limiting resistor are sequentially connected in series between the first end of the secondary coil of the transformer and the base of the high- frequency power transistor.
In the same field of invention, Behl teaches “the control circuit is a timing circuit, such as an RC circuit that is formed by placing a resistor in the connector in series with a capacitor in the power supply upon connection of the probe to the power supply. The timing circuit is employed to send a signal to enable the delivery of RF current to the probe for a specified period of time” in Col. 5, ll. 14-20. Therefore, it would have been obvious to one having ordinary skill in the art prior to the effective filing date of the current invention to add a capacitor in series with the resistor R1 of Hameed in order to better control the delivery of the current from the timing circuit to the circuit shown in Fig. 2 of Hameed; thereby the first capacitor and the first current-limiting resistor R1 would be sequentially connected in series between the output end of the control circuit and the base of the power transistor, but not the second capacitor and the second current-limiting resistor are sequentially connected in series between the first end of the secondary coil of the transformer and the base of the high- frequency power transistor.
In the same field of invention, Winstrom teaches “Each of the at least first and second RC banks 230, 231 includes a resistor connected to a first side of a capacitor and a circuit return connected to the second side of the capacitor. The current in the transformer secondary 214 of the transformer 208 (e.g., the current flowing in the patient) is controlled by the electrical properties (e.g., resistance, impedance, or the like) of the feedback resistor 234” in [0041] and shown in Fig. 2. It would have been obvious to one having ordinary skill in the art prior to the effective filing date of the current invention to add a current-limiting resistor sequentially connected in series between the first end of the secondary coil of the transformer and the base of the high- frequency power transistor of Hameed in order to control the current flowing from the second winding of the transformer in the circuit to the output as Winstrom teaches.
Claims 4-5 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Hameed as applied above in view of Pivonka (US Pub. No. 2018/0256906).
Regarding Claim 4, Hameed teaches the invention as applied above and although teaches a timing circuit and a DC-DC converter, does not teach further comprising: a reference voltage circuit.
In the same field of invention, Pivonka teaches “a tool selected from the group consisting of: MRI; ultrasound imager; electromyogram; tissue biopsy device; a device configured to test displacement as a function of load for a spine; and combinations thereof” in [0040] and further teaches “Controller 250 and/or any other component of each implantable device 200 can comprise an integrated circuit comprising one or more components selected from the group consisting of: matching network; rectifier; DC-DC converter; regulator; bandgap reference; overvoltage protection; overcurrent protection; active charge balance circuit; analog to digital converter (ADC); digital to analog converter (DAC); current driver; voltage driver; digital controller; clock generator; data receiver; data demodulator; data modulator; data transmitter; electrode drivers; sensing interface analog front end; power management circuit; energy storage interface; memory register; timing circuit; and combinations of one or more of these” in [0539].
Since bandgap reference is a specific type of reference voltage circuit, in view of the teachings of Pivonka it would have been obvious to one having ordinary skill in the art prior to the effective filing date of the current invention to add a combination of a bandgap reference (reference voltage circuit) and timing circuit to the controller of Hameed in order to provide a fixed, stable DC output voltage to the circuit; thereby an output end of the reference voltage circuit would be connected to the base of the high-frequency power transistor Q2 (though R2 Fig. 4 of Hameed).
Regarding Claim 5, Hameed in view of Pivonka teaches wherein the reference voltage circuit comprises: a reference voltage providing circuit (the combination of a timing circuit and a reference voltage (bandgap voltage) is taught by Pivonka [0539]) and a reference voltage filter circuit (“A capacitor is used with a resistor in a timing circuit. It can also be used as a filter, to block DC signals but pass AC signals” Col. 5, ll. 5-7 of Hameed), wherein an output end of the reference voltage providing circuit is connected to an input end of the reference voltage filter circuit (the timing circuit is coupled to the capacitor acting as a filter, thus the output end of the reference voltage providing circuit would also be connected to an input end of the reference voltage filter circuit), and an output end of the reference voltage filter circuit is connected to the base of the high-frequency power transistor (through R2 in Fig. 2 of Hameed).
Regarding Claim 10, Hameed in view of Pivonka teaches wherein a frequency of the high-frequency energy is greater than or equal to 1.7 MHz (Hameed teaches “frequency, pulse width, and amplitude of the energy output (most commonly RF output for energy in the radiofrequency range) to the patient are all adjustable in real time” in Col. 6, ll. 58-60 and Pivonka teaches the transmission signal having a high frequency in a range higher than 1.7 MHz in [0127] and [0484]).
Claims 7, 9, 13 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Hameed as applied above in view of Janzen (US Pub. No. 2006/0111705).
Regarding Claims 7 and 20, Hameed teaches the invention as applied above, but is silent in teaching further comprising: a rectifying circuit, wherein the rectifying circuit is connected in series between the secondary coil of the high-frequency transformer and the high-frequency energy output end.
In the same field of invention, Jansen teaches “second output of the amplifier 341 is connected to an output transformer 345. The output transformer 345 has an output connected to an input of the rectifier 347” in [0097] and as shown in Fig. 14 the rectifying circuit is connected in series between the secondary coil of the high-frequency transformer and the high-frequency energy output end.
It would have been obvious to one having ordinary skill in the art prior to the effective filing date of the current invention to add a rectifying circuit in series between the secondary coil of the high-frequency transformer T2 and the high-frequency energy output end of Hameed in order to rectify the output signal as it travels from the high-frequency transformer T2 and the high-frequency energy output in Fig. 2 of Hameed.
Regarding Claim 9, Hameed teaches further comprising: a filter circuit, wherein the filter circuit is connected in series between the output ends of the rectifying circuit and the high-frequency energy output end (Hameed teaches positioning a capacitor C4 right before the output, examiner takes the position that a capacitor can act as a filter by blocking DC signal allowing AC to pass as Hameed teaches “A capacitor is used with a resistor in a timing circuit. It can also be used as a filter, to block DC signals but pass AC signals” in Col. 5, ll. 5-7; therefore, capacitor C4 is here interpreted to be a filter circuit, wherein the filter circuit would be connected in series between the output ends of the rectifying circuit (as taught by Janzen) and the high-frequency energy output end seen in Fig. 2 of Hameed).
Regarding Claim 13, Hameed teaches wherein the amplification unit comprises: a power transistor Q1 and a transformer T1; and a base of the power transistor Q1 is connected to the output end of the control circuit, to receive a high-frequency driving signal generated by the control circuit (through R2 at the bottom of Fig. 2); and a collector of the power transistor Q1 is connected to a first end of a primary coil of the transformer T1 (Fig. 2), and a first end of a secondary coil of the transformer is connected to the base of the high-frequency power transistor Q2 (Fig. 2).
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Hameed in view of Janzen as applied above and further in view of Behl and Winstrom.
Regarding Claims 3 and 19, Hameed teaches further comprising: a first capacitor, a second capacitor, a first current-limiting resistor and a second current-limiting resistor (“the circuitry comprises at least one capacitor and at least one resistor. More preferably, there are three capacitors and two resistors” Col. 7, ll. 65-67 and Fig. 2); however, only shows a resistor R1 connected between the output end of the control circuit and the base of the power transistor Q1 without showing any capacitor and the second current-limiting resistor are sequentially connected in series between the first end of the secondary coil of the transformer and the base of the high- frequency power transistor.
In the same field of invention, Behl teaches “the control circuit is a timing circuit, such as an RC circuit that is formed by placing a resistor in the connector in series with a capacitor in the power supply upon connection of the probe to the power supply. The timing circuit is employed to send a signal to enable the delivery of RF current to the probe for a specified period of time” in Col. 5, ll. 14-20. Therefore, it would have been obvious to one having ordinary skill in the art prior to the effective filing date of the current invention to add a capacitor in series with the resistor R1 of Hameed in order to better control the delivery of the current from the timing circuit to the circuit shown in Fig. 2 of Hameed; thereby the first capacitor and the first current-limiting resistor R1 would be sequentially connected in series between the output end of the control circuit and the base of the power transistor, but not the second capacitor and the second current-limiting resistor are sequentially connected in series between the first end of the secondary coil of the transformer and the base of the high- frequency power transistor.
In the same field of invention, Winstrom teaches “Each of the at least first and second RC banks 230, 231 includes a resistor connected to a first side of a capacitor and a circuit return connected to the second side of the capacitor. The current in the transformer secondary 214 of the transformer 208 (e.g., the current flowing in the patient) is controlled by the electrical properties (e.g., resistance, impedance, or the like) of the feedback resistor 234” in [0041] and shown in Fig. 2. It would have been obvious to one having ordinary skill in the art prior to the effective filing date of the current invention to add a current-limiting resistor sequentially connected in series between the first end of the secondary coil of the transformer and the base of the high- frequency power transistor of Hameed in order to control the current flowing from the second winding of the transformer in the circuit to the output as Winstrom teaches.
Claims 15-17 are rejected under 35 U.S.C. 103 as being unpatentable over Hameed in view of Janzen and further in view of Pivonka.
Regarding Claim 15, Hameed teaches the invention as applied above and although teaches a timing circuit and a DC-DC converter, does not teach further comprising: a reference voltage circuit.
In the same field of invention, Pivonka teaches “a tool selected from the group consisting of: MRI; ultrasound imager; electromyogram; tissue biopsy device; a device configured to test displacement as a function of load for a spine; and combinations thereof” in [0040] and further teaches “Controller 250 and/or any other component of each implantable device 200 can comprise an integrated circuit comprising one or more components selected from the group consisting of: matching network; rectifier; DC-DC converter; regulator; bandgap reference; overvoltage protection; overcurrent protection; active charge balance circuit; analog to digital converter (ADC); digital to analog converter (DAC); current driver; voltage driver; digital controller; clock generator; data receiver; data demodulator; data modulator; data transmitter; electrode drivers; sensing interface analog front end; power management circuit; energy storage interface; memory register; timing circuit; and combinations of one or more of these” in [0539].
Since bandgap reference is a specific type of reference voltage circuit, in view of the teachings of Pivonka it would have been obvious to one having ordinary skill in the art prior to the effective filing date of the current invention to add a combination of a bandgap reference (reference voltage circuit) and timing circuit to the controller of Hameed in order to provide a fixed, stable DC output voltage to the circuit; thereby an output end of the reference voltage circuit would be connected to the base of the high-frequency power transistor Q2 (though R2 Fig. 4 of Hameed).
Regarding Claim 16, Hameed in view of Pivonka teaches wherein the reference voltage circuit comprises: a reference voltage providing circuit (the combination of a timing circuit and a reference voltage (bandgap voltage) is taught by Pivonka [0539]) and a reference voltage filter circuit (“A capacitor is used with a resistor in a timing circuit. It can also be used as a filter, to block DC signals but pass AC signals” Col. 5, ll. 5-7 of Hameed), wherein an output end of the reference voltage providing circuit is connected to an input end of the reference voltage filter circuit (the timing circuit is coupled to the capacitor acting as a filter, thus the output end of the reference voltage providing circuit would also be connected to an input end of the reference voltage filter circuit), and an output end of the reference voltage filter circuit is connected to the base of the high-frequency power transistor (through R2 in Fig. 2 of Hameed).
Regarding Claim 17, Hameed teaches further comprising: a high-frequency transformer T2, wherein the high-frequency transformer is connected in series between the collector of the high-frequency power transistor Q2 and the high-frequency energy output end (marked output in Fig. 2).
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Hameed in view of Pivonka as applied to claim 10 above, in view of Takats (US Pub. No. 2018/0059119).
Regarding Claim 11, Hameed teaches the invention as applied above, but not specifically wherein a peak voltage of the high-frequency energy is greater than 300 Vp.
In the same field of invention Takats teaches “apparatus may further comprise a voltage supply arranged and adapted to supply a voltage to the one or more electrodes, wherein the voltage supply may have a voltage limit of less than 3 kV, 2.5 kV, 2 kV, 2.5 kV, 2 kV, 1.5 kV, 1 kV, 500 V, 400 V, 350 V, 300 V, 250 V, 200 V, 150 V, 100 V, 50 V, 20 V or 10 V peak or RMS” in [0170] and wherein “one or more electrodes may comprise one or more hooks, one or more grabbers, one or more blades, one or more knives, one or more serrated blades, one or more probes, one or more biopsy tools, one or more robotic tools, one or more pincers, one or more electrosurgical pencils, one or more forceps, one or more bipolar forceps, one or more coagulation devices, one or more irrigation devices and one or more imaging tools” in [0219].
It would have been obvious to one having ordinary skill in the art prior to the effective filing date of the current invention to supply a peak voltage of the high-frequency energy is greater than 300 Vp as claimed for the specific usage 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).
Allowable Subject Matter
Claim 8 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Regarding Claim 8, Hameed in view of Jansen teaches wherein the invention as applied above in addition to a rectifying circuit; however, neither alone or in combination teach wherein the rectifying circuit comprises: a first rectifying inductor, a second rectifying inductor, a third rectifying inductor, a fourth rectifying inductor, a fifth rectifying inductor, a sixth rectifying inductor, a first rectifying capacitor, a second rectifying capacitor, a third rectifying capacitor, and a fourth rectifying capacitor, wherein a first end of the first rectifying inductor is connected to a first end of the secondary coil of the high-frequency transformer, and a first end of the second rectifying inductor is connected to a second end of the secondary coil of the high-frequency transformer; a second end of the first rectifying inductor is connected to a first end of the third rectifying inductor, and a second end of the second rectifying inductor is connected to a first end of the fourth rectifying inductor; a second end of the third rectifying inductor is connected to a first end of the fifth rectifying inductor, and a second end of the fourth rectifying inductor is connected to a first end of the sixth rectifying inductor; a node between the first rectifying inductor and the third rectifying inductor is connected to a first end of the first rectifying capacitor, and a node between the second rectifying inductor and the fourth rectifying inductor is connected to a second end of the first rectifying capacitor; a node between the third rectifying inductor and the fifth rectifying inductor is connected to a first end of the second rectifying capacitor, a second end of the second rectifying capacitor is connected to a first end of the third rectifying capacitor, and a node between the fourth rectifying inductor and the sixth rectifying inductor is connected to a second end of the third rectifying capacitor; the fourth rectifying capacitor is connected in parallel to both ends of the second rectifying capacitor; and a second end of the fifth rectifying inductor and a second end of the sixth rectifying inductor are output ends of the rectifying circuit as claimed.
Conclusion
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/KHADIJEH A VAHDAT/Primary Examiner, Art Unit 3794
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