DETAILED ACTION
Applicant's amendments and remarks, filed 7/21/26, are fully acknowledged by the Examiner. Currently, claims 1-15, 17-18, and 21 are pending with claims 16 and 19-20 canceled, and claims 14, 16, and 18 amended. The following is a complete response to the 7/21/26 communication.
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.
Claim Objections
Claim 18 is objected to because of the following informalities: "a second channel connected to a second window the proximal portion" should have a comma between "window" and "the Appropriate correction is required.
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.
Claim(s) 1-4, 8-9, 13 is/are rejected under 35 U.S.C. 103 as unpatentable over Goble (US 2006/0264929).
Regarding claim 1, Goble teaches a surgical device to deliver energy to tissue (surgical device 12), the surgical device comprising:
a hand piece operable to control the surgical device (handpiece 1 as in par. [0057]);
a shaft extending along a longitudinal axis (shaft 2 along a longitudinal axis), the shaft including a proximal portion and a distal portion opposite the proximal portion (distal end ending in 3 and proximal end connecting to handpiece 1), the proximal portion connected to the hand piece (proximal portion of 2 connected to handpiece 1 as in Fig. 1);
an end effector connected to the distal portion of the shaft (end effector 3), the end effector comprising:
an active electrode configured to receive energy from the hand piece and deliver the energy to tissue (electrode 30 as in Fig. 7);
an insulator at least partially surrounding the active electrode (fig. 8, insulator 33); and
a return electrode adjacent the insulator, the return electrode configured to receive energy from the active electrode through tissue (return electrodes 38 and 39 adjacent 33).Goble does not necessitate a heat pipe. However, Goble does teach a different embodiment with a heat pipe connected to the return electrode and extending at least partially through the shaft (fig. 14a heat pipe 127), the heat pipe configured to transfer heat from the return electrode to the hand piece (127 transfers heat from the return electrode as in par. [0075]).It would have been obvious to one of ordinary skill in the art to modify the embodiment of Goble with the Fig. 14a heat pipe, as an alternate way of drawing heat away from the electrodes that still works to cool the electrode.
Regarding claim 2, Goble teaches wherein the return electrode is split to include a first portion
and a second portion defining a gap therebetween (38 and 39 with a gap between), the insulator and the active electrode located at least partially within the gap between the first portion and the second portion (insulator 33 between 38 and 39 as in at least Fig. 10f).
Regarding claim 3, Goble teaches wherein the active electrode and the insulator are positioned medially with respect to the first portion and the second portion of the return electrode (electrode 30 positioned medial with respect to 38 and 39 as in Fig. 7).
Regarding claim 4, Goble wherein the return electrode has a substantially U-shape (u-shape as in Fig. 7).
Regarding claim 8, Goble teaches wherein the return electrode includes a first return electrode connected to a first side of the insulator (electrode 38 on one side of 33), and wherein the surgical device includes a second return electrode connected to a second side of the insulator (39 on a second side of 33).
Regarding claim 9, Goble teaches wherein the first return electrode is connected to the heat pipe, and wherein the second return electrode is connected to the heat pipe (electrode design connected to heat pipe 127 as in par. [0075]).
Regarding claim 13, Goble teaches wherein the active electrode and the return electrode together define a cutting tip having a hook-shape (hook shape as in Fig. 7).
Claim(s) 5-7, 10-11, 14-15, 17-18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Goble in view of Heim (US 6,241,723).
Regarding claim 5, Goble is not explicit regarding: a plug connected to a proximal portion of the
return electrode, the plug located at least partially within the heat pipe to transfer heat from the return electrode to the hand piece.
However, Heim teaches a plug connected to a proximal portion of the return electrode (152 at a proximal portion of electrode), the plug located at least partially within the heat pipe to transfer heat from the return electrode to the hand piece (152 within heat pipe 150).
It would have been obvious to one of ordinary skill in the art to modify Goble with the plug of Heim, as a way of effective thermal energy removal.
Regarding claim 6, Goble is not explicit, but Heim teaches wherein the plug forms a seal of a distal portion of the heat pipe (plug 152 forms seal with distal portion of 150).
It would have been obvious to one of ordinary skill in the art to modify Goble with the plug of Heim, as a way of effective thermal energy removal.
Regarding claim 7, Goble is not explicit, but Heim teaches wherein the plug is integrally formed with the return electrode (152 formed with 120).
It would have been obvious to one of ordinary skill in the art to modify Goble with the plug of Heim, as a way of effective thermal energy removal.
Regarding claim 10, Goble is not explicit regarding a plug.
Heim teaches a plug connected to a proximal portion of the first return electrode and a proximal portion of the second return electrode (152 at a proximal portion of electrode), the plug located at least partially within the heat pipe to transfer heat from the first return electrode and the second return electrode to the hand piece (152 within heat pipe 150).
It would have been obvious to one of ordinary skill in the art to modify Goble with the plug of Heim, as a way of effective thermal energy removal.
Regarding claim 11, Goble is not explicit wherein the proximal portion of the first return electrode extends at least partially into a first channel of the plug, and wherein the proximal portion of the second return electrode extends at least partially into a second channel of the plug.However, Heim teaches an electrode extending into a first channel of the plug (120 into a channel with 152 as in Fig. 7).
It would have been obvious to one of ordinary skill in the art to modify Goble with the plug of Heim, as a way of effective thermal energy removal. One of ordinary skill in the art would appreciate that the two return electrodes of the return electrode would be connected to the plug in order to allow for the phase change heat sinking to function.
Regarding claim 14, Goble teaches a surgical device to deliver energy to tissue, the surgical device comprising:
a hand piece operable to control the surgical device (handpiece 1 as in par. [0057]);
a shaft extending along a longitudinal axis (shaft 2 along a longitudinal axis), the shaft including a proximal portion and a distal portion opposite the proximal portion (distal end ending in 3 and proximal end connecting to handpiece 1), the proximal portion connected to the hand piece (proximal portion of 2 connected to handpiece 1 as in Fig. 1);
an end effector connected to the distal portion of the shaft (3 connected to 2), the end effector comprising:
a return electrode including a first portion and a second portion defining a slot therebetween (return electrode portions 38 and 39 with a space between);
an active electrode located at least partially within the slot (30 between 38 and 39 as in Fig. 7), the active electrode configured to receive energy from the hand piece and deliver the energy to tissue (at least par. [0064]); and
an insulator located at least partially within the slot and at least partially surrounding the active electrode (33 surrounding 30 as in at least Fig. 8).Goble does not necessitate a heat pipe. However, Goble does teach a different embodiment with a heat pipe connected to the return electrode and extending at least partially through the shaft (fig. 14a heat pipe 127), the heat pipe configured to transfer heat from the return electrode to the hand piece (127 transfers heat from the return electrode as in par. [0075]).It would have been obvious to one of ordinary skill in the art to modify the embodiment of Goble with the Fig. 14a heat pipe, as an alternate way of drawing heat away from the electrodes that still works to cool the electrode.Goble is not explicit regarding: a plug connected to the first and second portion of the return electrode, the plug located at least partially within the heat pipe to transfer heat from the return electrode to the hand piece.
However, Heim teaches a plug connected to a proximal portion of the return electrode (152 at a proximal portion of electrode), the plug located at least partially within the heat pipe to transfer heat from the return electrode to the hand piece (152 within heat pipe 150).
It would have been obvious to one of ordinary skill in the art to modify Goble with the plug of Heim, as a way of effective thermal energy removal.
Regarding claim 15, Goble teaches wherein the active electrode and the insulator are positioned medially with respect to the first portion and the second portion of the return electrode (Fig. 7 with electrode between return electrode portions 38 and 39).
Regarding claim 17, Goble is silent regarding wherein the plug is integrally formed with the return electrode.
Heim teaches wherein the plug is integrally formed with the return electrode (152 formed with 120).
It would have been obvious to one of ordinary skill in the art to modify Goble with the plug of Heim, as a way of effective thermal energy removal.
Regarding claim 18, Goble teaches a surgical device to deliver energy to tissue, the surgical device comprising:
a hand piece operable to control the surgical device (handpiece 1 as in par. [0057]);
an end effector connected to the hand piece (3 connected to 1 via shaft 2), the end effector comprising:
a first return electrode and a second return electrode forming a gap therebetween (38 and 39 with a gap between as in Fig. 8); and
an active electrode located at least partially within the gap (30 between gap of 38 and 39), the active electrode configured to receive energy from the hand piece and deliver the energy to tissue (par. [0064]).Goble does not necessitate a heat pipe. However, Goble does teach a different embodiment with a heat pipe connected to the return electrode and extending at least partially through the shaft (fig. 14a heat pipe 127), the heat pipe configured to transfer heat from the return electrode to the hand piece (127 transfers heat from the return electrode as in par. [0075]).It would have been obvious to one of ordinary skill in the art to modify the embodiment of Goble with the Fig. 14a heat pipe, as an alternate way of drawing heat away from the electrodes that still works to cool the electrode.Goble is silent regarding comprising:
a plug connected to a proximal portion of the first return electrode and a proximal portion of the second return electrode, the plug located at least partially within the heat pipe to transfer heat from the first return electrode and the second return electrode to the hand piece.
However, Heim teaches a plug connected to a proximal portion of the return electrode (152 at a proximal portion of electrode), the plug located at least partially within the heat pipe to transfer heat from the return electrode to the hand piece (152 within heat pipe 150).
It would have been obvious to one of ordinary skill in the art to modify Goble with the plug of Heim, as a way of effective thermal energy removal.
Goble is silent wherein a plug connected to a proximal portion of the first return electrode an a proximal portion of the second return electrode, the plug located at least partially within the heat pip, the plug including:an electrode extending into a first channel connected to a first window, the proximal portion of the first electrode extending at least partially into the first channel to expose the first return electrode through the first window to transfer heat from the first return electrode to the hand piece; anda second channel connected to a second window the proximal portion of the second return electrode extending at least partially into the second channel to expose the second return electrode to fluid of the heat pipe through the second window to transfer heat from the second return electrode to be rejected from the surgical device.
However, Heim teaches an electrode extending into a first channel connected to a first window, the proximal portion of the first electrode extending at least partially into the first channel to expose the first return electrode through the first window to transfer heat from the first return electrode to the hand piece of the plug (120 into a channel via a window with phase change material 152 as in Fig. 7).
It would have been obvious to one of ordinary skill in the art to modify Goble with the plug of Heim, as a way of connecting the electrode to the rest of the device for effective thermal energy removal. One of ordinary skill in the art would appreciate that the two return electrodes of the return electrode would be connected to the plug in order to allow for connection to the heat pipe to both electrodes.
Regarding claim 19, Goble is silent regarding comprising:
a plug connected to a proximal portion of the first return electrode and a proximal portion of the second return electrode, the plug located at least partially within the heat pipe to transfer heat from the first return electrode and the second return electrode to the hand piece.
However, Heim teaches a plug connected to a proximal portion of the return electrode (152 at a proximal portion of electrode), the plug located at least partially within the heat pipe to transfer heat from the return electrode to the hand piece (152 within heat pipe 150).
It would have been obvious to one of ordinary skill in the art to modify Goble with the plug of Heim, as a way of effective thermal energy removal.
Regarding claim 20, Goble is silent wherein the proximal portion of the first return electrode extends at least partially into a first channel of the plug, and wherein the proximal portion of the second return electrode extends at least partially into a second channel of the plug.
However, Heim teaches an electrode extending into a first channel of the plug (120 into a channel with 152 as in Fig. 7).
It would have been obvious to one of ordinary skill in the art to modify Goble with the plug of Heim, as a way of effective thermal energy removal. One of ordinary skill in the art would appreciate that the two return electrodes of the return electrode would be connected to the plug in order to allow for the phase change heat sinking to function.
Claim(s) 12 and 21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Goble in view of Heim, in further view of Batchelor (US 2018/0325578).
Regarding claim 12, Goble is not explicit wherein the proximal portion of the first return
electrode includes a base and includes a plurality of fins extending laterally from the base to transfer heat from the first return electrode to the heat pipe.
However, Batchelor teaches a proximal portion of an electrode includes a base and plurality of fins extending from the base to transfer heat (par. [0043] fins as part of a heat sink at a proximal portion of a body near the heat pipe to increase surface area).
It would have been obvious to one of ordinary skill in the art to modify Goble with the heat sink and fins of Batchelor, allowing for structure for better heat dissipation.
Regarding claim 21, Goble teaches wherein the proximal portion of the first return electrode includes a base and includes a plurality of fins extending laterally from the base to transfer heat from the first return electrode to the heat pipe.
However, Batchelor teaches a proximal portion of an electrode includes a base and plurality of fins extending from the base to transfer heat (par. [0043] fins as part of a heat sink at a proximal portion of a body near the heat pipe to increase surface area).
It would have been obvious to one of ordinary skill in the art to modify Goble with the heat sink and fins of Batchelor, allowing for structure for better heat dissipation.
Response to Arguments
Applicant’s arguments, see the remarks, filed 7/21/26, with respect to the rejection(s) of claim(s) 1-21 under 35 USC 102(a)(1) or 103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of a new interpretation of Goble.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BO OUYANG whose telephone number is (571)272-8831. The examiner can normally be reached M-F 8-5 EST.
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/BO OUYANG/Examiner, Art Unit 3794
/MICHAEL F PEFFLEY/Primary Examiner, Art Unit 3794
