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.
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-10 and 18-22, and Species A corresponding to Figures 3A-4B in the reply filed on 20 August 2026 is acknowledged.
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.
(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 and 3-6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Woloszko et al. (US 2020/0397500).
Regarding claim 1, Woloszko discloses a bipolar electrosurgical wand (see Figs. 1-4B), comprising: a tubular end effector (see Figs. 3A-3D) comprising an electrically insulative spacer (see insulating spacer 304, [0052]), a return electrode (see return electrode 306) and an active electrode at a distal end thereof (see active electrode 300), the insulative spacer supporting and electrically insulating the active electrode (see [0052]); wherein the active electrode defines an annular portion (see screen portion 320) and a tip projection extending distally from the annular portion (see blade portion 322 extending distally from screen portion 320, Fig. 3B), the annular portion coextensive with the insulative spacer (as shown in Fig. 3B) and the tip projection extending distally from a distal-most surface of the insulative spacer (as shown in Fig. 3B), and wherein both the tip projection and annular portion share a continuous top planar surface (as shown in Fig. 3A); wherein the annular portion includes a 360-degree bounded hole therethrough that defines an aspiration opening configured to remove at least one of tissue, tissue debris or fluid therethrough (see aspiration aperture 310, [0055]); wherein the aspiration opening defines a constant cross section (the aperture 310 maintains a constant cross section along the transverse axis) and extends from the active electrode planar top surface through to a bottom surface of the active electrode at an incline angle to the planar top surface (as can be appreciated in Fig. 3A).
Regarding claim 3, Woloszko further discloses wherein the active electrode defines an outermost peripheral edge surface, that includes bilateral concave edge surfaces that are coextensive with each other at a transition from the annular portion to the tip projection and wherein the bilateral concave edge surfaces are coextensive with a distal-most end surface of the insulative spacer (see curve portions 324 that are bilateral, Fig. 3B, [0055]).
Regarding claim 4, Woloszko further discloses wherein the aspiration opening incline angle is at least 15 degrees (see [0054]).
Regarding claim 5, Woloszko further discloses wherein the incline angle is oriented such that an edge boundary of the aspiration opening at the bottom surface is axially offset, proximally from a corresponding edge boundary of the aspiration opening that is coincident with the top planar surface (as can be appreciated in Fig. 3A).
Regarding claim 6, Woloszko further discloses wherein edge boundary at the bottom surface is configured to further digest aspirated tissue and tissue debris that flows through the aspiration opening (since the edge boundary at the bottom surface as disclosed by Woloszko is electrically conductive, it is configured to further digest tissue and tissue debris as required by the claim).
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 2 and 8-9 are rejected under 35 U.S.C. 103 as being unpatentable over Woloszko et al. (US 2020/0397500).
Regarding claim 2, Woloszko discloses the limitations of claim 1, however fails to specifically disclose wherein the tip projection has a maximum lateral width that is less than half a corresponding maximum lateral width of the annular portion.
However, It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to cause the tip projection of Woloszko to have a maximum lateral width that is less than half a corresponding maximum lateral width of the annular portion since it has been held that “where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device” Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 SPQ 232 (1984). In the instant case, Woloszko discloses the lateral width of the tip projection that comes to a pointed tip 323 is already shown to be smaller than the lateral width of the annular portion (se Figs. 3A-3C), and the tip projection of Woloszko would not operate differently with a maximum lateral width that is less than half a corresponding maximum lateral width of the annular portion since the tip projection in Woloszko would still be operation for its intended purpose of fine dissection and for forming an area of higher current intensities (see [0056]), therefore the device would function appropriately having the claimed diameter. Further, applicant places no criticality on the ratio claimed, indicating simply that the ratio of maximum lateral widths “may” be at least 2:1 or may be at least 3:1 (Specification pg. 24).
Regarding claims 8 and 9, Woloszko discloses the limitations of claim 1, however fails to further disclose wherein the aspiration opening cross section has a first end, coincident with a bisecting plane of the active electrode that defines a first radius of curvature and an opposing end coincident with the bisecting plane that has a radius of curvature that is at least twice the first radius of curvature, and wherein the first radius of curvature is configured to diminish a plasma-remote zone through the aspiration opening and wherein the second radius of curvature is configured to provide an expanded inner surface area for further digesting tissue and tissue debris that flows through the aspiration opening.
However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have made the aspiration opening cross section such that a first end, coincident with a bisecting plane of the active electrode defines a first radius of curvature and an opposing end coincident with the bisecting plane has a radius of curvature that is at least twice the first radius of curvature, and wherein the first radius of curvature is configured to diminish a plasma-remote zone through the aspiration opening and wherein the second radius of curvature is configured to provide an expanded inner surface area for further digesting tissue and tissue debris that flows through the aspiration opening as a result of the change in shape. A change in form or shape is generally recognized as being within the level of ordinary skill in the art, absent any showing of unexpected results. In re Dailey et al., 149 USPQ 47. See MPEP 2144(IV)(B). In the instant case, there is no showing of unexpected results of record for the claimed form or shape.
Allowable Subject Matter
Claims 7 and 10 are 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.
Claims 18-22 are allowed.
The following is a statement of reasons for the indication of allowable subject matter: The closest prior art of record, Woloszko et al. (US 2020/0397500), Goode et al. (US 2018/0280074), Thomas et al. (US 2009/0048592), and Humble (US 2011/0196366), fails to reasonably teach or suggest wherein the edge boundary at the bottom surface further comprises at least one notch configured to further digest aspirated tissue and tissue debris that flows through the aspiration opening, or wherein the return electrode has bilateral arms that extend around the distal-most end surface of the insulative spacer, defining distal facing surfaces of the return electrode coextensive with the active electrode tip projection, the bilateral arms configured to aid in plasma initiation at the tip projection when considered in combination with the additional requirements of the claims, respectively. The closest prior art generally teaches an edge boundary at the bottom surface of an aspiration opening, a notch in the bottom side of the electrode (see Thomas Figure 4), and further teaches a return electrode having bilateral arms, however the closest prior art fails to provide a sufficient teaching or suggestion to modify the bottom edge boundary to have a notch that is configured to further digest aspirated tissue as required by the claim, or wherein the return electrode bilateral arms extend around the distal-most end surface of the insulative spacer, defining distal facing surfaces of the return electrode coextensive with the active electrode tip projection as required.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SEAN W COLLINS whose telephone number is (408)918-7607. The examiner can normally be reached M-F 9:00 AM-5:00 PM ET.
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/SEAN W COLLINS/Primary Examiner, Art Unit 3794
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