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.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 11/08/2024 was filed after the mailing date of the application on 11/08/2024. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
Regarding claim 1 uses the phrase “wireless communication means” and is subject to a three-prong analysis below.
The claim uses the limitation “wireless communication means” for performing the claimed function.
The term “wireless communication means” is modified by functional language “configured for communicating data signals”.
The term “wireless communication means” is not modified by sufficient structure, material, or acts to perform the recited function.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitations are: “communication control device” in claim 5, “matching circuit” in claim 10. See the three prong analysis for each claim below.
Regarding claim 5, “communication control device”
The claim recites a generic placeholder “communication control device” for performing the claimed function.
The term “communication control device” is modified by functional language “configured to block communication”.
The term “communication control device” is not modified by sufficient structure, material, or acts to perform the recited function.
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 1-4, 7-8, and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Yates (US 2015/0190189), herein after “Yates” in view of Nott (US 2019/0201047), herein after “Nott”.
Regarding claim 1, Yates teaches “An electrosurgical instrument (Fig. 1) having a HF energy cable (Fig. 1) configured for being supplied with HF energy (p.[0106]) from an electrosurgical generator, the electrosurgical instrument comprising a memory (memory circuit) comprising status of the information of the said electrosurgical instrument(p.[0064-65])… wherein the electrosurgical instrument further comprises a signal processing device configured for gathering and communicating gathered data of said electrosurgical instrument the signal processing device being communicatively connected to the wireless communication means (p.[0063], processor) comprising at least one sensor (electrodes p.[0072]) and/or actuator and an energy harvesting circuit (p.[0072]) configured for wirelessly harvesting energy from the HF energy supplied by the cable said energy harvesting circuit being a power supply for the signal processing device and/or the at least one sensor and/or the at least one actuator (p.[0072-0073])”.
Yates does not teach that the system uses wireless communication for communicating data signals between a memory and wireless communication, but Nott does in an analogous electrosurgical device. Nott teaches in p.[0430] that wireless communication circuits can be used to communicate between the surgical instrument and the electrical generator, as further shown in Fig. 8-11. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use a wireless communication means, as taught in Nott, in Yates. It is known in the art to use a simple substitution of a wired communication means with a wireless communication means to produce predictable results of transferring data between different components of the system.
Regarding claim 2, the limitations of claim 1 are taught as described above. Yates teaches “wherein the energy harvesting circuit is mounted at the HF energy cable or at an internal HF energy conductor of the electrosurgical instrument (Fig. 13)”.
Regarding claim 3, the limitations of claim 1 are taught as described above. Yates teaches “wherein the energy harvesting circuit is provided with an energy storage device (p.[0073], energy storage device 1314)”.
Regarding claim 4, the limitations of claim 1 are taught as described above. Yates does not teach "the use of a microcontroller is provided with the signal processing device", but Nott does in an analogous biomedical device. Nott teaches "the use of a microcontroller is provided with the signal processing device" in p.[1315], which states that circuits (including a signal processing device) can include microcontrollers. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use a microcontroller within a signal processing device. It is known in the art to use a simple substitution of a microcontroller within the signal processing device to produce predictable results of processing data.
Regarding claim 7, the limitations of claim 1 are taught as described above. Yates does not teach "wherein a data transfer device is provided which is operatively connected to the wireless communication means and to the signal processing device" but Nott does in an analogous electrosurgical device. Nott teaches "wherein a data transfer device is provided which is operatively connected to the wireless communication means and to the signal processing device (p.[0411], microcontroller 461], p[0430], p.[0429]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the system of Nott in Yates. It is known in the art to use data transfer devices to communicate data received from the sensors to be processed by a signal processing device and produce predictable results of relaying data from the sensors to the processing device.
Regarding claim 8, the limitations of claim 7 are taught as described above. Yates does not teach "wherein the data transfer device acts as the memory" but Nott does in an analogous electrosurgical device. Nott teaches "wherein the data transfer device acts as the memory (p.[0411], memory 468)". It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include a memory in a data transfer device, as taught in Nott, in Yates. The use of a memory "may store a technique, an equation, and/or a lookup table which can be employed by the microcontroller" and produces predictable results of adapting a technique or procedure based on the measurements taken by the sensors (p.[0429]).
Regarding claim 13, the limitations of claim 1 are taught as described above. Yates teaches “wherein the electrosurgical instrument (Fig. 15) is configured so as to be operated in a first state wherein energy is harvested and the signal processing device and/or the at least one sensor and/or the at least one actuator is run and/or the memory is accessed by the signal processing device (Fig. 15, 1504, 1506, 1508, 1510) and a second state wherein the wireless communication means is activated for data transmission to/from the electrosurgical generator (Fig. 15, 1502) said first state being selected during activation of the electrosurgical instrument and said second state being selected when the electrosurgical instrument is not activated (Fig. 15).”
Claim 5 is rejected under 35 U.S.C. 103 as unpatentable over Yates and Nott in view of Brannan (US 2022/0323151), herein after “Brannan”.
Regarding claim 5, the limitations of claim 1 are taught as described above. Yates nor Nott teach the limitation "wherein a communication control device is provided, said communication control device being configured to block communication via the wireless communication interface when the electrosurgical invention is in an activated state ", but Brannan does in an analogous electrosurgical generator device. Brannan teaches "wherein a communication control device is provided, said communcation control device being configured to block communication via the wireless communication interface when the electrosurgical invention is in an activated state (p.[0056])". It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the communication control device of Brannan in view of Yates/Nott. The use of a system to block signals during ablation is known in the art and produce predictable results of limiting interference generated by the application of energy that would otherwise damage other electronic components or the patient (p.[0005,0056]).
Claim 6 is rejected under 35 U.S.C. 103 as unpatentable over Yates, Nott, and Brannan in further view of Shelton IV (US 2023/0146947), herein after “Shelton”.
Regarding claim 6, the limitations of claim 5 are taught as described above. Neither Yates/Nott nor Brannan teach the limitation "wherein the activated state is determined by the activation of a hand switch of the electrosurgical instrument and/or by an automatic detecting circuit, depending on a magnitude of HF energy supplied", but Shelton does in analogous electrosurgical device. Shelton teaches "wherein the activated state is determined by the activation of a hand switch of the electrosurgical instrument and/or by an automatic detecting circuit, depending on a magnitude of HF energy supplied (p.[0797])". It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the system of Shelton in Yates/Nott. Using a hand switch to activate the electrosurgical instrument allows for the precise application of energy to the desired electrosurgical instrument and produces predictable results of preventing activation of the wrong surgical instrument to prevent undesirable consequences (p.[0797]).
Claim 9 is rejected under 35 U.S.C. 103 as unpatentable over Yates and Nott further in view of Sha (US 2024/0307088), herein after “Sha”.
Regarding claim 9, the limitations of claim 8 are taught as described above. Neither Yates nor Nott teaches "wherein the data transfer device is powered by the wireless communication means" but Sha does in an analogous electrosurgical device. Sha teaches "wherein the data transfer device is powered by the wireless communication means (p.[0047])". It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the system of Sha in Yates/Nott. It is known in the art to use power transmission lines to provide electrical power to the tool or the components to produce predictable results of powering the device for use.
Claims 10-12 are rejected under 35 U.S.C. 103 as unpatentable over Yates and Nott further in view of McPherson (US 2013/0345695), herein after “McPherson”.
Regarding claim 10, the limitations of claim 1 are taught as described above. Neither Yates nor Nott teaches "wherein a matching circuit is provided which is configured to match an antenna of the energy harvesting circuit to a frequency of the HF energy supplied" however McPherson does in an analogous electrosurgical delivery device. McPherson teaches "wherein a matching circuit is provided which is configured to match an antenna of the energy harvesting circuit to a frequency of the HF energy supplied (p.[0013,0018]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the system of McPherson in Yates/Nott. The use of the matching circuit allows for the energy to be harvested from ambient electromagnetic fields and produces predictable results of harvesting the desired energy to power the desired device (p.[0034]).
Regarding claim 11, the limitations of claim 10 are taught as described above. Neither Yates nor Nott teaches "wherein the matching circuit is switchable for an adaption to a second, different frequency of the HF energy" but McPherson does in an analogous electrosurgical device. McPherson teaches "wherein the matching circuit is switchable for an adaption to a second, different frequency of the HF energy (p.[0024])". It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the system of McPherson in Yates/Nott. The use of a secondary frequency allows for detection of control signals for controlling the circuit and produces predictable results of controlling the circuit (p.[0024]).
Regarding claim 12, the limitations of claim 11 are taught as described above. Neither Yates nor Nott teaches "wherein a switching of the matching circuit depends on a mode selected for operated of the electrosurgical instrument ", but McPherson does in an analogous electrosurgical device. McPherson teaches "wherein a switching of the matching circuit depends on a mode selected for operated of the electrosurgical instrument (p.[0080])", wherein the mode selected is for either generating a trickle charge for the device, generating energy for the device, etc. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the system of McPherson in Yates/Nott. Switching frequencies of the matching circuits allows for the appropriate energy to be applied based on the need of the device and produces predicable results of delivering the desired amount of energy to the device.
Claims 14-15 are rejected under 35 U.S.C. 103 as unpatentable over Yates and Nott in further view of Heckel (US 2015/0282863), herein after “Heckel”.
Regarding claim 14, the limitations of claim 1 are taught as described above. Yates does not teach "and an electrosurgical generator comprising a main control unit controlling an inverter for generating a HF energy being supplied to an output socket configured for plugging of a connector to the electrosurgical instrument" but Heckel does in an analogous electrosurgical device. Heckel teaches "and an electrosurgical generator comprising a main control unit controlling an inverter for generating a HF energy being supplied to an output socket configured for plugging of a connector to the electrosurgical instrument (Fig. 2 and p.[0041,0043,0049]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the electrosurgical generator of Heckel in Yates to teach the claimed invention. Using such an electrosurgical generator with an inverter allows for "maximum or optimal power transfer between the generator circuitry and the tissue" and produces predictable results of energy transfer (p.[0041]).
Regarding claim 15, the limitations of claim 14 are taught as described above. Yates/Nott does not teach "wherein the electrosurgical generator comprises a transceiver for close range communication being connected to the main control unit and being operatively connected to a complementary transponder of the electrosurgical instrument", but Heckel does in an analogous electrosurgical generator device. Heckel teaches in "wherein the electrosurgical generator comprises a transceiver for close range communication being connected to the main control unit and being operatively connected to a complementary transponder of the electrosurgical instrument (p.[0065])", where an RFID and connector stage module are considered to be a transceiver for close range communication connected to a complementary transponder of the electrosurgical instrument under broadest reasonable interpretation. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the system of Heckel in Yates/Nott. The use of instrument recognition is known in the art and produces predictable results of correctly identifying the status of the device to be used (p.[0065]).
Claim 16 is rejected under 35 U.S.C. as unpatentable over Yates and Nott further in view of Kuenen (US 2019/0201110), herein after “Kuenen”.
Regarding claim 16, the limitations of claim 7 are taught as described above. Neither Yates nor Nott teaches "wherein the data transfer device is embodied as a dual port memory" but Kuenen does in an analogous electrosurgical device. Kuenen teaches "wherein the data transfer device is embodied as a dual port memory (p.[0076])". It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use a dual port memory as described in Kuenen in Yates/Nott. The use of a dual port memory system is known in the art and produces predictable results of allowing data to be written to and read from simultaneously (p.[0076]).
Conclusion
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/ABIGAIL BOCK/Examiner, Art Unit 3794
/JOANNE M RODDEN/Supervisory Patent Examiner, Art Unit 3794
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