DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
2. 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 Rejections - 35 USC § 112
3. 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.
4. Claims 1, 5, 10, 11, 12, 14, 16, and 17, as well as claims 2-4, 6-9, 13, 15, and 18 based on their dependency to the former claims, 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.
5. Claim 1 recites the limitation "the two ends of the wire" in lines 2-3. There is insufficient antecedent basis for this limitation in the claim. There is no mention of any “ends of the wire” prior to the recitation in lines 2-3, rendering the claim indefinite. For examination purposes, the claim will be interpreted as follows: “…with two ends of the wire being able…”. Proper correction is required.
6. Claim 5 recites the limitation "the core-layer structure of the wire" in line 2. There is insufficient antecedent basis for this limitation in the claim. There is no mention of a ‘core-layer structure previously in Claim 5, or in Claim 1, which claim 5 depends from. However, there is a “core” and “outer layer” introduced in Claim 3. It is unclear whether claim 5 is meant to be dependent from claim 3. Even if interpreting Claim 5 as dependent from claim 3, the limitation is still rendered indefinite, as the “core” and “outer layer” are never referred to as a “core-layer structure”. Therefore, proper correction is required.
7. Claim 10 recites the limitation "the end pieces E1 and E2" in lines 2-3. There is insufficient antecedent basis for this limitation in the claim. While ‘end piece E1’ is recited in claim 10, there is no recitation of ‘end piece E2’ in claim 10, or in claim 6, which claim 10 depends from. This renders the claim indefinite. Proper correction is required.
8. Claim 11 recites the limitation "one of the ends of each of the end pieces E1 and E2" in lines 2-3. There is insufficient antecedent basis for this limitation in the claim. First, there is an issue with the limitation “end piece… E2”. While ‘end piece E1’ is recited in claim 6, there is no recitation of ‘end piece E2’ in claim 11, or in claim 6, which claim 11 depends from. This renders the claim indefinite. Second, there is an issue with the limitation “one of the ends of each of the end pieces”. This term is not previously introduced in claims 6 or 11, rendering the claim indefinite. Proper correction is required.
9. Claim 12 recites the limitation "one of the ends of one of the end pieces E1 or E2" in lines 2-3. There is insufficient antecedent basis for this limitation in the claim. First, there is an issue with the limitation “end piece… E2”. While ‘end piece E1’ is recited in claim 6, there is no recitation of ‘end piece E2’ in claim 12, or in claim 6, which claim 12 depends from. This renders the claim indefinite. Second, there is an issue with the limitation “one of the ends of one of the end pieces”. This term is not previously introduced in claims 6 or 12, rendering the claim indefinite. Proper correction is required.
10. Claim 14 recites the limitation "the sleeve" in line 3. There is insufficient antecedent basis for this limitation in the claim. There is no recitation of this limitation in claims 14, 11, 6, or 1, rendering the claim indefinite. Proper correction is required.
11. Claim 16 recites the limitation "the outer layer" in line 2. There is insufficient antecedent basis for this limitation in the claim. There is no recitation of this limitation in claim 1, rendering the claim indefinite. Proper correction is required.
12. Claim 16 recites the limitation "the core" in lines 2-3. There is insufficient antecedent basis for this limitation in the claim. There is no recitation of this limitation in claim 1, rendering the claim indefinite. Proper correction is required.
13. Claim 16 recites the limitation "the sleeve" in line 23. There is insufficient antecedent basis for this limitation in the claim. There is no recitation of this limitation in claim 1, rendering the claim indefinite. Proper correction is required.
14. Claim 17 recites the limitation "the material M3" in line 24. There is insufficient antecedent basis for this limitation in the claim. There is no recitation of this limitation in claim 1, rendering the claim indefinite. Proper correction is required.
Claim Rejections - 35 USC § 103
15. 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.
16. Claims 1-12 and 14-18 are rejected under 35 U.S.C. 103 as being unpatentable over Brandt U.S. 2022/0265336 (herein referred to as “Brandt”) and in view of Ward U.S. 2014/0236143 (herein referred to as “Ward”).
17. Regarding Claim 1, Brandt teaches an electrode (Fig. 1, ref num 11) for an electrosurgical handpiece (Fig. 1, ref num 17), consisting of an electrically conductive wire (para 0042, “Electrode 11 is preferably a pin or needle electrode that can be configured, for example, by a round or profile wire or also by a small tube or cannula”), wherein the electrically conductive wire is composed of at least two different kinds of material (Fig. 4, ref nums 22 and 23) namely at least one material M1 having a melting temperature T1 (Fig. 4, ref num 23; para 0048, “On the contrary, coating 23 preferably consists at least partly of an electrically well conductible low-melting material having a melting point preferably lower than 1000° C., the coating 23 can consist of silver or silver alloys, for example”) and at least one material M2 having a melting temperature T2 (Fig. 4, ref num 22; para 0046, “Preferably the melting temperature TK of the electrode body 22 is above 1000° C”), with T2 being greater than T1 (T2 has melting temp of above 1000oC, whereas T1 has a melting temp below 1000oC, therefore T2 is greater than T1).
While Brandt teaches the electrode having different shapes (para 0045, 0055), Brandt fails to explicitly teach with the two ends of the wire being able to be coupled to an electrode support of the handpiece.
Ward teaches an electrode of analogous art (Fig. 2, ref num 100), wherein the electrode comprises two ends of a wire (Fig. 2, ref num 102 has a right end and a left end) coupled to an electrode support (Fig. 2, right end and left end, seen as ref nums 106 and 108, are coupled to an electrode support, ref num 107). This provides electrical communication with the generator to supply energy to the electrode (para 0036). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified to have two ends of the wire of the electrode be coupled to an electrode support in order to provide energy to the electrode. It is also found that it would have been an obvious matter of design choice to make the different portions of the electrode wire whatever form or shape was desired or expedient. 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.
18. Regarding Claim 2, Brandt teaches the material M1 has a plasma resistance or a standard potential P1and the material M2 has a plasma resistance or a standard potential P2, with P1 being greater than P2 (it is regularly known that the standard potential of ceramic, M1, is greater than the standard potential of silver, M2; see para 0046 and 0048 for materials).
19. Regarding Claim 3, Brandt teaches the material M2 forms a core of the wire (Fig. 4, ref num 22 is the core) and the material M1 forms an outer layer encasing the core (Fig. 4, ref num 23 encases ref num 22).
20. Regarding Claim 4, Brandt teaches the wire is composed of a plurality of layers of the materials M1 and M2 in the manner of a skin (Fig. 4, ref nums 22 and 23), with the materials M1 and M2 enveloping each other and the core of the wire being formed of the material M1 or M2 (see Fig. 4).
21. Regarding Claim 5, Brandt teaches the core-layer structure of the wire consisting of at least two materials M1 and M2 extends over the entire length of the wire (see Fig. 5).
22. Regarding Claim 6, Brandt fails to teach the wire is composed of at least two pieces, namely a first end piece E1 and at least one middle piece MST, with the middle piece MST being arranged against the end piece E1, and the end piece E1 being able to be coupled to the electrode support of the handpiece.
Ward teaches the wire is composed of at least two pieces, a first end piece E1 (Fig. 2, ref num 104) and a middle piece MST (Fig. 2, ref num 102), with the middle piece MST being arranged against the end piece E1 (see Fig. 2) and the end piece E1 being able to be coupled to the electrode support (Fig. 2, ref num 104 is coupled to ref num 107). This provides electrical communication with the generator to supply energy to the electrode (para 0036). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified to have two ends of the wire of the electrode be coupled to an electrode support in order to provide energy to the electrode. It is also found that it would have been an obvious matter of design choice to make the different portions of the electrode wire whatever form or shape was desired or expedient. 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.
23. Regarding Claim 7, Brandt fails to teach the wire is composed of at least three pieces, namely a first end piece E1 and a second end piece E2 and at least one middle piece MST, with the middle piece MST being arranged between the two end pieces E1 and E2, and the end pieces E1 and E2 being able to be coupled to the electrode support of the handpiece.
Ward teaches the wire is composed of at least three pieces, a first end piece E1 (Fig. 2, ref num 104a), a second end piece E1, (Fig. 2, ref num 104b) and a middle piece MST (Fig. 2, ref num 102), with the middle piece MST being arranged between the two end pieces E1 and E2 (see Fig. 2) and the end pieces E1 and E2 being able to be coupled to the electrode support (Fig. 2, ref num 104 is coupled to ref num 107). This provides electrical communication with the generator to supply energy to the electrode (para 0036). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified to have two ends of the wire of the electrode be coupled to an electrode support in order to provide energy to the electrode. It is also found that it would have been an obvious matter of design choice to make the different portions of the electrode wire whatever form or shape was desired or expedient. 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.
24. Regarding Claim 8, Brandt teaches the wire has a core made of the material M2 (Fig. 4, ref num 22 is a core) and an encasing outer layer made of the material M1 (Fig. 4, ref num 23). Therefore, since Brandt as modified by Ward teaches the middle piece MST of claim 6 (see claim 6 rejection above), then it would be obvious that the wire materials of Brandt would make up this middle piece.
25. Regarding Claim 9, Brandt teaches the wire is composed of a plurality of layers of the materials M1 and M2 in the manner of a skin (Fig. 4, ref nums 22 and 23), with the materials M1 and M2 enveloping each other and the core of the wire being formed of the material M1 or M2 (see Fig. 4). Therefore, since Brandt as modified by Ward teaches the middle piece MST of claim 6 (see claim 6 rejection above), then it would be obvious that the wire materials of Brandt would make up this middle piece.
26. Regarding Claim 10, Brandt fails to teach the at least one end piece E1, or the end pieces E1 and E2, is/are formed of an electrically conductive or an electrically non-conductive material M3.
Ward teaches the end pieces E1 and E2 are formed an electrically conductive or an electrically non-conductive material M3 (para 0038, “return electrodes 104a and 104b are fabricated from a material that is equally or less conductive than the material of the cutting electrode 102. In one particular embodiment, return electrodes 104a and 104b are fabricated from stainless [steel]. In certain embodiments, return electrodes 104a and 104b are fabricated from a material that is equally or more conductive than the material of the cutting electrode 102”). It would have been obvious to one having ordinary skill in the art at the time the invention was made to have the end pieces E1 and E2 made of a third material, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
27. Regarding Claim 11, Brandt fails to teach one of the ends of each of the end pieces E1 and E2 is electrically conductively and mechanically connected to the middle piece MST.
Ward teaches one of the ends of each of the end pieces E1 and E2 is electrically, conductively and mechanically connected to the middle piece MST (see Fig. 2, ref num 104a and 104b are connected to ref num 102; para 0038). This provides electrical communication with the generator to supply energy to the electrode (para 0036). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified to have two ends of the wire of the electrode be coupled to an electrode support in order to provide energy to the electrode. It is also found that it would have been an obvious matter of design choice to make the different portions of the electrode wire whatever form or shape was desired or expedient. 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.
28. Regarding Claim 12, Brandt fails to teach one of the ends of one of the end pieces E1 or E2 in each case is connected to the middle piece MST in an electrically insulated and mechanical manner.
Ward teaches one of the ends of each of the end pieces E1 or E2 is connected to the middle piece MST in an electrically insulated and mechanically manner (Fig. 2, ref num 104a and 104b are insulated and mechanically connected to ref num 102 via ref num 116; para 0038-0039). This provides electrical communication with the generator to supply energy to the electrode (para 0036). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified to have two ends pieces of the electrode be coupled middle piece in order to provide energy to the electrode. It is also found that it would have been an obvious matter of design choice to make the different portions of the electrode wire whatever form or shape was desired or expedient. 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.
29. Regarding Claim 14, Brandt teaches the wire has a core made of the material M2 (Fig. 4, ref num 22 is a core) and an encasing outer layer made of the material M1 (Fig. 4, ref num 23). Therefore, since Brandt as modified by Ward teaches the middle piece MST of claims 6 and 11 (see claims 6 and 11 rejections above), then it would be obvious that the wire materials of Brandt would make up this middle piece.
30. Regarding Claim 15, Brandt teaches the wire has a diameter of 0.2 mm to 1 mm (para 0045, “It comprises preferably a diameter of less than 0.5 mm”).
31. Regarding Claim 16, Brandt teaches the outer layer encasing the core or the sleeve, has a layer thickness of 3 micrometers to 0.2 mm (para 0048, “The thickness D of coating 23 is preferably at least so thick that the portion of the area of the cross-hatched cross-section area of coating 23 in FIG. 4 of the total cross-section area of electrode 11 is higher than 10%, preferably higher than 12%”; since the radius of the wire is approximately 0.25 mm, see para 0045, then 10% of the radius would be approximately 0.025 mm, which would fall in the range claimed above).
32. Regarding Claim 17, Brandt teaches the material M1 is platinum, a platinum alloy, platinum-iridium or platinum-tungsten, and/or the material M2 is tungsten, tantalum or molybdenum, and/or the material M3 is steel, stainless steel or copper or a copper alloy or an electrical insulator (material M2 has a melting point of above 1000 oC, see para 0021, and is listened to be tungsten).
33. Regarding Claim 18, Brandt teaches an electrosurgical handpiece having an electrode as claimed in claim 1 (see claim 1 rejection).
34. Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Brandt and Ward, and further in view of Woloszko U.S. 2001/0025177 (herein referred to as “Woloszko”).
35. Regarding Claim 13, Brandt fails to teach the end pieces E1 and/or E2 are glued to, welded to, clamped to or plugged together with the middle piece MST, or are crimped or welded to the latter by means of a sleeve.
Woloszko teaches an electrode of analogous art (Fig. 8A, ref num 194),wherein the electrode has a first and a second end piece (Fig. 8A, ref num 196 and 194) that are welded to a middle piece (Fig. 9, ref num 200; para 0108, “Electrical connections 200 are coupled to loop electrode 194 and connector leg 74 using crimping, soldering, welding or other suitable methods”). This provides electrical connection to the electrode (para 0108). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Brandt have the first and second end pieces connected to the middle piece via welding, as this is a well-known technique of coupling structures to provide electrical connection between them, and to supply energy to the electrode.
Conclusion
36. Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANNIE L SHOULDERS whose telephone number is (571)272-3846. The examiner can normally be reached Monday-Friday (alternate Fridays) 8AM-5PM EST.
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/ANNIE L SHOULDERS/Examiner, Art Unit 3794
Prosecution Insights