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 .
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 3, 5-7, 10 and 13-15 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.
Claim 3 lacks proper antecedent basis for “the outlet opening” because it depends from claim 1, and not claim 2 which provides the antecedent basis. Claim 5 lacks antecedent basis for “the lumen” and should depend from claim 2 which provides antecedent basis. Claim 6 recites “configured as loop” and should read “configured as a loop”. Claim 7 recites “configured in flexible manner” and should recite “configured in a flexible manner”. Claim 10 lacks proper antecedent basis for “in the type of a brush”. Claim 13 lacks proper antecedent basis for “the lumen” and should depend from claim 2. Claim 14 lacks proper antecedent basis for “the distal end”, and claim 15 is rejected based on its dependency from claim 14.
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 1-5, 7, 9 and 12-15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Medhkour et al (6,493,589).
Regarding claim 1, Medhkour et al disclose an instrument for treating tissue comprising a longitudinal shank (203 – Figure 15) having an electrode (215) at one end and connected to an electrical line for connection to an electrical generator (217 shows the connector). The electrode may be made from carbon fibers (col. 10, lines 20-25, for example).
Regarding claim 2, the shank is a hose or tube (Figure 15) that comprises at least one lumen (204) that can be connected to a gas source (via connector 208) an has an outlet at a distal end of the tube. Regarding claim 3, the electrode is arranged at the opening (Figure 15). Regarding claims 4 and 5, the electrode is movable within the hose/tube and may be retracted into the tube (col. 5, lines 24-30, in discussion with guidewire 30 which is analogous to electrode 215 in the embodiment of Figure 15). Regarding claim 7, the electrode is flexible as it extends through a flexible catheter. Regarding claim 9, the carbon fibers are inherently fixed in order to form the electrode. Regarding claim 12, the electric line extends to a proximal connector (217). Regarding claim 13, the electrical line is arranged in the lumen (Figure 15). Regarding claims 14 and 15, Medhkour et al disclose multiple lumens that may be connected to multiple sources to provide fluid/gas to the device (col. 10, lines 1-15 and col. 10, lines 35-50).
Claims 1-9, 12 and 13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Thorne et al (2005/0283149).
Regarding claim 1, Thorne et al provide a device for treating tissue comprising a longitudinal shank (150 – Figures 14-16) having an electrode (152) at one end and connected to an electrical line extending through the shank. The electrode may comprise carbon fibers (para. [0053], for example).
Regarding claim 2, the shank is a hose or tube and comprises at least one lumen (153 – Figure 14 and para. [0062]) that can be connected to a gas source and comprises an outlet opening at the distal end of the hose. Regarding claim 3, the electrode is arranged at the distal opening (Figure 16). Regarding claims 4-6, the electrode is a loop electrode that may be movably supported in the shank and is retractable into the lumen (para. [0067], for example). Regarding claim 7, the electrode is flexible (to allow movement of the loop). Regarding claim 8, at least some of the carbon fibers have a movable uncovered end (i.e. those fibers on the exposed loop). Regarding claim 9, the carbon fibers are inherently fixed to form the electrode. Regarding claims 12 and 13, electrical lines are connected to the loop extend through the shank (Figure 16, for example).
Claims 1-5 and 7-15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Paul et al 2005/0159740).
Regarding claim 1, Paul et al disclose a device for treating tissue comprising a longitudinal shank (40- Figure 5) having an electrode (10) at one end, the electrode connected to an electrical line (48) configured to be connected to a generator. The electrode comprises carbon fibers (par. [0056]).
Regarding claim 2, the shank is a tube (Figure 5) that comprises at least one lumen (44) that can be connected to a gas source, the lumen having an outlet at the distal end of the tube (where the electrode resides). Regarding claim 3, the electrode is arranged at the opening (Figure 5). Regarding claims 4, the electrode is movable relative to the shaft. Regarding claim 7, the electrode is flexible (Abstract, for example). Regarding claim 8, the carbon fibers have a movable, uncovered end (Figures 5-14, for example). Regarding claim 9, the carbon fiber make up the electrode and are therefore fixed to the electrode. Regarding claim 10, the carbon fibers are held in the type of a brush (Figure 5-14, for example). Regarding claim 11, the carbon fibers are configure as twine (which are then arranged into a brush type arrangement as seen in Figures 6-7). Regarding claim 12, the electrical line extends through the shaft to a proximal connector (i.e. lead 6 connected to generator 14). Regarding claim 13, the electrical line (50) is arranged in the lumen (Figure 5). Regarding claims 14-15, Paul et al provide multiple lumens (i.e. central lumen 44 and peripheral lumens 92 – Figure 17) which may be connected to different fluid supplies (par. [0068], for example).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Roop et al (2005/0267462) discloses another device comprising a shaft (2) having a lumen and an electrode (8) formed of carbon fibers (para. [0044]). The electrode may be formed as a brush (Figure 5) and may include means to move the electrode relative to the shaft and means to introduce a fluid. Stalder et al (2012/0083782) discloses another device having an electrode made from carbon fibers, and Schnitzler (2025/0268641) has a common inventor and has a similarly structure device including an electrode made from carbon fibers for treating tissue.
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/MICHAEL F PEFFLEY/Primary Examiner, Art Unit 3794
/M.F.P/ July 29, 2026
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