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 .
Information Disclosure Statement
The information disclosure statements (IDS) submitted March 17th, 2025 and July 21st, 2025 have been considered by the Examiner.
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.
Claim 8 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.
Regarding claim 8, the claim recites “an arc” in line 8 and it is unclear if this is the same arc or a different arc from the arc recited in claim 7, from which claim 8 depends. For examination purposes, these are the same arcs and the limitation will be interpreted as “the arc”.
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 7-8, 10-14 & 17-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ward et al. (U.S. Pub. No. 20140236142, cited in IDS), herein referred to as “Ward”
Regarding claim 7, Ward teaches an electrosurgical system ([0003]: The present disclosure relates to an electrosurgical generator and system and, more particularly, to an electrosurgical generator and system for performing surgery in a saline environment), comprising:
an electrosurgical generator (generator 200) configured to output electrosurgical energy ([0048]: an electrosurgical signal is provided from generator 200 (FIGS. 3 and 5) to energize, wire loop electrode 110);
an electrosurgical instrument (instrument 10) coupled to the electrosurgical generator and configured to deliver the electrosurgical energy to tissue ([0052]: generator 200 such that selective actuation of foot pedal 304 controls the application of electrosurgical energy to electrodes 110, 120 of resectoscope 10);
a processor and a memory having stored thereon instructions which, when executed by the processor ([0054]: generator 200 further includes a plurality of software modules including a user interface (UI) module 514, an instrument recognizer module 516, a mode selector module 518, a cut/coagulation curve generating module 520, and an energy control module 522. Each of these modules 514, 516, 518, 520, and 522 includes programmable instructions capable of being executed by one or more processing devices 508 and may be stored on a non-transitory computer-readable storage medium accessible by processing device 508), cause the processor to:
control the electrosurgical generator to supply the electrosurgical energy at a first energy level ([0070]: In use, during initiation of the cutting mode, e.g., during first phase 602, first power P.sub.1 is supplied from generator 200 to electrodes 110, 120 (FIGS. 1-2A) to raise the amplitude of the voltage waveform above first voltage threshold V.sub.TH1); and
when an arc to be extinguished is generated by the electrosurgical instrument ([0068]: When the arc is established and/or tissue is contacted by the electrode, the power is lowered such that the sustaining voltage (second phase 604, FIG. 6) is produced to sustain tissue cutting … power is lowered such that the voltage drops below the arc initiation voltage, arcing is terminated):
determine an impedance of the arc ([0068]: As the tissue is cut, creating space between the electrode and underlying fresh tissue, the impedance drops, e.g., from impedance Z1 (or an impedance above impedance Z3) to impedance Z2 (or an impedance between impedance Z2 and impedance Z3));
compare the impedance of the arc to an impedance threshold stored in the memory to define a first comparison ([0068]: As the tissue is cut, creating space between the electrode and underlying fresh tissue, the impedance drops, e.g., from impedance Z1 (or an impedance above impedance Z3) to impedance Z2 (or an impedance between impedance Z2 and impedance Z3); wherein the impedance drop is seen as a comparison);
determine a magnitude of change in a peak-to-peak voltage of the electrosurgical energy over time ([0073]: power is decreased from third power P.sub.3 to fourth power P.sub.4 to drop the amplitude of the voltage waveform below second voltage threshold V.sub.TH2, thereby stopping the occurrence of arcing and collapsing the vapor bubble);
compare the magnitude of change in the peak-to-peak voltage with a voltage change threshold stored in the memory to define a second comparison ([0073]: power is decreased from third power P.sub.3 to fourth power P.sub.4 to drop the amplitude of the voltage waveform below second voltage threshold V.sub.TH2, thereby stopping the occurrence of arcing and collapsing the vapor bubble; where this step would include comparing since it would have to determine whether the decrease satisfies the threshold or not); and
extinguish the arc by controlling the supply of the electrosurgical energy based on the first comparison and the second comparison ([0073]: in third phase 606, the amplitude of the voltage waveform is dropped below the minimum voltage required to sustain arcing, V.sub.TH2, and, thus arcing and tissue cutting cease to occur).
Regarding claim 8, Ward teaches wherein the instructions, when executed by the processor, further cause the processor to determine that an arc generated by the electrosurgical instrument is the arc to be extinguished ([0073]: As mentioned above, and as indicated by segment 708, tissue cutting is continued during second phase 604 until impedance Z.sub.2 is reached at which point, as indicated by point 710, power is decreased from third power P.sub.3 to fourth power P.sub.4 to drop the amplitude of the voltage waveform below second voltage threshold V.sub.TH2, thereby stopping the occurrence of arcing and collapsing the vapor bubble. This corresponds to the third phase 606. More specifically, in third phase 606, the amplitude of the voltage waveform is dropped below the minimum voltage required to sustain arcing, V.sub.TH2, and, thus arcing and tissue cutting cease to occur).
Regarding claim 10, Ward teaches wherein the instructions, when executed by the processor, further cause the processor to decrease the supply of the electrosurgical energy from the first energy level to a decreased energy level (see Fig. 6 where the energy level drops from phase 604 to 606) based on:
the impedance of the arc being less than the impedance threshold ([0073]: tissue cutting is continued during second phase 604 until impedance Z.sub.2 is reached); and
the change in peak-to-peak voltage being greater than the voltage change threshold ([0073]: in third phase 606, the amplitude of the voltage waveform is dropped below the minimum voltage required to sustain arcing, V.sub.TH2, and, thus arcing and tissue cutting cease to occur).
Regarding claim 11, Ward teaches wherein the instructions, when executed by the processor, further cause the electrosurgical generator to maintain the supply of the electrosurgical energy at the decreased energy level for a predetermined period of time to extinguish the arc ([0073]: More specifically, in third phase 606, the amplitude of the voltage waveform is dropped below the minimum voltage required to sustain arcing, V.sub.TH2, and, thus arcing and tissue cutting cease to occur. Rather, desiccation/coagulation is effected to achieve hemostasis).
Regarding claim 12, Ward teaches wherein the instructions, when executed by the processor, further cause the processor to:
after the predetermined period of time, increase the supply of the electrosurgical energy from the decreased energy level to the first energy level ([0074]: After completion of third phase 506, the power level is increased once again from fourth power P.sub.4 to first power P.sub.1).
Regarding claim 13, Ward teaches wherein the first energy level is an indicated energy level for a tissue treatment ([0070]: In use, during initiation of the cutting mode, e.g., during first phase 602, first power P.sub.1 is supplied from generator 200 to electrodes 110, 120 (FIGS. 1-2A) to raise the amplitude of the voltage waveform above first voltage threshold V.sub.TH1).
Regarding claim 14, Ward teaches an electrosurgical generator (Abstract: An electrosurgical generator includes an electrosurgical energy output configured to deliver electrosurgical energy to a bipolar end effector assembly in a conductive fluid environment for treating tissue), comprising:
a power supply (power supply 504) configured to generate electrosurgical energy ([0057]: power supply 504 to control the voltage provided to active electrode 110);
an output stage (RF output stage 502) configured to supply the electrosurgical energy to an electrosurgical instrument for treating tissue ([0048]: an electrosurgical signal is provided from generator 200 (FIGS. 3 and 5) to energize, wire loop electrode 110; [0057]: energy control module 522 for regulating the output of RF output stage 502 and/or power supply 504 to control the voltage provided to active electrode 110);
a processor in signal communication with at least one of the power supply or the output stage; and a memory having stored thereon instructions which, when executed by the processor, cause the processor to ([0054]: generator 200 further includes a plurality of software modules including a user interface (UI) module 514, an instrument recognizer module 516, a mode selector module 518, a cut/coagulation curve generating module 520, and an energy control module 522. Each of these modules 514, 516, 518, 520, and 522 includes programmable instructions capable of being executed by one or more processing devices 508 and may be stored on a non-transitory computer-readable storage medium accessible by processing device 508):
supply the electrosurgical energy at a first energy level by controllably operating at least one of the power supply or the output stage ([0070]: In use, during initiation of the cutting mode, e.g., during first phase 602, first power P.sub.1 is supplied from generator 200 to electrodes 110, 120 (FIGS. 1-2A) to raise the amplitude of the voltage waveform above first voltage threshold V.sub.TH1); and
when an arc to be extinguished is generated by the electrosurgical instrument ([0068]: When the arc is established and/or tissue is contacted by the electrode, the power is lowered such that the sustaining voltage (second phase 604, FIG. 6) is produced to sustain tissue cutting … power is lowered such that the voltage drops below the arc initiation voltage, arcing is terminated):
determine an impedance of the arc ([0068]: As the tissue is cut, creating space between the electrode and underlying fresh tissue, the impedance drops, e.g., from impedance Z1 (or an impedance above impedance Z3) to impedance Z2 (or an impedance between impedance Z2 and impedance Z3));
compare the impedance of the arc to an impedance threshold stored in the memory to define a first comparison ([0068]: As the tissue is cut, creating space between the electrode and underlying fresh tissue, the impedance drops, e.g., from impedance Z1 (or an impedance above impedance Z3) to impedance Z2 (or an impedance between impedance Z2 and impedance Z3); wherein the impedance drop is seen as a comparison);
determine a magnitude of change in a peak-to-peak voltage of the electrosurgical energy over time ([0073]: power is decreased from third power P.sub.3 to fourth power P.sub.4 to drop the amplitude of the voltage waveform below second voltage threshold V.sub.TH2, thereby stopping the occurrence of arcing and collapsing the vapor bubble);
compare the magnitude of change in the peak-to-peak voltage with a voltage change threshold stored in the memory to define a second comparison ([0073]: power is decreased from third power P.sub.3 to fourth power P.sub.4 to drop the amplitude of the voltage waveform below second voltage threshold V.sub.TH2, thereby stopping the occurrence of arcing and collapsing the vapor bubble; where this step would include comparing since it would have to determine whether the decrease satisfies the threshold or not); and
extinguish the arc by controlling the supply of the electrosurgical energy based on the first comparison and the second comparison ([0073]: in third phase 606, the amplitude of the voltage waveform is dropped below the minimum voltage required to sustain arcing, V.sub.TH2, and, thus arcing and tissue cutting cease to occur).
Regarding claim 17, Ward teaches wherein the instructions, when executed by the processor, further cause the processor to decrease the supply of the electrosurgical energy from the first energy level to a decreased energy level (see Fig. 6 where the energy level drops from phase 604 to 606) based on:
the impedance of the are being less than the impedance threshold ([0073]: tissue cutting is continued during second phase 604 until impedance Z.sub.2 is reached); and
the change in peak-to-peak voltage being greater than the voltage change threshold ([0073]: in third phase 606, the amplitude of the voltage waveform is dropped below the minimum voltage required to sustain arcing, V.sub.TH2, and, thus arcing and tissue cutting cease to occur).
Regarding claim 18, Ward teaches wherein the instructions, when executed by the processor, further cause the electrosurgical generator to maintain the supply of the electrosurgical energy at the decreased energy level for a predetermined period of time to extinguish the arc ([0073]: More specifically, in third phase 606, the amplitude of the voltage waveform is dropped below the minimum voltage required to sustain arcing, V.sub.TH2, and, thus arcing and tissue cutting cease to occur. Rather, desiccation/coagulation is effected to achieve hemostasis).
Regarding claim 19, Ward teaches, wherein the instructions, when executed by the processor, further cause the processor to:
after the predetermined period of time, increase the supply of the electrosurgical energy from the decreased energy level to the first energy level ([0074]: After completion of third phase 506, the power level is increased once again from fourth power P.sub.4 to first power P.sub.1).
Regarding claim 20, Ward teaches wherein the first energy level is an indicated energy level for a tissue treatment ([0070]: In use, during initiation of the cutting mode, e.g., during first phase 602, first power P.sub.1 is supplied from generator 200 to electrodes 110, 120 (FIGS. 1-2A) to raise the amplitude of the voltage waveform above first voltage threshold V.sub.TH1).
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.
Claims 1-2 & 4-6 are rejected under 35 U.S.C. 103 as being unpatentable over Wham et al. (U.S. Pub. No. 20140276753, cited in IDS), herein referred to as “Wham” and further in view of Ward.
Regarding claim 1, Wham discloses an electrosurgical system (Abstract: The systems and methods of the present disclosure detect arcing patterns or impedance changes and adjust the level of electrosurgical energy provided to tissue based on the detected arcing patterns or impedance changes), comprising:
an electrosurgical generator (generator 200) configured to output electrosurgical energy ([0054]: FIG. 3 shows a schematic block diagram of the generator circuitry 300 of the generator 200 of FIGS. 1 and 2, which is configured to output electrosurgical energy);
an electrosurgical instrument (instrument 2) coupled to the electrosurgical generator and configured to deliver the electrosurgical energy to tissue ([0061]: A surgeon sets the electrosurgical instrument 2 to a desired drag value via the user interface 305 of the generator circuitry 300 and activates the electrosurgical instrument 2 by depressing the activation switch 401, thus permitting alternating current to be transmitted to the cutting tip or blade 405. The surgeon then commences the electrosurgical procedure by touching the cutting tip or blade 405 to the target tissue 420); and
a processor (processor 324) and a memory (memory 326) having stored thereon instructions which, when executed by the processor ([0098]: any or all of the steps of the methods or processes of FIGS. 7-12 described above may be implemented as program instructions stored in the memory 326 and executed by the processor 325 of the generator circuitry 300 shown in FIG. 3), cause the processor to:
control the electrosurgical generator to supply the electrosurgical energy to the electrosurgical instrument at an indicated energy level for treating the tissue ([0050]: Electrosurgical alternating current is supplied to the instrument 2 by a generator 200 via a supply line 4 that is connected to an active terminal 330 (FIG. 3) of the generator 200, allowing the instrument 2 to coagulate, ablate, cut, and/or otherwise treat tissue);
determine a change in peak-to-peak voltage of the electrosurgical energy over time ([0086]: Both the power and duty cycle may be adjusted together to keep the peak voltage consistent while reducing the cutting ability; if a peak voltage is maintained then there is no peak to peak changes to be normalized since the change is zero & if the peak voltage does not change then the peak-to-peak voltage also does not change; [0055]: In embodiments, the controller 324 may further include a field-programmable gate array (FPGA) for performing real-time analysis of the delivered current and/or voltage waveforms; wherein the hardware is configured to be programmed to carry out the claimed functional limitation); and
control the supply of the electrosurgical energy to extinguish an arc generated by the electrosurgical instrument ([0075]-[0086]: Both the power and duty cycle may be adjusted together to keep the peak voltage consistent while reducing the cutting ability. If the peak voltage was not kept constant, then the arc distance would increase as the duty cycle was reduced) based on:
a comparison of an impedance of the arc to an impedance threshold stored in the memory ([0075]; when the voltage waveform 611 drops, the arc is extinguished; [0086]: Both the power and duty cycle may be adjusted together to keep the peak voltage consistent while reducing the cutting ability; if a peak voltage is maintained, the peak-to-peak voltage also does not change and has a constant normalized change in peak-to-peak voltage and thus any change would necessitate extinguishing of the arc).
But Wham fails to disclose controlling the supply of the electrosurgical energy to extinguish an arc generated by the electrosurgical instrument based on:
a comparison of an impedance of the arc to an impedance threshold stored in the memory; and
a comparison of the change in peak-to-peak voltage to a voltage change threshold stored in the memory.
However, Ward discloses a processor and a memory having stored thereon instructions which, when executed by the processor ([0054]: generator 200 further includes a plurality of software modules including a user interface (UI) module 514, an instrument recognizer module 516, a mode selector module 518, a cut/coagulation curve generating module 520, and an energy control module 522. Each of these modules 514, 516, 518, 520, and 522 includes programmable instructions capable of being executed by one or more processing devices 508 and may be stored on a non-transitory computer-readable storage medium accessible by processing device 508), cause the processor to:
control the supply of the electrosurgical energy to extinguish an arc generated by the electrosurgical instrument ([0073]: in third phase 606, the amplitude of the voltage waveform is dropped below the minimum voltage required to sustain arcing, V.sub.TH2, and, thus arcing and tissue cutting cease to occur) based on:
a comparison of an impedance of the arc to an impedance threshold stored in the memory ([0073]: tissue cutting is continued during second phase 604 until impedance Z.sub.2 is reached); and
a comparison of the change in peak-to-peak voltage to a voltage change threshold stored in the memory ([0073]: power is decreased from third power P.sub.3 to fourth power P.sub.4 to drop the amplitude of the voltage waveform below second voltage threshold V.sub.TH2, thereby stopping the occurrence of arcing and collapsing the vapor bubble; where this step would include comparing since it would have to determine whether the decrease satisfies the threshold or not).
Therefore, it would have been obvious to one of ordinary skill before the effective filing date of the claimed invention to modify the memory of Wham to include the memory of Ward for the purpose of delivering energy at or above a minimum voltage level or power sufficient to create arcs and erode tissue, cutting is achieved. On the other hand, hemostasis is achieved by delivering the voltage or power at or below a maximum level at which arcing ceases to occur (Ward: [0042]).
Regarding claim 2, Wham in view of Ward disclose wherein the instructions, when executed by the processor, further cause the processor to control the supply of the electrosurgical energy to extinguish the arc (Ward: [0073]: in third phase 606, the amplitude of the voltage waveform is dropped below the minimum voltage required to sustain arcing, V.sub.TH2, and, thus arcing and tissue cutting cease to occur) based on:
the impedance of the arc being less than the impedance threshold ([0073]: tissue cutting is continued during second phase 604 until impedance Z.sub.2 is reached); and
the change in peak-to-peak voltage being greater than the voltage change threshold ([0073]: in third phase 606, the amplitude of the voltage waveform is dropped below the minimum voltage required to sustain arcing, V.sub.TH2, and, thus arcing and tissue cutting cease to occur).
Regarding claim 4, Wham in view of Ward discloses wherein the instructions, when executed by the processor, further cause the processor to decrease the supply of the electrosurgical energy from the indicated energy level to a decreased energy level (Ward: see Fig. 6 where the energy level drops from phase 604 to 606) based on:
the impedance of the are being less than the impedance threshold ([0073]: tissue cutting is continued during second phase 604 until impedance Z.sub.2 is reached); and
the change in peak-to-peak voltage being greater than the voltage change threshold ([0073]: in third phase 606, the amplitude of the voltage waveform is dropped below the minimum voltage required to sustain arcing, V.sub.TH2, and, thus arcing and tissue cutting cease to occur).
Regarding claim 5, Wham in view of ward discloses wherein the instructions, when executed by the processor, further cause the processor to maintain the supply of the electrosurgical energy at the decreased energy level for a predetermined period of time to extinguish the arc (Ward: [0073]: More specifically, in third phase 606, the amplitude of the voltage waveform is dropped below the minimum voltage required to sustain arcing, V.sub.TH2, and, thus arcing and tissue cutting cease to occur. Rather, desiccation/coagulation is effected to achieve hemostasis).
Regarding claim 6, Wham in view of Ward discloses wherein the instructions, when executed by the processor, further cause the processor to:
after the predetermined period of time, increase the supply of the electrosurgical energy from the decreased energy level to the indicated energy level (Ward: [0074]: After completion of third phase 506, the power level is increased once again from fourth power P.sub.4 to first power P.sub.1).
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Wham in view of Ward, as applied to claim 1, above, and further in view of Briggs et al. (U.S. Pat. No. 8165666, cited in IDS), herein referred to as “Briggs”.
Regarding claim 3, Wham in view of Ward fail to disclose wherein the instructions, when executed by the processor, further cause the processor to determine a normalized voltage change based on the change in peak-to-peak voltage and one of:
a root-mean-square voltage of the electrosurgical energy; or
a root-mean-square current of the electrosurgical energy.
However, Briggs discloses wherein the instructions, when executed by the processor (see computer system in Fig. 12), further cause the processor to determine a normalized voltage change based on the change in peak-to-peak voltage and one of: a root-mean-square voltage of the electrosurgical energy (Col. 10, lines 18-24: RMS1 and RMS2 are determined by taking a root mean squared of the derivatives for the entire signal of each of the signals (e.g., all activation cycles). RMS can be used to normalize the amplitude of the signals with respect to one another, such that amplitudes (e.g., voltage) of the deflections in the signals do not affect the processing of the signals as described below); or
a root-mean-square current of the electrosurgical energy.
Therefore, it would have been obvious to one of ordinary skill before the effective filing date of the claimed invention to modify the processor of Wham in view of Ward to include the processor of Briggs, so that amplitudes (e.g., voltage) of the deflections in the signals do not affect the processing of the signals (Briggs: Col. 10, lines 18-24).
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Ward, as applied to claim 7, above, and further in view of Briggs.
Regarding claim 9, Ward fails to disclose wherein the instructions, when executed by the processor, further cause the processor to determine a normalized voltage change based on the change in peak-to-peak voltage and one of:
a root-mean-square voltage of the electrosurgical energy; or
a root-mean-square current of the electrosurgical energy.
However, Briggs discloses wherein the instructions, when executed by the processor (see computer system in Fig. 12), further cause the processor to determine a normalized voltage change based on the change in peak-to-peak voltage and one of: a root-mean-square voltage of the electrosurgical energy (Col. 10, lines 18-24: RMS1 and RMS2 are determined by taking a root mean squared of the derivatives for the entire signal of each of the signals (e.g., all activation cycles). RMS can be used to normalize the amplitude of the signals with respect to one another, such that amplitudes (e.g., voltage) of the deflections in the signals do not affect the processing of the signals as described below); or
a root-mean-square current of the electrosurgical energy.
Therefore, it would have been obvious to one of ordinary skill before the effective filing date of the claimed invention to modify the processor of Ward to include the processor of Briggs, so that amplitudes (e.g., voltage) of the deflections in the signals do not affect the processing of the signals (Briggs: Col. 10, lines 18-24).
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Ward, as applied to claim 15, above, and further in view of Scholl et al. (U.S. Pub. No. 20050119646, cited in IDS), herein referred to as “Scholl”.
Regarding claim 16, Ward fails to disclose wherein the impedance threshold range is 1350-3000 ohms.
However, Scholl discloses wherein the impedance threshold range is 1350-3000 ohms ([0021]: In some instances, impedance values may be in the range of 2500-3000 ohms). Therefore, it would have been obvious to one of ordinary skill before the effective filing date of the claimed invention to modify the threshold of Ward to be the threshold of Scholl for the purpose of this impedance value being indicative of arcing (Scholl: [0022]).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-20 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 11045247. Although the claims at issue are not identical, they are not patentably distinct from each other because they each recite an electrosurgical generator comprising a processor, a memory, and instructions stored thereon to determine a change in peak-to-peak voltage, controlling the electrosurgical energy to extinguish an arc generated by an electrosurgical instrument coupled to the electrosurgical generator and comparison of impedance to an impedance threshold.
Claims 1-20 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of U.S. Patent No. 12256974. Although the claims at issue are not identical, they are not patentably distinct from each other because they each recite an electrosurgical generator comprising a processor, a memory, and instructions stored thereon to determine a change in peak-to-peak voltage, controlling the electrosurgical energy to extinguish an arc generated by an electrosurgical instrument coupled to the electrosurgical generator and comparison of impedance to an impedance threshold
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of 11045247 and/or 12256974 anticipate the claims of the application. Accordingly, the application claims are not patentably distinct from the patent claims. Here, the more specific patent claims encompass the broader application claims. Following the rationale in In re Goodman cited in the preceding paragraph, where applicant has once been granted a patent containing a claim for the specific narrow invention, applicant may not obtain a second patent with a claim for the generic or broader invention without first submitting an appropriate terminal disclaimer.
Allowable Subject Matter
Claim 15 would be allowable if rewritten to overcome the rejection(s) under the Double Patenting section and/or by receiving an acceptable Terminal Disclaimer, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Conclusion
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/ABIGAIL M ZIEGLER/Examiner, Art Unit 3794
/BEVERLY M FLANAGAN/Primary Examiner, Art Unit 3794
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