I. ACKNOWLEDGEMENT
This Office Action addresses U.S. Application No. 19/128963 (“’963 Application” or “instant application”). Based upon a review of the instant application, the actual filing date of the instant application is May 9, 2025.
II. STATUS OF CLAIMS
Claims 1-22 were filed with the application. Therefore, as of the date of this Office Action, the status of the claims is:
a. Claim 1-22 (“Pending Claims”).
b. Claims 1-22 are examined (“Examined Claims”).
III. PRIORITY AND CONTINUING DATA
The ‘963 application is a national stage entry of PCT/US2023/079213, filed November 9, 2023, which claims priority to US Provisional Application 63/383308, filed November 11, 2022. Because the earliest possible effective filing date is after March 16, 2013, the first to file provision of the AIA , apply to this proceeding.
IV. ART REJECTIONS
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.
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.
Claim 1-6 and 10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Silva De Jesus US PG UB 2021/0251679 (SDJ).
The Examiner notes that the term colpotomy is an intended use limitation and does not distinguish over the same structure used for a different purpose. While SDJ does not mention colpotomy, the cup is similarly sized as that on the present invention and hence is capable of the claimed use. Applicant should distinguish the claims by adding structure to define over the reference.
In figures 1 and 2, SDJ shows a cup 11 having a top portion (above the center electromagnet 2) and a base portion (below the center electromagnet), where the top portion has a larger diameter than the base portion, and where the base portion has a hole that circumscribes a longitudinal axis extending from the base to the top potion. In addition, there are electromagnets 2 coupled to both the top and base portions, such that, when a current passes through the electromagnets, field is generated extending along the longitudinal axis. As a result, a Lorentz force is generated directed inwards. The Examiner notes that the term thereby means thus. As such, if a reference has the same structure, it must also generate the same Lorentz force.
Claims 2-5 define over the art in that since the electromagnets 2 are on the exterior surface, the circumscribe both the interior and exterior surface of the of the cup.
As to claim 6, the top portion has a portion coupled to the base, and a portion that defines a leading edge, i.e. the top.
Claim 8 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Silva De Jesus in view of the background section of Silva De Jesus.
As to claim 8, SDJ does not specifically state that the electromagnet is a solenoid. However, in paragraph [0032], SDJ teaches that a similar system uses a solenoid as the electromagnet. As such, it would have been obvious to modify SDJ to use a solenoid, as it is merely the substitution of one known electromagnet for another.
As to claim 10, alternatively, the circular electromagnet meets the solenoid requirement of claim 1. As such, then there is a second solenoid, the horizontal solenoid 2 of the combination in the inner volume of the first solenoid.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Silva De Jesus in view of the background section of Silva De Jesus, as applied to claim 8 above, further in view of Kosashvili et al US PG PUB 2004/0138663.
The solenoid of the combination does not have a ferromagnetic core. However, Kosashvili teaches that a solenoid can be made of ferromagnetic materials. Since the whole solenoid is ferromagnetic, there is a core that is ferromagnetic. As such, it would have been obvious to modify the combination to use a ferromagnetic material for the solenoid, as it is merely the substitution of one known material for another.
Claim 1-3 and 6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Osaka US PG PUB 2013/0077184
The Examiner notes that the term colpotomy is an intended use limitation and does not distinguish over the same structure used for a different purpose. While Osaka does not mention colpotomy, the cup is similarly sized as that on the present invention and hence is capable of the claimed use. Applicant should distinguish the claims by adding structure to define over the reference.
Osaka shows in figure 3 a system with a cup 14 having a top portion 142 having a first diameter and a base portion 140 having a small diameter and a hole thereon circumscribing the longitudinal axis, and an electromagnet 16 around the base portion. When current is applied to the electromagnet, a field is applied in the direction of the longitudinal axis. As a result, a Lorentz force is generated directed inwards. The Examiner notes that the term thereby means thus. As such, if a reference has the same structure, it must also generate the same Lorentz force.
As to claims 2 and 3, the electromagnet circumscribes the inner and outer surface of the base.
As to claim 6, the top portion defines a leading edge having a top surface and a bottom surface connected to the base portion.
Claim 1, 3 and 6-7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hong KR 10197208.
The Examiner notes that the term colpotomy is an intended use limitation and does not distinguish over the same structure used for a different purpose. While Hong does not mention colpotomy, the cup is similarly sized as that on the present invention and hence is capable of the claimed use. Applicant should distinguish the claims by adding structure to define over the reference.
In figure 10, Hong shows a cup 100, having a first diameter and a base portion 200 having a small diameter, with an electromagnet 231 attached to the base portion. The base has a hole that circumscribes the longitudinal axis of the cop. Here, if a current were applied to electromagnet 231, a field would be generated in the direction of the longitudinal axis of the cup.
As to claim 3, the magnet circumscribes an inner surface of the base.
As to claim 6, As to claim 6, the top portion defines a leading edge having a top surface and a bottom surface connected to the base portion.
As to claim 7, the diameter of the top portion is in the claimed range (see second paragraph after description of embodiments).
V. ALLOWABLE SUBJECT MATTER
The following is an examiner’s statement of reasons for allowance:
Claims 11-15 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 16-22 are allowable.
Claim 11 defines over the art of record in that none of the art in that none of the art has the coaxial solenoids, as claimed.
Claim 12 defines over the art in that none of the art has the Lorentz forces in opposite directions, as claimed.
Claims 13-15 define over the art in that none of the art has the bipolar electrocautery el3ectrode in combination with the cup, as claimed.
Claims 16-22 define over the art in that none of the art has the bipolar electrocautery wand in combination with the cup, as claimed.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
VI. CONCLUSION
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT L NASSER whose telephone number is (571)272-4731. The examiner can normally be reached M-F 8-6.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Alexander Kosowski can be reached at (571) 272-3744. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ROBERT L NASSER/
Primary Examiner, Art Unit 3992
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