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 .
Drawings
The drawings are objected to because figures 3 and 6 are not properly labeled. Reference numerals alone are insufficient. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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.
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 limitation(s) is/are: “an actuation mechanism…configured to control” in claims 5-8, 11-16 and 19.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 102
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.
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.
Claim(s) 1-16 and 18-20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yates et al (2019/0201045).
Regarding claim 1, Yates et al disclose an electrosurgical smoke evacuation system, comprising:
an electrosurgical pencil (fig.2; [0255]) including:
a handle housing (50032 - fig.2);
a nozzle defining a lumen for evacuating smoke from a surgical site (evacuation conduit – [0255]);
an electrode configured to deliver electrosurgical energy to tissue (50034 – fig.2);
a power unit fluidly and electrically coupled to the electrosurgical pencil, the power unit having a housing (fig.5-7; [0269]) and including:
an electrosurgical energy source disposed within the housing and configured to delivery electrosurgical energy to the electrode of the electrosurgical pencil (50306 – fig.5; [0265]);
a suction generator disposed within the housing and configured to apply suction to the nozzle of the electrosurgical pencil for evacuating the smoke from the surgical site (fig.6; [0269]);
a power source disposed within the housing and configured to power the electrosurgical energy source and the suction generator (50304 – fig.5; [0263]); and
a filter disposed within the housing and in fluid communication with the suction generator, the filter configured to filter the smoke evacuated from the surgical site via the nozzle of the electrosurgical pencil (fig.1; [0254]); and
a return electrode electrically coupled to the electrosurgical energy source of the power unit, the return electrode configured to be adhered to a patient for returning, to the electrosurgical energy source, electrosurgical energy delivered to the tissue via the electrode of the electrosurgical pencil (50335 – fig.5; [0265]).
Regarding claims 2 and 12, Yates et al disclose wherein the nozzle of the electrosurgical pencil is fluidly coupled to the suction generator of the power unit by a tube coupling the handle housing of the electrosurgical pencil to the suction generator (50636 – fig.7).
Regarding claims 3 and 13, Yates et al disclose wherein the electrode of the electrosurgical pencil is electrically coupled to the electrosurgical energy source by an electrosurgical supply line (50642 – fig.7).
Regarding claim 4, Yates et al disclose wherein the return electrode is electrically connected to the electrosurgical energy source by an electrosurgical return line (50644 – fig.7).
Regarding claim 5, Yates et al disclose further comprising an actuation mechanism disposed on the handle housing of the electrosurgical pencil and configured to control delivery of the electrosurgical energy to the electrode of the electrosurgical pencil (buttons of handpiece 50632 – fig.2).
Regarding 6, Yates et al disclose further comprising an actuation mechanism disposed on the handle housing of the electrosurgical pencil and configured to control a suction level of the suction generator (buttons on the handpiece 50632 – fig.7; control of the suction level via the generator activation – [0396]).
Regarding claim 7, Yates et al disclose further comprising an actuation mechanism disposed on the housing of the power unit and configured to control delivery of the electrosurgical energy to the electrode of the electrosurgical pencil (buttons on the housing of 50640 – fig.7).
Regarding claim 8, Yates et al disclose further comprising an actuation mechanism disposed on the housing of the power unit and configured to control a suction level of the suction generator (buttons on the housing of 50618 – [0269]).
Regarding claims 9 and 14, Yates et al disclose wherein the housing of the power unit includes at least one exhaust vent in fluid communication with the suction generator (50452 – fig.6).
Regarding claims 10 , 16 and 20, Yates et al disclose wherein the power unit includes a liquid trap disposed within the housing and configured to collect liquid evacuated from the surgical site (surgical evacuation system – figs.13 and 14, [0029];[0030]).
Regarding claim 11, Yates et al disclose an electrosurgical smoke evacuation system, comprising:
an electrosurgical pencil configured to deliver electrosurgical energy to tissue and evacuate smoke from a surgical site (fig.2; [0255]);
a power unit fluidly and electrically coupled to the electrosurgical pencil, the power unit having a housing (fig.5-7; [0269]) and including:
an electrosurgical energy source disposed within the housing and configured to delivery electrosurgical energy to the electrode of the electrosurgical pencil (50306 – fig.5; [0265]);
a suction generator disposed within the housing and configured to evacuate the smoke from the surgical site via the electrosurgical pencil (fig.6; [0269]); and
a filter disposed within the housing and configured to filter the smoke evacuated from the surgical site via the nozzle of the electrosurgical pencil (fig.1; [0254]);
an actuator mechanism disposed on at least one of the electrosurgical pencil or the power unit, the actuator mechanism configured to control at least one of a suction level of the suction generator or delivery of the electrosurgical energy to the electrosurgical pencil (buttons on the handpiece 50632 – fig.2; buttons on the housing 50640 – fig.7); and
a return electrode electrically coupled to the electrosurgical energy source of the power unit, the return electrode configured to be adhered to a patient for returning, to the electrosurgical energy source, electrosurgical energy delivered to the tissue via the electrode of the electrosurgical pencil (50335 – fig.5; [0265]).
Regarding claim 15, Yates et al disclose wherein the electrosurgical pencil includes:
a nozzle defining a lumen in fluid communication with the suction generator for evacuating smoke from a surgical site (evacuation conduit – [0255]); and
an electrode in electrical communication with the electrosurgical energy source and configured to deliver electrosurgical energy to tissue (50034 – fig.2).
Regarding claim 18, Yates et al disclose an electrosurgical smoke evacuation kit, comprising:
an electrosurgical pencil configured to deliver electrosurgical energy to tissue and evacuate smoke from a surgical site (fig.2; [0255]);
a power unit fluidly and electrically coupled to the electrosurgical pencil, the power unit having a housing (fig.5-7; [0269]) and including:
an electrosurgical energy source disposed within the housing and configured to delivery electrosurgical energy to the electrode of the electrosurgical pencil (50306 – fig.5; [0265]);
a suction generator disposed within the housing and configured to evacuate the smoke from the surgical site via the electrosurgical pencil (fig.6; [0269]);
a filter disposed within the housing and configured to filter the smoke evacuated from the surgical site via the electrosurgical pencil (fig.1; [0254]); and
a power source disposed within the housing and configured to power the electrosurgical energy source and the suction generator (50304 – fig.5; [0263]); and
an electrosurgical supply line configured to electrically couple the electrosurgical pencil to the electrosurgical energy source of the power unit (50642 – fig.7);
a tube configured to fluidly couple the electrosurgical pencil to the suction generator of the power unit (50636 – fig.7);
a return electrode electrically coupled to the electrosurgical energy source of the power unit, the return electrode configured to be adhered to a patient for returning, to the electrosurgical energy source, the electrosurgical energy delivered to the tissue via the electrosurgical pencil (50335 – fig.5; [0265]); and
an electrosurgical return line configured to electrically couple the return electrode to the electrosurgical energy source of the power unit (50644 – fig.7).
Regarding claim 19, Yates et al disclose further comprising an actuator mechanism disposed on at least one of the electrosurgical pencil or the power unit, the actuator mechanism configured to control at least one of a suction level of the suction generator or delivery of the electrosurgical energy to the electrosurgical pencil (buttons on the housing of 50640 – fig.7).
Claim Rejections - 35 USC § 103
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.
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.
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.
Claim(s) 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yates et al () in view of Messerly et al (2017/0325878).
Regarding claim 17, Yates et al disclose the invention substantially as claimed but fail to explicitly disclose wherein the actuator mechanism is a slide switch configured to move longitudinally along a handle housing of the electrosurgical pencil.
However, Messerly et al disclose wherein an actuator mechanism is a slide switch configured to move longitudinally along a handle housing of an electrosurgical pencil (such control devices may include mechanical control devices, for example, without limitation, switches, push buttons, slide actuators, and rotatory actuators – [0128]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the actuator mechanism of Yates et al with a slide switch of Messerly et al as it would provide a well-known and conventional mechanical control device which is a structural and functional equivalent to a button.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROCHELLE DEANNA TURCHEN whose telephone number is (571)270-7104. The examiner can normally be reached Mon - Fri 6:30-2:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Christopher Koharski can be reached at (571)272-7230. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ROCHELLE D TURCHEN/Primary Examiner, Art Unit 3797
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