Skip to main content

Full text of "USPTO Patents Application 09870801"

See other formats


Fish & Richardson p.c. 


Frederick R Fish 
1855-1930 

WJC Rkhardson 
1859-1951 


BOSTOH 
DALLAS 
DELAWARE 
NEW YORK 
SAN DIEGO 
SILICON VALLEY 
TWIN CITIES 
WASHINGTON, DC 


500 Arguclio Street 
Suite 500 

Redwood City, California 
94063-IS26 

Telephone 
650839-5070 


Facsimile 
650839-5071 

WebSite 
www.fr.com 


BY FAX AND MAIL 

September 10,2002 

Perry Clark, Esquire 
Weil, Gotshal & Manges LLP 
201 Redwood Shores Parkway 
Redwood Shores, CA 94065 

Re: Arthrocare Suit - Delaware 

USDC-D. Del. - CA. No.01-504-SLR 

Dear Perry: 

I have enclosed a revised set of invalidity claim charts that correct some errors we 
found in the charts served on ArthroCare on September 6, 2002, and a chart — Exhibit 
E — that was inadvertently not included previously. 


Very truly yours, 



Kurtis MacFerrin 


cc: Jack B. Blumerifeld, Esq., Morris, Nichols, Arsht & Tunnell 

50101269.doc 


Exhibit A: 

Prior art references upon which Smith & Nephew presently intends to primarily rely. 



Issue/ 
Pub'n 
Date 

Patent Number/ 
Publication 

Inventor/Author 

Title 

8 

00/00/76 

Acta 

Medicotechnica 

Markt), Vol. 24, 
No. 4, 1976 129- 
134 

E. Elsasser and E. 
Roos 

Uber eiri Instrument zur 
leckstromfreien transurethral en 
Resection (Concerning An 
Instrument for Transurethral 
resection without leakage of 
current) 

10 

07/20/76 

US 3,970,088 

Charles F. Morrison 

Iilectrosurgical Devices 
Having Sesquipolar Electrode 
Structures Incorporated 
Therein 

15 

09/26/78 

US 4,116,198 and 
its file history 

Eberhard Roos 

Electro-Surgical Device 

22 

04/27/82 

US 4,326,529 

James D. Doss and 
Richard L. Hutson 

Comeal-Shaping Electrode 

23 

04/26/83 

US 4,381,007 

James D. Doss 

Multipolar Comeal-Shaping 
Electrode with Flexible 
xvemovaDie oiviii 

26 

06/00/85 

JACC Vol. 5, No. 
6, 1382-6 

Cornelis J. Slager, 
MSc, Catharina E. 
Essed, MD, Johan 
C.H. Schuurbiers, 
BSc, Nicolaas Bom, 
rn.1/, r^aincit w. 
Serruys, MD, Geert 
T Meester MD 
FACC 

Vaporization of 
Atherosclerotic Plaques by 

29 

00/00/87 

Kardiologie, 
Kardiol:76: Supp. 
6,67-71 (1987) 

C J. Slager, A.C. 
Phaff, C.E. Essed, 
J.CH. Schuurbiers, 
N. Bom, V.A. 
Vandenbroucke, and 
P.W. Serruys 

• 

Spark Erosion of 
Arteriosclerotic Plaques 

31 

06/23/87 

US 4,674,499 

David S.C. Pao 

Coaxial Bipolar Probe 

32 

07/00/88 

ValleylabPart 
Number 945 100 
102A 

Valleylab, Inc. 

Surgistat Service Manual 


1 


44 
ft 

Issue/ 
Date 

Patent Number/ 
Publication 

Tnvpntnr/Aiithnr 

1UVCU W 1 /rtUlUUI 

Title 



SPffiVol. 1068 
Catheter-based 

xMicinn on/1 

ocnsing oiiu 

Imaging 

Technology 

Psml C* NFarHella 
i <iUi V^. iNoiuvlla 

Radio Frequency Energy and 
Impedance Feedback 

36 

02/21/89 

US 4,805,616 

David S.C. Pao 

Bipolar Probes for Ophthalmic 
Surgery and Methods of 
Performing Anterior 
Capsulotomy 

38 

04/00/89 

JACCVol. 13 
No. 5, 1167-75 

Benjamin I. Lee, 
MD, FACC, Gary J. 
Becker, MD, Bruce 
F. Waller, MD, 
FACC, Kevin J. 
Barry, MS, Raymond 
J. Connolly, Ph.D, 
Jonathan Kaplan, 
MD, Alan R. 
Shapiro, MS, Paul C. 
Nardella, BS 

Thermal Compression and 
Molding of Atherosclerotic 
Vascular Tissue With Use of 
Radiofrequency Energy: 
Implications for 
Radiofrequency Balloon 
Angioplasty 

48 

12/11/90 

US 4,976,711 

David J. Farms, Mark 
A. Rydell, Peter 
Stasz 

ADiation v^atneter wun 
Selectively Deployable 
Electrodes 

51 

04/16/91 

US 5,007,908 

Mark A. Rydell 

Electrosurgical Instrument 
Having Needle Gutting 
Electrode And Spot-Coag 
Electrode 

52 

04/23/91 

US 5,009,656 

Harry G. Reimels 

Bipolar Electrosurgical 
Instrument 


2 


Exhibit B: 

Examples of where each limitation of the dependent claims 
of the '536 patent may be found in each reference. 


claim text \ reference 

1 

2 

3 

4 

5 

6 

7 

46. An eiectrosurgical system as 
in claim 45, wherein 








the return electrode forms a 
portion of the shaft of the 
eiectrosurgical probe. 

4:9-24 






Fig. 2 

47. An eiectrosurgical system as 
in claim 46 further including 








an insulating member 
circumscribing the return 
plectTfwle 

VlVirU VUV| 







3:58-61 

the return electrode being 
sufficiently spaced from the 
electrode terminal to minimize 

UUCvL lAjIlUtd UClVrCCll U1C IdUlli 

electrode and the patient's 
tissue 1 








55. The eiectrosurgical system 
of claim 45 wherein 








the electrode terminal comprises 
a single active electrode 
disposed near the distal end of 
the shaft. 

1:40-55 

206 

8:10:9:8 

3:10-28 

58 

2:54-57 

2:67-3:16 

56. The eiectrosurgical system 

/"v i f* 1 im A ^ at*** in 
Ml LldUU 4J W11CICU1 








the target site is selected from 

fVifi ormm r/Micicfino pcc/»ntiiil \\i 

of the abdominal cavity, 
thoracic cavity, knee, shoulder, 
hip, hand, foot, elbow, mouth, 
spine, ear, nose, throat, 
epiuci mis ana uermis oi uie 
natient's hodv 






1:45-50 


58. The eiectrosurgical. system 
of claim 45 wherein 








the frequency of the voltage 
applied between the return 
electrode and the electrode 
terminal is in the range of about 
20 kHz and 20 Mhz. 


206-07 

3:49-4:14 


58 



59. The eiectrosurgical system 
of claim 45 wherein 








the voltage applied between the 
electrode terminal and the return 
electrode is in the range from 10 
volts (RMS) to 1000 volts 
fRMSV 


211 



58 




Page 1 of 11 


Exhibit B: 

Examples of where each limitation of the dependent claims 
of the '536 patent may be found in each reference. 


claim text \ reference 

8 

9 

10 

11 

12 

13 

14 

46. An electrosurgical system as 
in claim 45, wherein 









the return electrode forms a 
portion of the shaft of the 
electrosurgical probe. 



7 


4:31-43 

2 




47. An electrosurgical system as 
in claim 46 further including 








an insulating member 
circumscribing the return 
electrode, 



5:50-57 

3 




the return electrode being 
sufficiently spaced from the 
electrode terminal to minimize 

Hirf*rt t.cmtucA hetween the return 

electrode and the patient's 
tissue. 

1 







55. The electrosurgical system 
of claim 45 wherein 








the electrode terminal comprises 
a single active electrode 
disposed near the distal end of 
the shaft. 

7 

7:58-68 

4:44-64 

3 

530 

6:45-54 


56. The electrosurgical system 

rif* claim whpTf*in 








the target site is selected from 
the proiiri consistinp e^entiallv 
of the abdominal cavity, 
thoracic cavity, knee, shoulder, 
hip, hand, foot, elbow, mouth, 
spine, ear, nose, throat, 

pniHprmic stnrl ff^rrrtic of ♦"Vi** 
CjJlUCIIUK) allU UClJJIIo Ul U1C 

natient's body. 

n 

0.0479167 


2 

527 



58. The electrosurgical system 
of claim 45 wherein 








the frequency of the voltage 
applied between the return 
electrode and the electrode 
terminal is in the range of about 
20 kHz and 20 Mhz. 


1:34-53 






59. The electrosurgical system 
of claim 45 wherein 








the voltage applied between the 
electrode terminal and the return 
electrode is in the range from 10 
volts (RMS) to 1000 volts 
fRMSY 


1:34-53 





7:26-42 


Page 2 of 1 1 


Exhibit B: 

Examples of where each limitation of the dependent claims 
of the '536 patent may be found in each reference. 


claim text \ reference 

15 

16 

17 

18 

19 

20 

21 

46. An electrosurgical system as 
in claim 45, wherein 









the return electrode forms a 
portion of the shaft of the 
electrosurgical probe. 

5:3-10 




2:34-46 

2:35-58 


47. An electrosurgical system as 
in claim 46 further including 








all llloUIalUlg IIICJIlUCi 

circumscribing the return 
electrode, 





2:34-46. 

2:35-58 


the return electrode being 
sufficiently spaced from the 
electrode terminal to minimize 
direct contact between the return 
electrode and the patient's 
tissue. 

3:5-20 






i 
t 
j 

55. The electrosurgical system 
of claim 45 wherein 








the electrode terminal comprises 
a single active electrode 
disposed near the distal end of 
the shaft 

4:66-5:2 

845 

3:1-52 

1:15-36 

2:34-46 

2:35-58 

333 

56. The electrosurgical system 
of claim 45 wherein 








the target site is selected from 
the group consisting essentially 
of the abdominal cavity, 
thoracic cavity, knee, shoulder, 
hip, hand, foot, elbow, mouth, 
spine, ear, nose, throat, 
epidermis and dermis of the 
narient's hrvdv 

1:18-27 

845 


2:21-63 



334 

5o 1 Tie elp^tm^nroipj*! cwtpm 

of claim 45 wherein 








the frequency of the voltage 
applied between the return 
electrode and the electrode 

trominnl ic in th*» ranof* r»f* q Knut 
ivrilJUltal Jo 111 UIC JuIlgC %JL ai/UUl 

20 kHz and 20 Mhz. 




8:30-39 

6:61-68 

2:35-58 

333 

59. The electrosurgical system 
of claim 45 wherein 








the voltage applied between the 
electrode terminal and the return 
electrode is in the range from 10 
volts (RMS) to 1000 volts 
(RMSY 




8:30-39 

5:46-6:7 

2:35-58 

333 


Page 3 of 11 


Exhibit B: 

Examples of where each limitation of the dependent claims 
of the '536 patent may be found in each reference. 


claim tPTt \ rpftf*r«*n**^ 

22 

23 

24 

25 

26 

27 

28 

46. An electrosurgical system as 
in claim 45, wherein 








me rcium eieciroue ioiijis a 
portion of the shaft of the 
electrosurgical probe. 


Fig. 1 




3:3047 


47. An electrosurgical system as 
in claim 46 further including 








ah insulating member 
circumscribing the return 
electrode, 


Fig. 1-2 




3:30-47 


the return electrode being 
sufficiently spaced from the 
electrode terminal to minimize 
direct contact between the return 
electrode and the patient's 
tissue. 


2:42-68 



1383 



55. The electrosurgical system 
of claim 45 wherein 








the electrode terminal comprises 
a single active electrode 
disposed near the distal end of 
the shaft. . 

2:41-43 

Fig: 9; 329 
30 

1425 

100 

1383 

1:26-50 

1:57-2:6 

56. The electrosurgical system 
of claim 45 wherein 








the target site is selected from 
the group consisting essentially 
of the abdominal cavity, 
thoracic cavity, knee, shoulder, 
hip, hand, foot, elbow, mouth, 
spine, ear, nose, throat, 
epidermis and dermis of the 
natienfx horfv 



1426 

100 

1383 

1:26-50 



58. The electrosurgical system 
of claim 45 wherein 








the frequency of the voltage 
applied between the return 
electrode and the electrode 
terminal is in the range of about 
20 kHz and 20 Mhz. 

3:46-51 

3:30-38 

1425 


1383 


7:62-8:14 

59. The electrosurgical system 
of claim 45 wherein 








the voltage applied between the 
electrode terminal and the return 
electrode is in the range from 10 
volts (RMS) to 1000 volts 
(RMSY 

3:46-51 

3:30-38 

1425 


1383 




Page 4 of 1 1 


Exhibit B: 

Examples of where each limitation of the dependent claims 
of the '536 patent may be found in each reference. 


claim text V reference 

29 

30 

31 

32 

33 

34 

35 

46. An electrosurgical system as 
in claim 45, wherein 








the return electrode forms a 
portion of the shaft of the 
electrosurgical probe. 

69 


4:55-5:16 





47. An electrosurgical system as 
in claim 46 further including 








an insulating member 
circumscribing the return 
electrode, 

69 


4:55-5:16 





the return electrode being 
sufficiently spaced from the 
electrode terminal to minimize 
direct contact between the return 
electrode and the patient's 
tissue. 


Fig. 5 

Fig. 4 

- 

Fig. 2 

44 


55. The electrosurgical system 
of claim 45 wherein 








the electrode terminal comprises 
a single active electrode 
disposed near the distal end of 
the shaft 

68 

5:1 1-27 

5:17-31 





56. The electrosurgical system 
of claim 45 wherein 








the target site is selected from 
the group consisting essentially 
of the abdominal cavity, 
thoracic cavity, knee, shoulder, 
hip, hand, foot, elbow, mouth, 
spine, ear, nose, throat, 
epidermis and dermis of the 
narJent's hodv 

68 


9:37^17 



42 


58. The electrosurgical system 
of claim 45 wherein 








the frequency of the voltage 
applied between the return 
electrode and the electrode 
terminal is in the range of about 
20 kHz and 20 Mhz. 

68 




2:45-3:16 

42 


59. The electrosurgical system 
of claim 45 wherein 







the voltage applied between the 
electrode terminal and the return 
electrode is in the range from 10 
volts (RMS) to 1 000 volts 
fRMSV 

68 



8 

2:45-3:16 




Page 5 of 11 


Exhibit B: 

Examples of where each limitation of the dependent claims 
of the '536 patent may be found in each reference. 


claim text \ reference 

36 

37 

38 

39 

40 

41 

42 

46. An electrosurgical system as 
in claim 45, wherein 








tKtp rf»tiirr* p|f*/*tr/tsfo "firirm*; 3 
U1C ICIUIII CIClfttUUC a 

portion of the shaft of the 
electrosurgical probe. 




Fig. 5; 8:9- 
34 

4:16-28 

292 

275 

47. An electrosurgical system as 
in claim 46 further including 








an lnsuiaiing memoer 
circumscribing the return 
electrode, 

4:4-39 



Fig. 5; 8:9- 
34 

4:36-43 

292 

275 

the return electrode being 
sufficiently spaced from the 
electrode terminal to minimize 
direct contact between the return 
electrode and the patient's 
tissue. 








55. The electrosurgical system 
of claim 45 wherein 








the electrode terminal comprises 
a single active electrode 
disposed near the distal end of 
the shaft. 

4:40-58 

662 

1168 

Fig. 5; 8:9- 
34 

4:16-35 

292 

275 

56. The electrosurgical system 
of claim 45 wherein 








the target site is selected from 
the group consisting essentially 
of the abdominal cavity, 
thoracic cavity, knee, shoulder, 
hip, hand, foot, elbow, mouth, 
spine, ear, nose, throat, 
epidermis and dermis of the 
natient\<; hodv. 

2:16-34 


1168 

3:63-4:16 

5:62-6:19 

291 

275 

- 

58. The electros urgics! system 
of claim 45 wherein 








the frequency of the voltage 
applied between the return 
electrode and the electrode 
terminal is in ute range oi aooui 
20 kHz and 20 Mhz. 



1168 


2:62-65 



59. The electrosurgical system 
of claim 45 wherein 








the voltage applied between the 
electrode terminal and the return 
electrode is in the range from 10 
volts (RMS) to 1000 volts 
CRMS). 









Page 6 of 11 


Exhibit B: 

Examples of where each limitation of the dependent claims 
of the '536 patent may be found in each reference. 


claim text \ reference 

43 

44 

45 

46 

47 

48 

49 

46. An electrosurgical system as 
in claim 45, wherein 








the return electrode forms a 

ILIV IVVU1II VI vVU Wv Iwl II **J i* 

portion of the shaft of the 
electrosurgical probe. 




3:41-4:2 

1:57-235 

4:18-28 


47. An electrosurgical system as 
in claim 46 further including 








oil uiou idling mcniuci 
circumscribing the return 
electrode, 




3:41-4:2 

1:57-235 

4:18-28 


the return electrode being 
sufficiently spaced from the 
electrode terminal to minimize 
direct contact between the return 
electrode and the patient's 
tissue, 



inherent 

6:42 


6:28 


55. The electrosurgical system 
of claim 45 wherein 








the electrode terminal comprises 
a single active electrode 
disposed near the distal end of 
the shaft. 

2:8-18 

3:48-51 

5:7-19 

3:41-4:2 

1:57-2:35 

3:65-4:17 

3:27-44 

56. The electrosurgical system 
of claim 45 wherein. 








the target site is selected from 
the group consisting essentially 
of the abdominal cavity, 
thoracic cavity, knee, shoulder, 
hip, hand, foot, elbow, mouth, 
spine, ear, nose, throat, 
epidermis and dermis of the 
natient's body. 

1:1-4 

3:6-25 


3:8-34 

1:18-39 


1:47-68 

of claim 45 wherein 








the frequency of the voltage 
applied between the return 
electrode and the electrode 

t Arm i nQ 1 t c in thp ronof* r\f n\\f\llt 
IClIUlilal lo ul U1C IdUgC KJl dUUUl 

20 kHz and 20 Mhz. 


3:36-41 


6:5-30 




59. The electrosurgical system 
of claim 45 wherein 








the voltage applied between the 
electrode terminal and the return 
electrode is in the range from 10 
volts (RMS) to 1000 volts 
(RMSY 









Page 7 of 11 


Exhibit B: 

Examples of where each limitation of the dependent claims 
of the '536 patent may be found in each reference. 


claim text \ reference 

50 

51 

52 

53 

54 

55 

56 

46. An electrosurgical system as 
in claim 45, wherein. 








the return electrode forms a 
portion of the shaft of the 
electrosurgical probe. 

3:17-23 

3:35-57 

2:63-3.5 

3:37,64 


2:62-68 

1:61-2:11 

47. An electrosurgical system as 
in claim 46 further including 








an insulating member 
circumscribing the return 
electrode, 

3:17-23 

3:35-57 

1:42-50 

337-64 


2:62-68 


the return electrode being 
sufficiently spaced from the 
electrode terminal to minimize 
direct contact between the return 
electrode and the patient's 
tissue. 


3:53 




* 


55. The electrosurgical system 
of claim 45 wherein 








the electrode terminal comprises 
a single active electrode 
disposed near the distal end of 
the shaft 

1:40-51 

3:35-57 

1:42-50 

3:37-64 

670 


1:61-2:11 

56. The electrosurgical system 
of claim 45 wherein 








the target site is selected from 
the group consisting essentially 
of the abdominal cavity, 
thoracic cavity, knee, shoulder, 
hip, hand, foot, elbow, mouth, 
spine, ear, nose, throat, 
epidermis and dermis of the 
natient's horfv: 

2:2-20 

1:9-12 

1:5-9 

1:9-15 

669 

1:52-55 

1:50-58 

58. The electrosurgical system 
of claim 45 wherein 








the frequency of the voltage 
applied between the return 
electrode and the electrode 
terminal is in the range of about 
20 kHz and 20 Mhz. 





669 



59. The electrosurgical system 
of claim 45 wherein 








the voltage applied between the 
electrode terminal and the return 
electrode is in the range from 10 
volts (RMS) to 1000 volts 
(KMSi 





672 




Page 8 of 1 1 


Exhibit B: 

Examples of where each limitation of the dependent claims 
of the '536 patent may be found in each reference. 


claim text \ reference 

57 

58 

59 

60 

61 

62 

63 

46. An electrosurgical system as 
in claim 45, wherein 








the return' elertrtvfp forms a 

portion of the shaft of the 
electrosurgical probe. 


4:27-33 


3:52-66 


3:12-27 


47. An electrosurgical system as 
in claim 46 further including 








Ctn tnciil^if ino mpmhpr 
all IJloUluUlIg IIICIllUCI 

circumscribing the return 
electrode. 




3:52-66 


3:12-27 


die return electrode being 
sufficiently spaced from the 
electrode terminal to rniniinize . 
direct contact between the return 
electrode and the patient's 
tissue. 






Fig. 3 


55. The electrosurgical system 
of claim 45 wherein 








the electrode terminal comprises 
a single active electrode 
disposed near the distal end of 
the shaft. 




4:15-29 

5:10-28 

3:28-60 


56. The electrosurgical system 
of claim 45 wherein 








the target site is selected from 
the group consisting essentially 
of the abdominal cavity, 
thoracic cavity, knee, shoulder, 
hip, hand, foot, elbow, mouth, 
spine, ear, nose, throat, 
epidermis and dermis of the 
patient's horfv 

4:20-5:5 

3:30-49 

1:5-12 



32-1-32 

15:62-16:7 

jo. i tic ciccuAjburgiwii oyMciii 

of claim 45 wherein 








the frequency of the voltage 
applied between the return 
electrode and the electrode 

tprm in?! 1 ic trrfttA ranop nf ahnitf 
t-wi iiiutai lo m UIC laJlgc %Jl auvUl 

20 kHz and 20 Mhz. 

59. The electrosurgical system 
of claim 45 wherein 





4:28-48 


i 





the voltage applied between the 
electrode terminal and the return 
electrode is in the range from 10 
volts (RMS) to 1000 volts 
CRMS). 





4:28-48 


321-32 


Page 9 of 11 


ExhibitB: 

Examples of where each limitation of the dependent claims 
of the '536 patent may be found in each reference. 


claim text \ reference 

64 

65 

66 

67 

68 

69 

70 

46. An electrosurgical system as 
in claim 45 t wherein 








th^ rptiim plprtrnHp forms a 

portion of the shaft of the 
electrosurgical probe. 




4:37-52 

4:33-43 


2:37-46 

47. An electrosurgical system as 
in claim 46 further including 








an insuiaiing memoer 
circumscribing the return 
electrode. 




4:37-52 

4:33-43 


2:58-66 

the return electrode being 
sufficiently spaced from the 
electrode terminal to minimize 
direct contact between the return 
electrode and the patient's 
tissue. 








55. The electrosurgical system 
of claim 45 wherein 








the electrode terminal comprises 
a single active electrode 
disposed near the distal end of 
the shaft 

5:44-63 

5:20-36 

1:63-2:17 

4:37-52 

4:33-43 

3:13-16 

2:37-46 

56. The electrosurgical system 
of claim 45 wherein 








the target site is selected from 
the group consisting essentially 
of the abdominal cavity, 
thoracic cavity, knee, shoulder, 
hip, hand, foot, elbow, mouth, 
spine, ear, nose, throat, 
epidermis and dermis of the 
patient's hodv. 




1:10-15 



_ — 

jo. l ne eiecrrosurgicai sysxem 
of claim 45 wherein 



i 





the frequency of the voltage 
applied between the return 
electrode and the electrode 

terminal ic in thf* wnop nf nKont 
luminal id hi uic laiigc. ui tnjxjui 

20 kHz and 20 Mhz. 


6:25-40 






59. The electrosurgical system 
of claim 45 wherein 








the voltage applied between the 
electrode terminal and the return 
electrode is in the range from 10 
volts (RMS) to 1 000 volts 
CRMS). 









Page 10 of 1 1 


Exhibit B: 

Examples of where each limitation of the dependent claims 
of the '536 patent may be found in each reference. 


claim text \ reference 

71 

72 

73 

46. An electrosurgical system as 
in claim 45, wherein 




the return electrode forms a 
portion of the shaft of the 
electrosurgical probe. 



5:36-58 

47. An electrosurgical system as 
in claim 46 further including 




an insulating member 
circumscribing the return 

CICvllUUC, 

5:36-58 



the return electrode being 
sufficiently spaced from the 
electrode terminal to minimize 
aireci contact Derween me rcuiru 
electrode and the patients 
tissue, 


2:29-36 


55. The electrosurgical system 
of claim 45 wherein 




the electrode terminal comprises 
a single active electrode 
disposed near the distal end of 
the shaft. 

3:43-53 

2:36-41 
. _ ._. 

6:8-22 

56. The electrosurgical system 
oi claim hd wnerein 




the target site is selected from 

tttA ornnn <* % i"»ncicMTi{j ^ccPntiallV 

of the abdorninal cavity, 
thoracic cavity, knee, shoulder, 
hip, hand, foot, elbow, mouth, 
spine, ear, nose, throat, 
epidermis and dermis of the 
natient's bodv. 


2:63-68 

3:26-34 

58. The electrosurgical system 
of claim 45 wherein 




the frequency of the voltage 
applied between the return . 
electrode and the electrode 
terminal is in the range of about 
20 kHz and 20 Mhz_ 




59. The electrosurgical system 
of claim 45 wherein 




the voltage applied between the 
electrode terminal and the return 
electrode is in the range from 10 
volts (RMS) to 1000 volts 
YRMSV 



6:23-33 


Page 11 of 11 


Exhibit C: 

Examples of where each limitation of the dependent claims 
of the '882 patent may be found in each reference. 


claim text \ reference 

1 

2 

3 I 4 

5 

6 

1 . A method for applying energy to a target 
site on a patient body structure comprising: 







providing an electrode terminal and 

1:15-27 

207 

3:48-4:14 

1:5-2:2 

58-60 

3:3-7 

a return electrode electrically coupled to a 
high frequency voltage source; 

1:15-27 

207 

3:48-4:14 

1:5-2:2 

58-60 

3:3-7 

positioning the active electrode in close 
proximity to the target site in the presence of 
an electrically conducting terminal [sic]; and 


211 


1:38-44 



applying a high frequency voltage between 
the electrode terminal and the return 
electrode, the high frequency voltage being 
sufficient to vaporize the fluid in a thin layer 
over at least a portion of the electrode 
terminal and to induce the discharge of 
energy to the target site in contact with the 
vanor laver. 



inherent 

i 

' i 

• | 

58,61 


13. The method of claim 1 wherein 







at least a portion of the energy induced is in 
the form of photons having a wavelength in 
the ultraviolet spectrum. 







17. The method of claim 1 wherein 







the high frequency voltage is at least 200 
volts peak to peak. 


211 



58 


1 8. The method of claim 1 wherein 







the high frequency voltage is in the range 
from about 500 to 1400 volts peak to peak. 


211 



CO • 

58 


21. The method of claim 1 wherein 







the distance between the most proximal 
portion of the electrode terminal and the 
most distal portion of the return electrode is 
in the range from 0.5 to 10 mm. 






3:22-40 

23. The method of claim 1 wherein 







the liquid phase of the electrically 
conducting fluid has a conductivity greater 
than 2 mS/cm. 



5:3-5 




24. The method of claim 1 wherein 







the liquid phase of the electrically 
conductive fluid comprises isotonic saline. 



5:3-5 




29. The method of claim 28 wherein the 
applying step comprises: 







vaporizing the electrically conducting fluid 
Ln a thin layer over at least a portion of the 
electrode terminal; and 



inherent 


58,61 



Page 1 of 26 


Exhibit C: 

Examples of where each limitation of the dependent claims 
of the '882 patent may be found in each reference. 


claim text \ reference 

1 

2 

3 

4 

: 5 

6 

inducing the discharge of photons to the 
target site in contact with the vapor layer. 







47. The method of claims 23 or 48f 11 
wherein 







the electrode terminal has a contact surface 
area in the range of about 0.25 mm 2 to 
50 mm 1 . 



2:36-3:25 




45; i ne meinoa oi claims ana zo wncrcm 







the high frequency voltage is at least 200 
volts peak to peak. 


211 



58 


49. The method of claims 26 and 28 wherein 







the high frequency voltage is in the range 
from about 500 to 1400 volts peak to peak. 





JO 


50. The method of claims 26 and 28 wherein 






the electrode terminal is positioned between 
0.02 to 2:0 mm from the target site. 







54. The method of claims 23 or 48UI 
further comprising 







evacuating fluid generated at the target site 
with a suction lumen having a distal end 
adjacent the electrode terminal. 



O.tA ft-© 

o.lU-V.o 

3.1U-/5 



f ll The Certificate of Correction dated ^4aY 







2, 2000, refers to claim numbers 23 or 48; 

no certificate of correction has been 
requested, let alone issued, to correct this. or 

any other claim to refer to claims I and 28, 

respectively* as ArthroCare suggests and 

assumes. 

\2l The Certificate of Correction dated May 







2. 2000, refers to claim numbers 23 or 48; 

no certificate of correction has been 
requested, let alone issued, to correct this or 

any other claim to refer to claims 1 and 28. 

respectively, as ArthroCare suggests and 

assumes. 


Page 2 of 26 


Exhibit C: 

Examples of where each limitation of the dependent claims 
of the '882 patent may be found in each reference. 


claim text \ reference 

7 

8 

9 

10 

11 

12 

1 . A method for applying energy to a target 
site on a patient body structure comprising: 







providing an electrode terminal and 

2:44-66 

1 

2:33-52 

4:18-28 

2 

528 

a return electrode electrically coupled to a 
high frequency voltage source; 

2:44-66 

1 

2:33-52 

4:18-28 

2 

528 

positioning the active electrode in close 
proximity to the target site in the presence of 
an electrically conducting terminal [sic]; and 

: : : 


5 

2:40-63 



528 

applying a high frequency voltage between 
the electrode terminal and the return 
electrode, the high frequency voltage being 
sufficient to vaporize the fluid in a thin layer 
over at least a portion of the electrode 
terminal and to induce the discharge of 
energy to the target site in contact with the 
vannr laver. 


1,6 


6:54-7:5 



13: The method of claim 1 wherein 







at least a portion of the energy induced is in 
the form of photons having a wavelength in 
the ultraviolet spectrum. 




5:58-00 



17. The method of claim 1 wherein 







the high frequency voltage is at least 200 
volts peak to peak. 



1:34-53 




18. The method of claim 1 wherein 







the high frequency voltage is in the range 
from about 500 to 1400 volts peak to peak. 







2 1 The method of claim 1 wherein 







the distance between the most proximal 
portion of the electrode terminal and the 
most distal portion of the return electrode is 
in the range from 0.5 to 10 mm. 

3:17-32 




2:1-14 


23. The method of claim 1 wherein 







the liquid phase of the electrically 
conducting fluid has a conductivity greater 
than 2 rnS/cm. 


inherent 




529 

OA T"h*» m*>f hfvi of r la im 1 wliprpin 
*.*t. i IJv iiivutuu \ji i*iauii t wuus/iii 







the liquid phase of the electrically 
conductive fluid comprises isotonic saline. 


inherent 




529 

29. The method of claim 28 wherein the 
applying step comprises: 







vaporizing the electrically conducting fluid 
in a thin layer over at least a portion of the 
electrode terminal; and 


1,6 


6:54-7:5 




Page 3 of 26 


Exhibit C: 

Examples of where each limitation of the dependent claims 
of the '882 patent may be found in each reference. 


claim text \ reference 

7 | 8 

9 

10 

11 

12 

inducing the discharge of photons to the 
target site in contact with the vapor layer. 




5:58-66 



47. The method of claims 23 or 48F 1 1 
wherein 







the electrode terminal has a contact surface 
area in the range of about 0.25 mm 2 to 
50 mm 2 . 





3 


AH TliA m.*>iKf%H rtf rlaimc anH Oft \i/fl*>r£MTl 
•to. IliC IllClIiUU UI Wall J 15 £-y> allU wnciciii 







(ha ri«f*n rr&ft* I*>rv/"*A/ \Jf\i t"0 Ct& ic 0# lAOCt Villi 

me nign iretjucnvy vuiiage u> ai icaoi *uu 
volts peak to peak. 



1:34-53 




49. The method of claims 26 and 28 wherein 







the high frequency voltage is in the range 
from about 500 to 1400 volts peak to peak. 



1 :34-53 




50. The method of claims 26 and 28 wherein 







: : rr — ~7T 

the electrode terminal is positioned between 

0.02 to 2.0 mm from the target site. 







j4. i ne metnoo oi claims Z3 or **oizi 
further comprising 







CVaLrUalUIg UUIU gClICIalCU al U1C UllgCl olic 

with a suction lumen having a distal end 
adjacent the electrode terminal: 







f 1] The Certificate of Correction dated May 







2. 2000, refers to claim numbers 23 or 48; 

no certificate of correction has been 
rec{uesieQ. jei aione issued, 10 curie t.i una kji 

ally UtllCi ^IdlllJ l\J IClCf %\J Hall Hi 1 allU jCO, 

respcciiveiY* as MJinro^are suggest:* «uiu 

assumes. 

T21 The Certificate of Correction dated Mav 







2, 2000, refers to claim numbers 23 or 48; 

no certificate of correction has been 
requested, let alone issued, to correct this or 

anv other claim to refer to claims 1 and 28. 

respectively, as ArthroCare suacests and 

assumes. 


Page 4 of 26 


Exhibit C: 

Examples of where each limitation of the dependent claims 
of the '882 patent may be found in each reference. 


claim text \ reference 

13 

14 

15 

16 

17 

18 

1 . A method for applying energy to a target 
site on a patient body structure comprising: 







providing an electrode terminal and 

4:15; 7:38- 
50 


1:5-17 

845-46 

6:1-30 

1:12-37 

a return electrode electrically coupled to a 
high frequency voltage source; 

4:15; 7:38- 
50 


1:5-17 

845-46 

6:1-30 

1:12-37 

positioning the active electrode in close 
proximity to the target site in the presence of 
an electrically conducting terminal [sic]; and 



5:26-30 

848 


3:67-4:3 

applying a high frequency voltage between 
the electrode terminal and the return 
electrode, the high frequency voltage being 
sufficient to vaporize the fluid in a thin layer 
over at least a portion of the electrode 
terminal and to induce the discharge of 
energy to the target site in contact with the 
vannr laver . - 

4:47 


1:33-40 



inherent 

13. The method of claim 1 wherein 







at least a portion of the energy induced is in 
the form of photons having a wavelength in 
the ultraviolet spectrum. 



3:31-33 

845 



17. The method of claim 1 wherein 







the high frequency voltage is at least 200 
volts peak to peak. 


7:26- 
42;Fig. 6 




8:30-39 

18. The method of claim I wherein 







the high frequency voltage is in the range 
from about 500 to 1400 volts peak to peak. 


7:26- 
42;Fig.6 





21. The method of claim 1 wherein 







the distance between the most proximal 
portion of the electrode terminal and the . 
most distal portion of the return electrode is 
in the range from 0.5 to 10 mm. 







23. The method of claim 1 wherein 







the liquid phase of the electrically 
conducting fluid has a conductivity greater 
than 2 mS/cm. 







24. The method of claim 1 wherein 







the liquid phase of the electrically 
conductive fluid comprises isotonic saline. 







29. The method of claim 28 wherein the 
applying step comprises: 







vaporizing the electrically conducting fluid 
in a thin layer over at least a portion of the 
electrode terminal; and 

4:47 


1:33-40 



inherent 


Page 5 of 26 


Exhibit C: 

Examples of where each limitation of the dependent claims 
of the '882 patent may be found in each reference. 


claim text \ reference 

13 

14 

15 

16 

17 

18 

inducing the discharge of photons to the 
target site in contact with the vapor layer. 



3:31-33 

845 



47. The method of claims 23 or 48fl 1 
wherein 







the electrode terminal has a contact surface 
area in the range of about 0.25 mm 2 to 
50 mm 2 . 

1 1 :62- 
12:34 






Aft TTif mpthrwf of rlnim<; 7(% and 28 wherein 







tVkt* Ktoh fi*Ami pnrvr vrvltaop ic. at lpfl<it 700 

volts peak to peak. 


7:26-42; 
Fig. 6 




8:30-39 

49. The method of claims 26 and 28 wherein 







the high frequency voltage is in the range 
rrom aDoui duu 10 i^uu voiis pedK w pcoii. 


7:26-42; 
Fig. 6 





50. The method of claims 26 and 28 wherein 




• 



: — %~- ~ T7~ — 

the electrode terminal is positioned between 
0X)2 to 2.0 mm from the target site. 







3*t. j ne uieinou 01 cidirru> zj or- **oiz. i 
iuiuier compnsinic 







pvarnatinff fTiiift ppnpratefl at the tareet site • 
with a suction lumen having a distal end 
adjacent the electrode terminal. 





■ ■ 


111 I ne L^cm riCtiic or v^orreciionuaicu ivui y 







2, 2000, refers to claim numbers 23 or 48; 

flU ^ClLllIL.dlC Ul tvl [CvllUlJ I lab 

rf*f~t 1 1 <>c t !*»t o iccnpri tn mrrf*{~t tnic or 

anv nttipr oliiim frt rpfpr trvf* liiirn^ I nnn */X ■ 
<XX 1 Y Vlllvl Vlallll IU ICJvl Iv trlallllA I OJiu x.o. 


assumes. 

T21 The Certificate of Correction dated May 







2, 2000. refers to claim numbers 23 or 48; 

no certificate of correction has been 
requested let alone issued* to correct this or 

any other claim to refer to claims I and 28, 

respectively, as ArthroCare susaests and 

assumes. 


Page 6 of 26 


Exhibit C: 

Examples of where each limitation of the dependent claims 
of the '882 patent may be found in each reference. 


claim text \ reference 

19 

20 

21 

22 

23 

24 

1 . A method for applying energy to a target 
site on a patient body structure comprising: 







providing an electrode terminal and 

2:33-46 

2:35-58 

333 

2:21-58 

2:42-68 

1425 

a return electrode electrically coupled to a 
hfeh frequency voltage source; 

2:33-46 

235-58 

333 

2:21-58 

2:42-68 

1425 . 

positioning the active electrode in close 
proximity to the target site in the presence of 
an electrically conducting terminal [sic]; and 

1:34-38 

2:35-58 

334 

2:21-58 

2:42-68; 
3:66 

1425 

jmnlvinp a hifh freemen cv voltaee between 
the electrode terminal and the return 
electrode, the high frequency voltage being 

*i «k*i+ tr\ uorvstriv^ tVkf> fltll/l in A tVl in IjlVPT 
SUIIlCICIll lO VoUVlliJC UIC 1IU1U 111 d U1U1 laj^M 

over at least a portion of the electrode 
terminal and to induce the discharge of 
energy to the target site in contact with the 
vanor laver 







13. The method of claim 1 wherein 





: 


at least a portion of the energy induced is in 
me i oi in 01 pnoions naving a wavcicn^ui m 
the ultraviolet spectrum- 







17. The method of claim 1 wherein 







the high frequency voltage is at least 200 
volts peak to peak. 





3:30-38 


18. The method of claim 1 wherein 







thp hioh frp'niipnrv vnltaoe tc in the ranf*e 

UIC llll^ll UCUUCIILjl, VUlldgb IS III Ulb 

frnm nhniit SftO tr> 1400 volte neak to neak 





3:30-38 


21 . The method of claim 1 wherein 







the distance between the most proximal 
portion of the electrode terminal and the 
most distal portion of the return electrode is 
in the range from 05 to 10 mm. 







23. The method of claim 1 wherein 







the liquid phase of the electrically 
conducting fluid has a conductivity greater 
than 2 mS/cm. 



334 

2:47-51 

3:65-68 

1426 

24. The method of claim 1 wherein 







the liquid phase of the electrically 
conductive fluid comprises isotonic saline. 



334 

2:47- 
51;Fig.l 

3:65-68 

1426 

29. The method of claim 28 wherein the 
applying step comprises: 







vaporizing the electrically conducting fluid 
in a thin layer over at least a portion of the 
electrode terminal; and 








Page 7 of 26 


Exhibit C: 

Examples of where each limitation of the dependent claims 
of the '882 patent may be found in each reference. 


claim text V reference 

19 

20 

21 

22 

23 

24 

inducing the discharge of photons to the 
target site in contact with the vapor layer. 


-. 





47. The method of claims 23 br48f 11 
wherein 







the electrode terminal has a contact surface 
area in the range of about 025 mm 2 to 
50 mm 2 . 



333 

5:31-33 


1425 

481 The method of claims 26 and 28 wherein 







the high frequency voltage is at least 200 
volts peak to peak. 





3:30-38 


49. The method of claims 26 and 28 wherein 







the high frequency voltage is in the range 
from about 500 to 1400 volts peak to peak. 







50. The method of claims 26 and 28 wherein 







ttlf* <*lpf~tr<lflf* tprminal ic rtncitiAn^H Kptu/ppn 

Ulv vlbVU UUC l&I U1UK11 lo (JUoJUULICU UCIWGC11 

0 (Y? tf» "7 0 mm ftran tYit> tnroAt cit<* 
V.w^ W £*.\J 11UJI tl will lilC Loigvl oIlC. 







54. The method of claims 23 or 48121 
further comprising 







evacuating fluid generated at the target site 
with a suction lumen having a distal end 

aujaccni UJC clcCLTOQc lei III Ilia I. 







Til The Certificate of CnrreetinTi Hated Mav 







2, 2000. refers to claim numbers 23 or 48: 

no certificate of correction has been 
reouested. let alone issued, to correct this or 

any other claim to refer to claims 1 and 28. 

respectively, as ArthioCare suggests and 

assumes. 

F21 The Certificate of Correction dated Mav 







2. 2000. refers to claim numbers 23 or 48: 

no certificate of correction has been 
reauested. let alone issued, to correct this or 

any other claim to refer to claims 1 and 28. 

respectively, as ArthroCare susgests and 

assumes 

1 


Page 8 of 26 


Exhibit C: 

Examples of where each limitation of the dependent claims 
of the '882 patent may be found in each reference. 


claim text \ reference 

25 

26 

27 . 

28 

29 

30 

1 . A method for applying energy to a target 
site on a patient body structure comprising: 


! 





[providing an electrode terminal and 

99 

1383 

2:38-66 

2:23-33 

67-68 

4:32-5:10 

a return electrode electrically coupled to a 
hifch frequency voltaae source; 

99 

1383 

2:38-66 

2:23-33 

67-68 

4:32-5:10 

positioning the active electrode in close 
proximity to the target site in the presence of 
an electrically conducting terminal [sic]; and 

100 

1383 

1:18; 3:48- 
53 

5:28-31 

68 

4:48-58 



applying a high frequency voltage between 
the electrode terminal and the return 
electrode, the high frequency voltage being 
sufficient to vaporize the fluid in a thin layer 
over at least a portion of the electrode 
terminal and to induce the discharge of 
energy to the target site in contact with the 
vapor layer. ._ 


1382-83 

inherent 



inherent 

13. The method of claim 1 wherein • 







at least a portion of the energy induced is in 
the form of photons having a wavelength in 
the ultraviolet spectrum. 


1382 



OS 

c.n *>T • 
X 1 1-Z / 

17. The method of claim 1 wherein 







the high frequency voltage is at least 200 
volts peak to peak. 


1383 



68 


1 8. The method of claim I wherein 







the high frequency voltage is in the range 
from about 500 to 1400 volts peak to peak. 


1383 



Do 



21. The method of claim 1 wherein 







the distance between the most proximal 
portion of the electrode terminal and the 
most distal portion of the return electrode is 
in the range from 0.5 to 10 mm. 


1383 





23. The method of claim 1 wherein 







the liquid phase of the electrically 
conducting fluid has a conductivity greater 
than 2 mS/cm. 

100 

1383 


1:57-2:6 

68 


z**. me meuioa oi ciaim i vvuci cm 







the liquid phase of the electrically 
conductive fluid comprises isotonic saline. 

100 

1383 


1:57-2:6 

68 

7:3-8:5 

29. The method of claim 28 wherein the 
applying step comprises: 







vaporizing the electrically conducting fluid 
in a thin layer over at least a portion of the 
electrode terminal; and 


1382-83 

inherent 



inherent 


Page 9 of 26 


Exhibit C: 

Examples of where each limitation of the dependent claims 
of the '882 patent may be found in each reference. 


claim text \ reference 

25 

26 

27 

28 

29 

30 

inducing the discharge of photons to the 
tarpet *site in contact with the vanor laver 


1382 



68 

5:11-27 

47 The method nf claims 23 or 48f 1 1 
wherein 








thf* p|p^*tTffcHp fprm trial hnc a fwitnrt ciirfppj* 

area in the range of about 0.25 mm 2 to 
50 torn 2 . 


1383 



68 


48. The method of claims 26 and 28 wherein 







the high frequency voltage is at least 200 
volts peak to peak. 


1383 



68 


49. The method of claims 26 and 28 wherein 







the high frequency voltage is in the range 
from about 500 to 1400 volts peak to peak. 


1383 



68 


50. The method of claims 26 and 28 wherein 







the electrode terminal is positioned between 
0.02 to 2.0 mm from the target site. 


1383-84 



68 


54. The method of claims 23 or 48f2 1 
further comprising 







evacuating fluid generated at the target site 
with a suction lumen having a distal end 
adjacent the electrode terminal. 







Til The Certificate of Correction dated Mav 







2. 2000. refers to claim numbers 23 or 48; 
no certificate of correction has been 
requested let alone issued, to correct this or 







anv other claim to refer to claims 1 and 28, 







respectively, as ArthroCare suggests and 
assumes. 







121 The Certificate of Correction dated Mav 







2, 2000. refers to claim numbers 23 or 48; 
no certificate of correction has been 
requested let alone issued, to correct this or 







anv other claim to refer to claims 1 and 28, 







respectively, as ArthroCare suggests and 








Page 10 of 26 


Exhibit C: 

Examples of where each limitation of the dependent claims 
of the '882 patent may be found in each reference. 


claim text \ reference 

31 

32 

33 

34 

35 

36 

1 . A method for applying energy to a target 
site on a patient body structure comprising: 







providing an electrode terminal and 

2:45-58 


2:45-69 

42 

248 

4:4-39 

a return electrode electrically coupled to a 
high frequency voltage source; 

2:45-58 


2:45-69 

42 

248 

4:4-39 

positioning the active electrode in close 
proximity to the target site in the presence of 
an electrically conducting terminal [sic]; and 

3:31;7:65 


2:45-69 

43 

248 

- 

7:30-32 

- l'~ — " — j r~ 

applying a high frequency voltage between 

the electrode terminal and the return . 

electrode, the high frequency voltage being 

sufficient to vaporize the fluid in a thin layer 

over at least a portion of the electrode 

terminal and to induce the discharge of 

energy to the target site in contact with the 

vanor laver : : 







13. The method of claim 1 wherein 







at least a portion of the energy induced is in 
the form of photons having a wavelength in 
the ultraviolet spectrum. 







17. The method of claim 1 wherein 







the high frequency voltage is at least 200 
volts peak to peak. 


8 





18. The method of claim 1 wherein 







the high frequency voltage is in the range 
from about 500 to 1 400 volts peak to peak. 


o 
o 



. . 


21 . The method of claim 1 wherein 







the distance between the most proximal 
portion of the electrode terminal and the 
most distal portion of the return electrode is 
in the range from 0.5 to 10 mm. 

2:45-67 





6:34-37 

23. The method of claim 1 wherein 







the liquid phase of the electrically 
conducting fluid has a conductivity greater 
than 2 raS/cm. 

7:3-8:5 


5:4-30 


248 

7:26-52 

24. The method of claim 1 wherein 







the liquid phase of the electrically 
conductive fluid comprises isotonic saline. 





248 

7:26-52 

29. The method of claim 28 wherein the 
applying step comprises: 







vaporizing the electrically conducting fluid 
in a thin layer over at least a portion of the 
electrode terminal; and 








Page 1 1 of 26 


Exhibit C: 

Examples of where each limitation of the dependent claims 
of the '882 patent may be found in each reference. 


claim text \ reference 

31 

32 

33 

34 

35 

36 

inducing the discharge of photons to the 
tarpet site in contact with the vanor laver. 








47 The method of claims 23 or 48(i1 
wherein 


— — 





thp plftrtrnHp" terminal ha<; a contact surface 

UIw vivVUvUw id 11)1 Jul J 11<U CI WUluVl juuiiwy. 

area m the range of about 025 mm 2 to 
50 mm 2 . 

6:14-37 





5:5-20 

48. The method of claims 26 and 28 wherein 







the high frequency voltage is at least 200 
volts peak to peak. 


8 





49. The method of claims 26 and 28 wherein 







the high frequency voltage is in the range 
from about 500 to 1400 volts peak to peak. 


8 






50. The method of claims 26 and 28 wherein 







the electrode terminal is positioned between 
0.02 to 2.0 mm from the target site. 







54. The method of claims 23 or 48f21 
further comprising 







evacuating fluid generated at the target site 
with a suction lumen having a distal end 
adjacent the electrode terminal; 

2:45-3:10 






r 11 The Certificate of Correction dated May 







2. 2000. refers to claim numbers 23 or 48; 

no certificate of correction has been 
requested, let alone issued* to correct this or 

anv other claim to refer to claims I and 28, 

respectively, as ArthroCare suggests and 

assumes. 

T21 The Certificate of Correction dated May 







2. 2000. refers to claim numbers 23 or 48; 

no certificate of correction has been 
requested, let alone issued, to correct this or 

any other claim to refer to claims I and 28, 

respectively, as ArthroCare suggests and 

assumes. 


Page 12 of 26 


Exhibit C: 

Examples of where each limitation of the dependent claims 
of the '882 patent may be found in each reference. 


claim text \ reference 

37 

38 

39 . ! 

40 

41 

42 

1 . A method for applying energy to a target 
site on a patient body structure comprising: 



i 
i 




providing an electrode terminal and 

662-63 

1168 

5:1-47 

2:62-65 

291 

275 

a return electrode electrically coupled to a 
high frequency voltage source; 

662-63 

1168 

5:1-47 

2:62-65 

291 

275 

positioning the active electrode in close 
proximity to the target site in the presence of 
an electrically conducting terminal [sic]; and 

663 

1168 


2:37-42 

291 

275 

applying a high frequency voltage between 
the electrode terminal and the return 
electrode, the high frequency voltage being 
sufficient to vaporize the fluid in a thin layer 
over at least a portion of the electrode 
terminal and to induce the discharge of 
energy to the target site in contact with the 
vanor laver. 


1170 





13. The method of claim 1 wherein 







at least a portion of the energy induced is in 
the form of photons having a wavelength in 
the ultraviolet spectrum. 



1:26-37 




17. The method of claim 1 wherein 







the high frequency voltage is at least 200 
volts peak to peak. 







18. The method of claim 1 wherein 







the high frequency voltage is in the range 
from about 500 to 1400 volts peak to peak. 







21. The method of claim 1 wherein 







the distance between the most proximal 
portion of the electrode terminal and the 
most distal portion of the return electrode is 
in the range from 0.5 to 10 mm. 







23. The method of claim 1 wherein 







the liquid phase of the electrically 
conducting fluid has a conductivity greater 
than 2 mS/cm. 

662 

1168 


5:62-6:19 

291 

275 

24. The method of claim 1 wherein 







the liquid phase of the electrically 
conductive fluid comprises isotonic saline. 

662 

1168 



291 

275 

29. The method of claim 28 wherein the 
applying step comprises: 







vaporizing the electrically conducting fluid 
in a thin layer over at least a portion of the 
electrode terminal; and 


1170 






Page 13 of 26 


Exhibit C: 

Examples of where each limitation of the dependent claims 
of the '882 patent may be found in each reference. 


claim text \ reference 

37 

38 

39 

40 

41 

42 

inducing the discharge of photons to the 
target site in contact with the vapor layer. 



1:26-37 




47. The method of claims 23 or 48f 1 1 
wherein 







the electrode terminal has a contact surface 
area in the range of about 0.25 mm 2 to 
50mm 2 . 


1168 


5:59-61 



48. The method of claims 26 and 28 wherein 







the high frequency voltage is at least 200 
volts peak to peak. 







49. The method of claims 26 and 28 wherein 







the high frequency voltage is in the range 
from about 500 to 1400 volts peak to peak. 


- — : 


■ . 

- 


50. The method of claims 26 and 28 wherein 







the electrode terminal is positioned between 
0.02 to 2.0 mm from the target site. 







54. The method of claims 23 or 48121 
further comprising 







evacuating fluid generated at the target site 
with a suction lumen having a distal end 
adjacent the electrode terminal. 




5:43-53 



r 1 1 The Certificate of Correction dated May 







2, 2000. refers to claim numbers 23 or 48; 

no certificate of correction has been 
requested, let alone issued to correct this or 

anv other claim to refer lo claims 1 and 28 % 

respectively, as ArthroCare suseests and 

assumes 

T21 The Certificate of Correction dated May 







2. 2000. refers to claim numbers 23 or 48: 

no certificate of correction has been 
requested, let alone issued, to correct this or 

any other claim to refer to claims 1 and 28. 

respectively, as ArthroCare suggests and 

assumes 


Page 14 of 26 


Exhibit C: 

Examples of where each limitation of the dependent claims 
of the '882 patent may be found in each reference. 


claim text \ reference 

43 

44 

45 

46 

47 

48 

1 . A method for applying energy to a target 
site on a patient body structure comprising: 







providing an electrode terminal and 

2:8-4:10 

2:26-51 

4:21-5:6 

2:31-53 

1:34 

2:28 

a return electrode electrically coupled to a 
high frequency voltage source; 

2:8-4:10 

2:26-51 

4:21-5:6 

2:31-53 

1:34 

2:28 

positioning the active electrode in close 
proximity to the target site in the presence of 
an electrically conducting terminal [sic]; and 

11 


3:48-55 

6:42 

6:4-60 

5:39 

applying a high frequency voltage between 
the electrode terminal and the return 
electrode, the high frequency voltage being 
sufficient to vaporize the fluid in a thin layer 
over at least a portion of the electrode 
terminal and to induce the discharge of 
energy to the target site in contact with the 
vanorlaver. 



inherent 

inherent 


inherent 

13. The method of claim I wherein 







at least a portion of the energy induced is in 
the form of photons having a wavelength in 
the ultraviolet spectrum. 







17. The method of claim 1 wherein 







the high frequency voltage is at least 200 
volts peak to peak. 







18. The method of claim 1 wherein 







the high frequency voltage is in the range 
from about 500 to 1400 volts peak to peak. 







21. Tha method of claim 1 wherein 







the distance between the most proximal 
portion of the electrode terminal and the 
most distal portion of the return electrode is 
in the range from 0.5 to 10 mm. 







23. The method of claim 1 wherein 







the liquid phase of the electrically 
conducting fluid has a conductivity greater 
than 2 mS/cm. 



3:48^:7 

6:39-45 


5:65-6:19 

-£*t» i IlC IUCUiUU Ol Claim 1 WIIC1CUI 







the liquid phase of the electrically 
conductive fluid comprises isotonic saline. 



3:48-4:7 



5:65-6:19 

29. The method of claim 28 wherein the 
applying step comprises: 







vaporizing the electrically conducting fluid 
in a thin layer over at least a portion of the 
electrode terminal; and 



inherent 

inherent 


inherent 


Page 15 of 26 


Exhibit C: 

Examples of where each limitation of the dependent claims 
of the '882 patent may be found in each reference. 


claim text \ reference 

43 

44 

45 

46 

47 

48 

inducing the discharge of photons to the 
target site in contact with the vapor layer. 







47. The method of claims 23 or 48f 1 1 
wherein 







the electrode terminal has a contact surface 

HIV Wi^vUWW |V1 11 1111Q I . 1 l&J 0 VVIIUAVI «f Ul 1**VW 

area in the range of about 0.25 mm 2 to 
50mm 2 . 







48. The method of claims 26 and 28 wherein 







the high frequency voltage is at least 200 
volts peak to peak. 







49. The method of claims 26 and 28 wherein 







the high frequency voltage is in the range 
from about 500 to 1400 volts peak to peak. 







50. The method of claims 26 and 28 wherein 







the electrode terminal is positioned between 
0.02 to 2.0 mm from the target site. 







54, The method of claims 23 or 48F21 
further combrisine 







evacuating fluid generated at the target site 
with a suction lumen having a distal end 
adjacent the electrode terminal. 

2:8-18 


3:40-47 

6:39-45 


3:65-4:17 

Til The Certificate of Correction dated May 







2. 2000. refers to claim numbers 23 or 48; 

no certificate of correction has been 
requested, let alone issued, to correct this or 

any other claim to refer to claims 1 and 28, 

respectively, as ArthroCare.su saests arid 

assumes 

F2] The Certificate of Correction dated May 







2, 2000. refers to claim numbers 23 or 48; 

no certificate of correction has been 
requested, let alone issued, to correct this or 

any other claim to refer to claims 1 and 28. 

respectively, as ArthroCare suseests and 

assumes. 


Page 16of26 


Exhibit C: 

Examples of where each limitation of the dependent claims 
of the '882 patent may be found in each reference. 


claim text \ reference 

49 

50 

51 

52 

53 

54 

I . A method for applying energy to a target 
site on a patient body structure comprising: 







providing an electrode terminal and 

1:55 

2:21-63 

2:41-3:58 

3:1-32 

2:28-55 

670 

a return electrode electrically coupled to a 
high frequency voltage source; 

1:55 

2:21-63 

2:41-3:58 

3:1-32 

2:28-55 

670 

positioning the active electrode in close 
proximity to the target site in the presence of 
an electrically conducting terminal [sic]; and 

1:65 

2:2-20 

3:53 

1:38 

3:63-2:1 

672 

applying a high frequency voltage between 
the electrode terminal and the return 
electrode, the high frequency voltage being 
sufficient to vaporize the fluid in a thin layer 
over at least a portion of the electrode 
terminal and to induce the discharge of 
energy to the target site in contact with the 

vanor laver 



inherent 

4:10 



13. The method of claim 1 wherein 







at least a portion of the energy induced is in 
the form of photons having a wavelength in 
the ultraviolet spectrum. 




4:3-18 


670 

17. The method of claim 1 wherein 







the high frequency voltage is at least 200 
volts peak to peak. 






670 

18. The method of claim I wherein 







the high frequency voltage is in the range 
from about 500 to 1400 volts peak to peak. 







21. The method of claim 1 wherein 







the distance between the most proximal 
portion of the electrode terminal and the 
most distal portion of the return electrode is 
in the range from 0.5 to 10 mm. 

- 



1:53-61 



23. The method of claim 1 wherein 







the liquid phase of the electrically 
conducting fluid has a conductivity greater 
than 2 mS/cm. 

3:45-68 


3:35-57 

2:24-29 



24. The method of claim 1 wherein 







the liquid phase of the electrically 
conductive fluid comprises isotonic saline. 



3:35-57 

2:24-29 



29. The method of claim 28 wherein the 
applying step comprises: 







vaporizing the electrically conducting fluid 
in a thin layer over at least a portion of the 
Belectrode terminal; and 



inherent 

4:10 




Page 17 of 26 


Exhibit C: 

Examples of where each limitation of the dependent claims 
of the '882 patent may be found in each reference. 


claim text \ reference 

49 

50 

51 

52 

53 

54 

inducing the discharge of photons to the 
target site in contact with the vapor layer. 

— 



- = 

4:3-18 


670 

47. The method of claims 23 or 48f 11 
wherein 








the electrode terminal has a contact surface 
area in the range of about 0.25 mm 2 to 
50 mm 2 . 


3:40-50 





*to. i ne mciDOu oi claims zo anu zo wncrciii 







the high frequency voltage is at least 200 
volts peak to peak. 






670 

49. The method of claims 26 and 28 wherein 







the high frequency voltage is in the range 
from about 500 to 1 400 volts peak to peak. 







50. The method of claims 26 and 28 wherein 







the electrode terminal is positioned between 
0.02 to 2.0 mm from the target site. 







54. The method of claims 23 or 48f2l 
further comprising 







evacuating fluid generated at the target site 
with a suction lumen having a distal end 
adjacent the electrode terminal. 

5 . 1 6-23 






111 The Certificate of Correction dated May 







2, 2000, refers to claim numbers 23 or 48; 

no certificate of correction has been 
requested, let alone issued, to correct this or 

any other claim to refer to claims 1 and 28, 

respectively, as ArtbroCare suggests and 

assumes. 

F21 The CertiGcate of Correction dated May 







2, 2000, refers to claim numbers 23 or 48; 

no certificate of correction has been 
requested, let alone issued, to correct this or 

any other claim to refer to claims 1 and 28, 

respectively, as ArthroCare suseests and 

assumes. 


Page 18 of 26 


Exhibit C: 

Examples of where each limitation of the dependent claims 
of the '882 patent may be found in each reference. 


claim text \ reference 

55 

56 

57 . 

58 

59 

60 

1 v A method for applying energy to a target 
she on a patient body structure comprising: 







providing an electrode terminal and 

2:7-46 

1:61-2:12 

3 

3:9-49 


4:45 

a return electrode electrically coupled to a 
high frequency voltage source; . 

2:7-46 

1;61-2:12 

3 

3:9-49 


4:45 

positioning the active electrode in close 
proximity to the target site in the presence of 
an electrically conducting terminal [sic]; and 

1:52-55 


6 



5:40 

applying a high frequency voltage between 
the electrode terminal and the return 
electrode, the high frequency voltage being 
sufficient to vaporize the fluid in a thin layer 
over at least a portion of the electrode 
terminal and to induce the discharge of 
energy to the target site in contact with the 
vapor layer, _ 







1 3 . The method of claim 1 wherein 







at least a portion of the energy induced is in 
the form of photons having a wavelength in 
the ultraviolet spectrum. 

3:15-31 



1 :42-53 



17. The method of claim 1 wherein 







the high frequency voltage is at least 200 
volts peak to peak. 

..... 






1 8. The method of claim 1 wherein 







the high frequency voltage is in the range 
from about 500 to 1400 volts peak to peak. 







21. The method of claim 1 wherein 







the distance between the most proximal 
portion of the electrode terminal and the 
most distal portion of the return electrode is 
in the range from 0.5 to 10 mm. 







23. The method of claim 1 wherein 







the liquid phase of the electrically 
conducting fluid has a conductivity greater 
than 2 mS/cm. 



6:7-15 




Z4. i ne metnou 01 claim i wnerein 







the liquid phase of the electrically 
conductive fluid comprises isotonic saline. 



6:7-15 




29. The method of claim 28 wherein the 
applying step comprises: 







vaporizing the electrically conducting fluid 
in a thin layer over at least a portion of the 
electrode terminal; and 








Page 19 of 26 


Exhibit C: 

Examples of where each limitation of the dependent claims 
of the '882 patent may be found in each reference. 


claim text \ reference 

55 ; | 56 

57 

58 

59 

60 

inducing the discharge of photons to the 
target site in contact with the vapor layer. 

3:15-31 



1:42-53 



47. The method of claims 23 or 48r 1 ] 
wherein 







the electrode terminal has a contact surface 
area in the range of about 0.25 mm 2 to 
50 mm 2 . 







4 ft TKa mMtiA/fl r\f rhimc 0(\ anH wherein 
Ho; i ne meinou oi claims aiiu -to vrnti^ui 







fha hint* fW^nn^rii~'Vf \tg\\f^tOf> IC nt IpACt 0 00 

me mga irctjueiicy vuiiagc ii> ai icaoi ^.w 
volts peak to peak. 







49. The method of claims 26 and 28 wherein 







the high frequency voltage is in the range 
irom aoout jUu to I4uu voiis peaK lo.peait. 







50. The method of claims 26 and 28 wherein 







: : — 

the electrode terminal is positioned between 

0.02 to 2.0 mm from the target site. 







j4. i ne metnod ot claims z3 or^oizi. 
further comprising 







CVaCUaling I lulu gCliCralCU al Ulc Lai gvl Miv 

with a suction lumen having a distal end 
adiacent the electrode terminal. 







1 1 1 l ne ^jertiticaie ot correction aaiea paay 







2, 2000. refers to claim numbers 23 or 48; 

no certificate of correction has been 
retjuesi&o, lei aiorte issued. 10 cchtcl>i uh> ui 

iinv omer ciaim to reier io ciaiina i. <uiu z.o. 

respectively., as /\iuiro^aic aupjiCMi auu 

-assumes. 

f21 The Certificate of Correction dated Mav 







2, 2000. refers to claim numbers 23 or 48; 

no certificate of correction has been 
requested, let alone issued, to correct this or 

any other claim to refer to claims 1 and 28, 

respectively, as ArthroCare suggests and 

assumes. 


Page 20 of 26 


Exhibit C: 

Examples of where each limitation of the dependent claims 
of the '882 patent may be found in each reference. 


claim text \ reference 

61 

62 

63 

64 

65 

66 

1 . A melhod for applying energy to a target 
site on a patient body structure comprising: 







1 providing an electrode terminal and 

3:30 

2:35 


2:5 

5:34 

2:1 

la return electrode electrically coupled to a 
flhifih frequency voltage source; 

3:30 

2:35 


2:5 

5:34 

2:1 

[positioning the active electrode in close 
Bproximity to the target site in the presence of 
Ian electrically conducting terminal [sic]; and 

I 

11:65-66 

4:10-29 



2:10; 6:65 

2:10 

japply ing a high frequency voltage between 
Ithe electrode terminal and the return 
lelectrode, the high frequency voltage being 
■sufficient to vaporize the fluid in a thin layer 
over at least a portion of the electrode 
terminal and to induce the discharge of 
energy to the target site in contact with the 

vanor laver : 





6:56 


13. The method of claim 1 wherein 








at least a portion of the energy induced is in 
the form of photons having a wavelength in 
the ultraviolet spectrum. 

13:3-4 

4:6-9 

4:21-32 


6:50-63 

1:63-2:17 

17. The method of claim 1 wherein 







the high frequency voltage is at least 200 
volts peak to peak. 

4:28-48 


3:21-32 




18. The method of claim 1 wherein 







the high frequency voltage is in the range 
from about 500 to 1400 volts peak to peak: 

4:28-48 






2 1 . The method of claim 1 wherein 






the distance between the most proximal 
portion of the electrode terminal and the 
most distal portion of the return electrode is 
in the range from 0.5 to 1 0 mm. 







23. The method of claim I wherein 







the liquid phase of the electrically 
conducting fluid has a conductivity greater 
than 2 raS/cm. 





6:64-7:10 

3:24-33 

24. The method of claim 1 wherein 







the liquid phase of the electrically 
conductive fluid comprises isotonic saline. 





6:64-7:10 

3:24-33 

29. The method of claim 28 wherein the 
applying step comprises: 







vaporizing the electrically conducting fluid 
in a thin layer over at least a portion of the 
electrode terminal; and 





6:56 



Page 21 of 26 


Exhibit C: 

Examples of where each limitation of the dependent claims 
of the '882 patent may be found in each reference. 


claim text \ reference 

61 

62 

63 

64 

65 

66 

inducing the discharge of photons to the 
target site in contact with the vapor layer. 

13:3-4 

4:6-9 

4:21-32 


6:50-63 

1:63-2:17 

47. The method of claims 23 or 48f 11 
wherein 






- — — 

the electrode terminal has a contact surface 
area in the range of about 0.25 mm 2 to 
50 mm 2 . 







48. The method of claims 26 and 28 wherein 







the high frequency voltage is at least 200 
volts peak to peak. 

' 4:28-48 


3:21-32 




49. The method of claims 26 and 28 wherein 







the high frequency voltage is in the range 
from about 500 to 1400 volts peak to peak. 

A.*"\0 AO 

4:28-48 






50. The method of claims 26 and 28 wherein 







the electrode terminal is positioned between 
0.02 to 2.0 mm from the target site. 





5:55-61; 
8:19-31 


54. The method of claims 23 or 48F21 
further comprising 







evacuating fluid generated at the target site 
with a suction lumen having a distal end 
adjacent the electrode terminal. 


4:30-46 





Fll The Certificate of Correction dated May 







2, 2000, refers to claim numbers 23 or 48; 

no certificate of correction has been 
reauested. let alone issued, to correct this or 

any other claim to refer to claims 1 and 28. 

respectively, as ArthroCare suseests and 

assumes. 

[21 Hie Certificate of Correction dated May 







2. 2000. refers to claim numbers 23 or 48: 

no certificate of correction has been 
requested, let alone issued to correct this or 

any other claim to refer to claims 1 and 28, 

respectively, as ArthroCare suscests and 

assumes. 


Page 22 of 26 


Exhibit C: 

Examples of where each limitation of the dependent claims 
of the '882 patent may be found in each reference. 


claim text \ reference 

67 

68 

69 | 70 

71 

72 

1 . A method for applying energy to a target 
site on a patient body structure comprising: 



i 
\ 

; 




providing an electrode terminal and 

2:35 

3:25 

3:20 

2:38 

3:43-4:18 

2:30 

a return electrode electrically coupled to a 
high frequency voltage source; 

2:35 

3:25 

3:20 

2:38 

3:43-4:18 

2:30 

positioning the active electrode in close 
proximity to the target site in the presence of 
an electrically conducting terminal [sic]; and 

4:10 



3:1 


4:33 

-- - - 

. = _ _ 

applying a high frequency voltage between 
the electrode terminal and the return 
electrode, the high frequency voltage being 
sufficient to vaporize the fluid in a thin layer 
over at least a portion of the electrode 
terminal and to induce the discharge of 
energy to the target site in contact with the 
vanor laver. = : — 







1 3. The method of claim 1 wherein 







at least a portion of the energy induced is in 
the form of photons having a wavelength in 
the ultraviolet spectrum. 



1:22-34 


7*17-37 

1,11 «J r 


17. The method of claim 1 wherein 







the high frequency voltage is at least 200 
volts peak to peak. 







18. The method of claim 1 wherein 







the high frequency voltage is in the range 
from about 500 to 1400 volts peak to peak: 







21. The method of claim 1 wherein 




— 



the distance between the most proximal 
portion of the electrode terminal and the 
most distal portion of the return electrode is 
in the range from 0.5 to 1 0 mm. 







23. The method of claim 1 wherein 







the liquid phase of the electrically 
conducting fluid has a conductivity greater 
than 2 mS/cm. 

4:4-11 


* 

2:67-3:8 



24 The method of claim 1 wherein 







the liquid phase of the electrically 
conductive fluid comprises isotonic saline. 

4:4-11 



2:67-3:8 



29. The method of claim 28 wherein the 
applying step comprises: 







vaporizing the electrically conducting fluid 
in a thin layer over at least a portion of the 
electrode terminal; and 








Page 23 of 26 


Exhibit C: 

Examples of where each limitation of the dependent claims 
of the '882 patent may be found in each reference. 


claim text \ reference 

67 

68 

69 

70 

71 

72 

inducing the discharge of photons to the 
target site in contact with the vapor layer. 



1:22-34 


7:17-37 


47. The method of claims 23 or48f!l 
wherein 





: ~' 


the electrode terminal has a contact surface 
area in the range of about 0.25 mm 2 to 
50 mm 2 . 






2:42-54 

48 The method of claims 26 and 28 wherein 







thp hiotr frpmiPTirv vnltape is at least 200 
volts peak to peak. 







49. The method of claims 26 and 28 wherein 







the high frequency voltage is in the range 

frnm aVirtut ^HA tn 1 AdCi unite tm>a\c tn neak 
UU1KJ dUUUl JW W VUlw J/wlR. lv 







50. The method of claims 26 and 28 wherein 







the electrode terminal is positioned between 
u.uz to /;U nun tiom tne target sue. 







Jt. I I1C IIIClllLKl VJ1 dallllb £,D %JI *tO|Xi | 

fitTTfri<*i* ^/wnnficino 
lUIUlCl VV/IIipi lolJlt^ 







evacuating fluid penerated at the target site 
with a suction lumen having a distal end 
adjacent the electrode terminal. 

3:64-4:3 

2:65-3:22 


3:44-53 



lip i ne ^erniicaic 01 v-orr cviiuii uaicu ivwy 







2, 2000. refers to claim numbers 23 or 48; 

nn ^prt"ifi/*Qtp nf* rnrrprhnn Viae hppn 
rpniipcfpn* Ipt nlnnp icciipH tn pnrrprt thi<i or 

anv nthpr pin im trt rpfpr rl/tinn 1 ftnn /X 

rp^r*ftf #ii/plv ne A rthrnf^iirp ^uopp^t^ 3nn 

l&oLrd*IJ V VI y. OO /vi 11 li Ul^CU V OU^;UlJ CUIvl 

assumes. 

\2l The Certificate of Correction dated Mav 







2, 2000, refers to claim numbers 23 or 48; 

no certificate of correction has been 
requested, let alone issued, to correct this or 

any other claim to refer to claims 1 and 28. 

respectively, as ArthroCare suseests and 

assumes. 


Page 24 of 26 


Exhibit C: 

Examples of where each limitation of the dependent claims 
of the '882 patent may be found in each reference. 


claim text \ reference 

73 

1. A method for applying energy to a target 
site on a patient body structure comprising: 


providing an electrode terminal and 

4:35 

a return electrode electrically coupled to a 
high frequency voltage source; 

4:35 

positioning the active electrode in close 
proximity to the target site.in the presence of 
an electrically conducting terminal [sic]; and 

6:45-55 

applying a high frequency voltage between 
the electrode terminal and the return 
electrode, the high frequency voltage being 
sufficient to vaporize the fluid in a thin layer 
over at least a portion of the electrode 
terminal and to induce the discharge of 
energy to the target site in contact with the 
vanor laver. : 


13. The method of claim I wherein 


at least a portion of the energy induced is in 
the form of photons having a wavelength in 
the ultraviolet spectrum. 

2:22-34 

17. The method of claim I wherein 


the high frequency voltage is at least 200 
volts peak to peak. 

6:23-33 

18. The method of claim 1 wherein 


the high frequency voltage is in the range 
from about 500 to 1400 volts peak to peak. 


2 1 . The method of claim 1 wherein 


the distance between the most proximal 
portion of the electrode terminal and the 
most distal portion of the return electrode is 
in the range from 0.5 to 10 mm. 


23. The method of claim 1 wherein 


the liquid phase of the electrically 
conducting fluid has a conductivity greater 
than 2 mS/cm. 


z4. i tie metnoo or claim i wnerein 


the liquid phase of the electrically 
conductive fluid comprises isotonic saline. 


29. The method of claim 28 wherein the 
applying step comprises: 


vaporizing the electrically conducting fluid 
in a thin layer over at least a portion of the 
electrode terminal; and 



Page 25 of 26 


Exhibit C: 

Examples of where each limitation of the dependent claims 
of the '882 patent may be found in each reference. 


claim text \ reference 

73 

inducing the discharge of photons to the 
target site in contact with the vapor layer. 

2:22-34 

47. The method of claims 23 or 48f 1] 
wherein 


the electrode terminal has a contact surface 
area in the range of about 0.25 mm 2 to 
50 mm 3 . 


48. 1 ne method ot claims zo and wnerein 


the high frequency voltage is at least 200 
volts peak to peak. 

6:23-33 

49. The method of claims 26 and 28 wherein 


the high frequency voltage is in the range 
from about 500 to 1400 volts peak to peak. 


50. The method of claims 26 and 28 wherein 


the electrode terminal is positioned between 
0.02 to 2.0 mm from the target site. 


54; The method of claims 23 or 48f21 
further comprising 


evacuating fluid generated at the target site 
with a suction lumen having a distal end 
adjacent the electrode terminal. 


T 11 The Certificate of Correction dated May 


2\ 2000, refers to claim numbers 23 or 48; 
no certificate of correction has been 
requested let alone issued, to correct this or 


anv other claim to refer to claims 1 and 28. 


respective! v, as ArthroCare suggests and 
assumes. 


1 21 The Certificate of Correction dated Mav 


2. 2000. refers to claim numbers 23 or 48; 
no certificate of correction has been 
reouested, let alone issued, to correct this or 


anv other claim to refer to claims 1 and 28. 


respectively, as ArthroCare suggests and 
assumes. 



Page 26 of 26 


Exhibit D: 

Examples of where each limitation of the dependent claims 
of the '592 patent may be found in each reference. 


claim text \ reference 

1 

2 

3 

4 

5 

6 

3. The method o f claim 1 further comprising 







immersing the target site within a volume of 
the electrically conductive fluid and 

i 


5:3-5; 9:8- 
25 



2:55-3 '2 

positioning the return electrode within .the 
volume of electrically conductive fluid to 
generate the current flow path between the 
electrode terminal and the return electrode. 







4 Thp nripthnd of claim 1 further comnrisins 







rlott\/£*rin o thf> plf^ftr'imltv conductive fluid to 

UCllVvllltg 11 JP* CIvl/ll Ijr n/liviuvu»** i iuim »w 

me largei sue. 



5:3-5; 9:8- 
25 



2:55-3:2 

9. The method of claim I wherein 







the electrode terminal comprises a single 
active electrode disposed near the distal end 
of an instrument shaft. 

1:40-55 

206 

8:10-9:8 

3:10-28 

58 

2:54-57 

1 1 . The method of claim 1 wherein 







the electrically conductive fluid comprises 
isotonic saline. 



5:3-5 




13. The method of claim 1 wherein 







the return electrode is spaced from the 
electrode terminal such that when the 
electrode terminal is brought adjacent a 
tissue structure immersed in electrically 
conductive fluid, the return electrode is 
spaced from the tissue structure and the 
electrically conductive fluid completes a 
conduction path between the electrode 
terminal and the ren»n* electrode _ 


• 





1 ft mpthrni of r*laim 1 fiirlhpr 

lO. 1 llv 11ICU1LPVI \Jl V.KXU11 I 1U1 Uitrf 

pfkmr^ric inn 
xASUlJJf Id 111 g 







applying a sufficient high frequency voltage 

Hiffpr<*nr'(* fo vftrifkri?** tKp PlPCtriCflllv 

VlllirQ V\J V OUUI lXv lilt- VIvVU iv^tXJljf 

conductive fluid in a thin layer over at least a 

induce die discharge of energy to the target 
site in contact with thf* vanor laver 



inherent 


58,61 


21 . The method of claim 1 wherein 







the voltage is in the range from 500 to 1400 
volts peak to peak. 


211 



58 


26. The method of claim 23 further 
comprising 







immersing the target site within a volume of 
the electrically conductive fluid and 



5:3-5; 9:8- 
25 



2:55-3:2 


Page 1 of 26 


Exhibit D: 

Examples of where each limitation of the dependent claims 
of the '592 patent may be found in each reference. 


claim text \ reference 

1 

2 

3 

4 

5 

6 

positioning the return electrode within the 
volume of electrically conductive fluid to 
generate a current flow path between the 
active electrode and the return electrode. 







27 The method of claim 23 further 

4- * k tit* lllwUIUM Ul Wldllll L*-J lUIUiVI 

comprising 










5:3-5; 9:8- 
"25 



2:55-3:2 

30. The method of claim 23 wherein 







the active electrode comprises a single active 
electrode disposed near the distal end of an 
instrument shaft. 

1:40-55 

206 

8:10-9:8 

3:10-28 

58 

2:54-57 

32. The method of claim 23 wherein 







the electrically conductive fluid comprises 
isotonic saline. 



5:3-5 




34. The method of claim 23 wherein 







the return electrode Is spaced from the 
active electrode such that when the active 
electrode is brought adjacent a tissue 
structure immersed in electrically conductive 
fluid, the return electrode is spaced from the 
tissue structure and the electrically 
conductive fluid completes a conduction 
path between the active electrode and the 
return electrode 







J7. i ne metnoo 01 claim 4-> turtner 
comprising 







applying a sufficient high frequency voltage 

uittcjciivrC iu va^niii£c uic ciccuiwaiij 

conductive fluid in a thin layer over at least a 
portion of the active electrode and to induce 
the discharge of energy to the target site in 
contact with the vapor layer. 



inherent 


58,61 


42. The method of claim 23 wherein 







the voltage is in the range from 500 to 1400 
volts peak to peak. 


211 



58 



Page 2 of 26 


Exhibit D: 

Examples of where each limitation of the dependent claims 
of the '592 patent may be found in each reference. 


claim text \ reference 

7 

8 

9 

10 

H 

12 

3. 1 tie method or claim i runner comprising 







immersing the target site within a volume of 
the electrically conductive fluid and 


11 

2:40-63 



529 

positioning the return electrode within the 
volume of electrically conductive fluid to 
generate the current flow path between the 
electrode terminal and the return electrode. 


1,11 





4. The method of claim 1 further comprising 







delivering the electrically conductive fluid to 
the target site. 


11 

2:40-63 



529 

9. The method of claim 1 wherein 







the electrode terminal comprises a single 
active electrode disposed near the distal end 
of an instrument shaft. 

2:67-3:16 

7 

7:58-68 

4:44-64 

3 

530 

1 1. The method of claim ) wherein 







the electrically conductive fluid comprises 
isotonic saline. 


inherent 




529 

1 3. The method of claim 1 wherein 







the return electrode is spaced from the 
electrode terminal such that when the 
electrode terminal is brought adjacent a 
tissue structure immersed in electrically 
conductive fluid, the return electrode is 
spaced from the tissue structure and the 
electrically conductive fluid completes a 
conduction path between the electrode 
terminal and the, renirn electrode 


Ml 





1 8. The method of claim 1 further 
comprising 







applying a sufficient high frequency voltage 
difference to vaporize the electrically 
conductive fluid in a thin layer over at least a 
portion of the electrode terminal and to 
induce the discharge of energy to the target 
she in contact with the vapor layer. 


1,6 





21. The method of claim 1 wherein 







the voltage is in the range from 500 to 1400 
volts peak to peak. 



1:34-53 




26. The method of claim 23 further 
comprising 







immersing the target site within a volume of 
the electrically conductive fluid and 


11 

2:40-63 



529 


Page 3 of 26 


Exhibit D: 

Examples of where each limitation of the dependent claims 
of the *592 patent may be found in each reference. 


claim text \ reference 

7 

8 

9 

10 

tl 

12 

positioning the return electrode within the 
volume of electrically conductive fluid to 
generate a current flow path between the 
active electrode and the return electrode. 


1,11 





27. The method of claim 23 further 
comprising 







delivering the electrically conductive fluid to 
the target site. 


11 

2:40-63 



529 

30. The method of claim 23 wherein 







the active electrode comprises a single active 
electrode disposed near the distal end of an 
instrument shaft. 

2:67-3:16 

7 

7:58-68 

4:44-64 

3 

530 

32. The method of claim 23 wherein 







the electrically conductive fluid comprises 
isotonic saline. 


inherent 




529 

34. The method of claim 23 wherein 







the return electrode is spaced from the 
active electrode such that when the active 
electrode is brought adjacent a tissue 
structure immersed in electrically conductive 
fluid, the return electrode is spaced from the 
tissue structure and the electrically 
conductive fluid completes a conduction 
path between the active electrode and the 

rftfiirn Rlftrtrorfft 


1,11 





39. The method of claim 23 farther 
comprising 







applying a sufficient high frequency voltage 
difference to vaporize the electrically 
conductive fluid in a thin layer over at feast a 
portion of the active electrode and to induce 
the discharge of energy to the target site in 
contact with the vapor layer. 


1,6 


6:54-7:5 



42. The method of claim 23 wherein 







the voltage is in the range from 500 to 1400 
volts peak to peak. 



1:34-53 





Page 4 of 26 


Exhibit D: 

Examples of where each limitation of the dependent claims 
of the '592 patent may be found in each reference. 


claim text \ reference 

13 

14 

15 

16 

17 

18 

3 . The method of claim I further comprising 








immersing the target site within a volume of 
the electrically conductive fluid and 



7:45-62 



1:65-2:21 

positioning the return electrode, within the 
volume of electrically conductive fluid to 
generate the current flow path between the 
electrode terminal and the return electrode. 



3:5-20; 
5:21-30 




4 Thp method of claim ) further com oris in £ 







Hplivp-rtno flip plpcrrteflllv conductive fluid to 
me largei sue. 



7:45-62 



1:65-2:21 

9. The method of claim 1 wherein 







the electrode terminal comprises a single 
active electrode disposed near the distal end 
of an instrument shaft. 

6:45-54 


4:66-52 

845 

3:1-52 

1:15-36 

1 1. The method of claim 1 wherein 







the electrically conductive fluid comprises 
isotonic saline. 







13 The method of claim 1 wherein 







me reium eieciroae, is spaced iruni uic 
electrode terminal such that when the 
electrode terminal is brought adjacent a 
tissue structure immersed in electrically 
conductive fluid, the return electrode is 
spaced from the tissue structure and the 
electrically conductive fluid completes a 
conduction path between the electrode 

terminal anri rhp return e.lerfrifwlp. 



3:5-20; 
5:21-30 




1 R Trw* mptririil nf* rlaim 1 fivrthpr 

J V- 1 JlV 1 21V lllVVi \s L IriuUll 1 lUlulvl 







applying a sufficient high frequency voltage 

HifTpYpnpj* tr* vfn"irti"i7#* thf* p|p_/*tTiPjillv 

conductive fluid in a thin layer over at least a 
puiiiun vi uic ciecuuuc iciuiuiai aiiu iu 
induce the discharge of energy to the target 

*;ite in cfMifart with thp varmr lavpr 

4:47 


1:33-40 



inherent 

21 . The method of claim 1 wherein 







the voltage is in the range from 500 to 1400 
volts peak to pealed 


7:26-42; 
Fig. 6 





26. The method of claim 23 further 
comprising 







immersing the target site within a volume of 
the electrically conductive fluid and 



7:45-62 



1:65-2:21 


Page 5 of 26 


Exhibit D: 

Examples of where each limitation of the dependent claims 
of the '592 patent may be found in each reference. 


claim text \ reference 

13 

14 

15 

16 

17 

18 

positioning the return electrode within the 
volume of electrically conductive fluid to 
generate a current flow path between the 
active electrode and the return electrode. 



3:5-20; 
5:21-30 




27. The method of claim 23 further 
comprising 







delivering. the electrically conductive fluid to 
the target lite 



7:45-62 



1:65-2:21 

30. The method of claim 23 wherein 







the active electrode comprises a single active 
electrode disposed near the distal end of an 
instrument shaft. 

6:45-54 


4:66-5:2 

845 

3:1-52 

1:15-36 

32. The method of claim 23 wherein 







the electrically conductive fluid comprises 
isotonic saline. 







34. The method of claim 23 wherein 







the rpfiirn eltrtToHf* is snarpfl from the 

iUb IvrlUlll VIVArll \/U^ 1*J JUuvvll 11 Vila UIV^ 

active electrode such that when the active 
eicvu txie is orougni aojaceni a iissue 
structure immersed in electrically conductive 
fluid, the return electrode is spaced from the 
tissue structure and the electrically 
conductive fluid completes a conduction 
path between the active electrode and the 

return ftlp^.troHp. 



3:5-20; 
5:21-30 




19 'I "hp mpthfvi r»f rlaim fiirthpr 
wimnri<*ino • 







applying a sufficient high frequency voltage 
difference to vaporize the electrically 
conductive fluid in a thin layer over at least a 
portion of the active electrode and to induce 
the discharge of energy to the target site in 
contact with the vapor layer. 

4:47 


1:33-40 



inherent 

42. The method of claim 23 wherein 







the voltage is in the range, from 500 to 1400 
volts peak to peak. 


7:26-42; 
Fig. 6 






Page 6 of 26 


Exhibit D: 

Examples of where each limitation of the dependent claims 
of the '592 patent may be found in each reference. 


claim text \ reference 

19 

20 

21 

22 

23 

24 

1 Tk» m^ttifwl f* /t]n||*i 1 Author /■Amnncino 

j. I ne lucinou oi ciaiin i lunner comprising 







immersing ine largei sue vviinin a volume or 
the electrically conductive fluid and 

3:1-16 

2:59-3:5 

334 

2:25-31 

2:51-55 

1425 

positioning the return electrode within the 
volume of electrically conductive fluid to 
generate the current flow path between the 
electrode terminal and the return electrode. 




2:25-31 

2:42-68; 
3:65^4:7 

1426 

4. The method of claim 1 further comprising 







delivering the electrical ry conductive fluid to 
the target site. 



334 

Z.2Z>-3 1 , 
Figs. 1-2 

2:51-55 

1425 

9. The method of claim 1 wherein 







the electrode terminal comprises a single 
active electrode disposed near the distal end 
of an instrument shaft. 

2:34-46 

2:35-58 

333 - 

2:41-43 

Fig. 9; 3:29 
30 

1425 

1 1 . The method of claim 1 wherein 







the electrically conductive fluid comprises 
isotonic saline. 



334 

2:47-51; 
Fig. 1 

3:65-68 

1426 

13. The method of claim 1 wherein 







the return electrode is spaced from the 
electrode terminal such that when the 
electrode terminal is brought adjacent a 
tissue structure immersed in electrically 
conductive fluid, the return electrode is 
spaced from the tissue structure and the 
electrically conductive fluid completes a 
conduction path between the electrode 

terminal anH the return elertroHe 




2:25-31 

2:42-68; 
3:65-4:7 

1426 

18. The method of claim 1 further 
comprising 







applying a sufficient high frequency voltage 
difference to vaporize the electrically 
conductive fluid in a thin layer over at least a 
portion of the electrode terminal and to 
induce the discharge of energy to the target 
site in contact with the vapor layer. 







21 . The method of claim 1 wherein 







the voltage is in the range from 500 to 1400 
volts peak to peak! 





3:30-38 


26. The method of claim 23 further 
comprising 







immersing the target site within a volume of 
the electrically conductive fluid and 

3:1-16 

2:59-3:5 

334 

2:25-31 

2:51-55 

1425 


Page 7 of 26 


Exhibit D: 

Examples of where each limitation of the dependent claims 
of the '592 patent may be found in each reference. 


claim text \ reference 

19 ! 20 

21 

22 

23 

24 

positioning the return electrode within the 
volume of electrically conductive fluid to 
generate a current flow path between the 
active electrode and the return electrode. 




2:25-31 

2:42-68; 
3:65-4:7 

1426 

77 The method of" claim 23 further 
comprising 






— 


rlf*liv**rino th** f*\rt"tT\cj\ 1 Iv nnn/liirtivft fluid tct 

UVltVdUlg UIw vlVVU V vvlMJUvll » w IIUIU \\f 

til** f 'trnpf erf A 
UIC UU^Cl 5Ilv. 



334 

2:25-31; 
Fies 1-2 

2:51-55 

1425 

30. The method of claim 23 wherein 







the active electrode comprises a single active 
electrode disposed near the distal end of an 
instrument shaft 

2:34-46 

2:35-5S 

333 

2:41-43 

Fig. 9; 3:29 
30 

1425 

32. The method of claim 23 wherein 







the electrically conductive fluid comprises 
isotonic saline. 



334 

2:47-51; 
Fig. 1 

3:65-68 

1426 

34. The method of claim 23 wherein 







the return electrode is spaced from the 
active electrode such that when the active 
electrode is brought adjacent a tissue 
structure immersed in electrically conductive 
fluid, the return electrode is spaced from the 
tissue structure and the electrically 
conductive fluid completes a conduction 
path between the active electrode and the 

return pWtrndp 

_ 



2:25-31 

2:42-68; 
3:65-4:7 

1426 ; 

jy. i ne meinoa oi cjaim zj runner * 
comprising 






applying a sufficient high frequency voltage 
difference to vanorize the electrics 11 v 
conductive fluid in a thin layer over at least a 
portion of the active electrode and to induce 
the discharge of energy to the target site in 
contact with the vapor layer. 







42. The method of claim 23 wherein 







the voltage is in the range from 500 to 1400 
volts peak to peak. 





3:30-38 . 



Page 8 of 26 


Exhibit D: 

Examples of where each limitation of the dependent claims 
of the '592 patent may be found in each reference. 


claim text \ reference 

25 

26 

27 

28 

29 

30 

3. The method of claim 1 further comprising 








immersine the tareet site within a volume of 
the electrically conductive fluid and 

100 

1383 


5:12-35 

68 


nn<ntioniriP die return electrode within the 

v/ilnmA r»f Alpffrrifallv f*nnfhif*ti\/e fill in to 
VUlUIilv VI CIC\*U li><Sl]jf IUIIUUI*L1 Vv uuiu iv 

generate the current flow path between the 
electrode terminal and the return electrode. 

100 

1383 


1:57-2:6 

68 

Fig.5 

A T\\r> mpthnrt nf rlaim 1 fiirther mmnri^inP 
*t. i JIC IIICUJUU \fl Ha Jill . I 1UI Ulyl VUIlllJIiaiug 







uCiIVeriDg ulv ClCCiritalljr lAMiUUvllYC liutu w 

the target site. . 

100 

1383 



68 


9. The method of claim 1 wherein 







the electrode terminal comprises, a single 
active electrode disposed near the distal end 
of an instrument shaft. 

100 

1383 

1:26-50 

1:57-2:6 

68 

5:1 1-27 

1 1. The method of claim 1 wherein 







the electrically conductive fluid comprises 
isotonic saline: 

100 

1383 


1:57-2:6 

68 


13. The method of claim i wherein 







the return electrode is spaced from the 
electrode terminal such that when the 
electrode terminal is brought adjacent a 
tissue structure immersed in electrically 
conductive fluid, the return electrode is 
spaced from the tissue structure and the 
electrically conductive fluid completes a 
conduction path between the electrode 

terminal 5mH the return electroHe 

100 

1383 


1:57-2:6 

68 

Fig.5 

io. ine memou oi ciaim i luruier 
win prising 







applying a sufficient high frequency voltage 
ujiicrcncc io vaporize uic ciecir ic<uiy 
conductive fluid in a thin layer over at least a 
portion of the electrode terminal and to 
induce the discharge of energy to the target 

Qitp in enntaf t with thf» vsir\nr laver 
jiic ui lA/iiiad wiui uic \a^f\ji icLjrvi • 


1382-83 

inherent 



inherent 

21. The method of claim 1 wherein 







the voltage is in the range from 500 to 1400 
volts peak to peak. 


1383 



68 


26. The method of claim 23 further 
comprising 







immersing the target site within a volume of 
the electrically conductive fluid and 

ioo 

1383 


5:12-35 

68 



Page 9 of 26 


Exhibit D: 

Examples of where each limitation of the dependent claims 
of the '592 patent may be found in each reference. 


claim text \ reference 

25 

26 

27 

28 

29 

30 

positioning the return electrode within the 
volume of electrically conductive fluid to 
generate a current flow path between the 
active electrode and the return electrode. 

100 

1383 


1:57-2:6 

68 

Fig: 5 

27. The method of claim 23 further 
comprising 







delivering the electrically conductive fluid to 
the tarpet <sitp 

100 

1383 



68 


30. The method of claim 23 wherein 







the active electrode comprises a single active 
electrode disposed near the distal end of an 
instrument shaft 

100 

1383 

1:26-50 

1:57-2:6 

68 

5:11-27 

32. The method of claim 23 wherein 







the electrically conductive fluid comprises 
isotonic saline. 

100 

1383 


1:57-2:6 

68 


34. The method of claim 23 wherein 







tlii* return plppfrn/fo iq from thf* 

active electrode such that when the active 
eiecirooe is orpugni aajaceni a tissue 
structure immersed in electrically conductive 
fluid, the return electrode is spaced from the 
tissue structure and the electrically 
conductive fluid completes a conduction 
path between the active electrode and the 

100 

1383 


1:57-2:6 

68 

Fig. 5 

^9 Thp methnrl nfclaim ?^ fiirther 

J?! 1 HO IIICLUUU Ul z,J 1IU UlM 
fmnfinrictno ■ 







applying a sufficient high frequency voltage 
difference to vaporize the electrically 
conductive fluid in a thin layer over at least a 
portion of the active electrode and to induce 
the discharge of energy to the target site in 
contact with the vapor layer. 


1382-83 

inherent 



inherent 

42; The method of claim 23 wherein 







the voltage is in the range from 500 to 1400 
Bvolts peak to peak. 


1383 



68 



Page 10 of 26 


Exhibit D: 

Examples of where each limitation of the dependent claims 
of the '592 patent may be found in each reference. 


claim text \ reference 

31 

32 

33 

34 

35 

36 

^ Th<* method of claim 1 further comnrisinc 


— — 

: 

, 




immorri'nn th» taropt c!t*» WtthlTI f) VOllllTIC of 

lmrnersing inc largci.Mic wiuuii a vuiuhk v» 
the electrically conductive fluid and 

7:3-8:5 


5:4-30 


248 

7:26-52 

nAcitiAninn th** rptiirtl plf^ftToHf* Within tnP 

posillt/ning mc iciiuii cicvli uut wiuuii nit- 
volume 01 eiecuricairy cunuueuve uuiu iu 
generate the current flow path between the 
electrode terminal and the return electrode. 

Fig. 4 

* 

Fig. 2; 5:4- 
30 

44 


7:26-52 

4. ine mecnoa oiciaim j runner compriMiig 







delivering tne electrically conauciive iiukj 10 
the target site. 



2:45-3:10 




248 

7:26-52 

9. The method of claim 1 wherein 







the electrode terminal comprises a single 
active electrode disposed near the distal end 
of an instrument shaft 

5:17-31 





4:40-58 

1 1. The method of claim 1 wherein 







the electrically conductive fluid comprises 
isotonic saline. 

7:3-8:5 




248 

7:26-52 

13. The method of claim 1 wherein 







the return electrode is spaced from the 
electrode terminal such that when the 
electrode termuial is brought adjacent a 
tissue structure immersed in electrically 
conductive fluid, the return electrode is 
spaced from the tissue structure and the 
electrically conductive fluid completes a 
conduction path between the electrode 
fp.rrhinal and thfi rp.tiim ftlftctrndft.. 

Fig. 4 


Fig. 2; 5:4- 
30 

44 


7:26-52 

lo. me metnou or claim i runner 
comprising 







applying a sufficient high frequency voltage 
difference to vaporize the electrically 
conductive fluid in a thin layer over at least a 
portion of the electrode terminal and to 
induce the discharge of energy to the target 

biic ui conuicv Willi uic vdpor idycj. 







21. The method of claim I wherein 







the voltage is in the range from 500 to 1400 
volts peak to peak. 


8 





26. The method of claim 23 further . 
comprising 







immersing the target site within a volume of 
the electrically conductive fluid and 

7:3-8:5 


5:4-30 


248 

7:26-52 


Page 1 1 of 26 


Exhibit D: 

Examples of where each limitation of the dependent claims 
of the '592 patent may be found in each reference. 


claim text \ reference 

31 

32 

33 

34 

35 

36 

itAtiittAnlnn fka rohirn c* Ip/'fr/vip Within thf* 

positioning ine return eiecuoue wiuim uic 
volume 01 eiecujcany conaucuvc nuiu iu 
generate a current flow path between the 
active electrode and the return electrode. 

Fig. 4 


Fig. 2; 5:4- 
30 

44 


7:26-52 

27. i ne method ot claim zi runner 
comprising 







delivering the electrically conductive fluid. to 
the target site. 

2:45-3:10 




248 

7:26-52 

30. The method of claim 23 wherein 







the active electrode comprises a single active 
electrode disposed near the distal end of an 
instrument shaft. 

5:17-31 





4:40-58 

32. The method of claim 23 wherein 


~ 





the electrically conductive fluid comprises 
isotonic saline. 

7:3-8:5 




248 

7:26-52 

34. The method of claim 23 wherein 







the return electrode is spaced from the 
active electrode such that when the active 
electrode is brought adjacent a tissue 
structure immersed in electrically conductive 
fluid, the return electrode is spaced from the 
tissue structure and the electrically 
conductive fluid completes a conduction 
path between the active electrode and the 
return ftlecrrndft. 

Fig, 4 


Fig. 2; 5:4- 
30 

44 


7:26-52; 

39. The method of claim 23 further 
comprising 







applying a sufficient high frequency voltage 
difference to vaporize the electrically 
conductive fluid in a thin layer over at least a 
portion of the active electrode and to induce 
the discharge of energy to the target site in 
contact with the vapor layer. 







42. The method of claim 23 wherein 







the voltage is. in the range from 500 to 1400 
volts peak to peak. 


8 






Page 12 of 26 


Exhibit D: 

Examples of where each limitation of the dependent claims 
of the '592 patent may be found in each reference. 


claim text \ reference 

37 

38 

39 

40 

41 

42 

3. The method of claim 1 further comprising 







immersing the target site within a volume of 
the electrically conductive fluid and 


1 1 Aft 
1 loo 



4.S ■ 

275 

positioning the return electrode within the 
volume of electrically conductive fluid to 
generate the current flow path between the 
electrode terminal and the return electrode. 

662 






4. The method of claim 1 further comprising 







delivering the electrically conductive fluid to 

thp taropf <;itp 

662 

1168 

1:64-2:17 


oft 1 - 

Z Ij 

9. The method of claim 1 wherein 







the electrode terminal comprises a single 
active electrode disposed near the distal end 
of an instrument shaft. 

662 

1168 

Fig. 5; 8:9- 
34 

4:16-35 

292 

275 

11. The method of claim 1 wherein 







the electrically conductive fluid comprises 
isotonic saline. 

662 

1168 



291 

275 

13. The method of claim 1 wherein 







tfip return pIprtroHp ^naced from the 

electrode terminal such that when the 
eiccirouc icnninat is oruu^iii aujacciii a 
tissue structure immersed in electrically 
conductive fluid, the return electrode is 
spaced from the tissue structure and the 
electrically conductive fluid completes a 
conduction path between the electrode 
terminal and the, return electrode 

662 






18. The method of claim 1 further 
comprising, 







applying a sufficient high frequency voltage 
difference to vaporize the electrically 
conductive fluid in a thin layer over at least a 
oortion of the electrode terminal and to 
induce the discharge of energy to the target 
site in contact with the vapor layer. 


1170 





21. The method of claim 1 wherein 







the voltage is in the range from 500 to 1400 
volts peak to peak. 





« 


26. The method of claim 23 further 
comprising 







immersing the target site within a volume of 
the electrically conductive fluid and 

662 

1168 

1:64-2:17 

5:62-6:19 

291 

275 


Page 13 of 26 


Exhibit D: 

Examples of where each limitation of the dependent claims 
of the '592 patent may be found in each reference. 


claim text \ reference 

37 

38 

39 

40 

41 

42 

positioning the return electrode within the 
volume of electrically conductive fluid to 
generate a current flow path between the 
active electrode and the return electrode. 

662 






27. The method of claim 23 further 
comprising 



: — . 




delivering theelfcctrirallv conductive fluid to 

UWII T VI Hill UJV vIVVU JW-Oll V WVJiWwW v\* ft *. V 

til** farCTf»t cifp 

662 

1168 

1:64-2:17 


291 

275 

30. The method of claim 23 wherein 







the active electrode comprises a single active 
electrode disposed near the distal end of an 
instrument shaft. 

662 

1168 

Fig. 5; 8:9- 
34 

4:16-35 

292 

275 

32. The method of claim 23 wherein 







the electrically conductive fluid comprises 
isotonic saline. 

662 

1168 



291 

275 

34. The method of claim 23 wherein 







uic rcuirn eieciioue is spaced lioni iiic 
active electrode such that when the active 
electrode is brought adjacent a tissue 
structure immersed in electrically conductive 
fluid; the return electrode is spaced from the 
tissue structure and the electrically 
conductive fluid completes a conduction 
path between the active electrode and the 

reftirn p.ferirnrte. 

662 






<0 Tru» motn/\/i at s^loim O nirtnor 
. 1 11C IIICLIICHJ i>I Claim Zj lUilllCI 

comprising 







applying a sufficient high frequency voltage 
difference to vannriTP tfw* plectrtcallv 
conductive fluid in a thin layer over at least a 
portion of the active electrode and to induce 
the discharge of energy to the target site in 
contact with the vapor layer. 


1170 





42. The method of claim 23 wherein 







the voltage is in the range from 500 to 1 400 
volts peak to peak. 








Page 14 of 26 


Exhibit D: 

Examples of where each limitation of the dependent claims 
of the '592 patent may be found in each reference. 


claim text \ reference 

43 

44 

45 

46 

47 

48 

1 Th#» mpthnrl nf* r-laim I fiirthpr comnrisinp 

J. 1 IK? IUCU1UU Ul Ulallll 1 lUIUlvl vuiupiuiug 







tmmor-r irt ei f KlA torOAt CttA u/ltKtn ft Vrtllim^ A I 

imiiicrsing uic target stiic wiuiin a vuiuhii> mm 
the electrically conductive fluid and 

11:1-20 


3:48-4:7 

6:39-45 


3:65-4:17 

maa ifi/\ninn tttA return AIA/4rA/l0 USltnifl t rl** 

positioning me reium etecuoue wild in uic 
volume of electrically conductive fluid to . 
generate the current flow path between the 
electrode terminal and the return electrode. 



inherent 

6:42; 3:8- 
34 


6:28; 5:65- 
6:19 

: — : : : : — — 

4. The method of claim 1 further comprising 







delivering the electrically conductive fluid to 
the target site. 

11:1-20 


3:48-4:7 

6:39-45 


3:65-4:17 

9. The method of claim 1 wherein 







the electrode terminal comprises a single 
active electrode disposed near the distal end 
of an instrument shaft. 

2:8-18 

3:48-51 

5:7-19 

3:41-4:2 

1:57-2:35 

3:65-4:17 

1 1 . The method of claim 1 wherein 







the electrically conductive fluid comprises 
isotonic saline. 



3:48-4:7 



5:65^6:19 

13. The method of claim 1 wherein 







the return electrode is spaced from the 
electrode terminal such that when the 
electrode terminal is brought adjacent a 
tissue structure immersed in electricalry 
conductive fluid* the return electrode is 
spaced from the tissue structure and the 
electricalry conductive fluid completes a 
conduction path between the electrode 

terminal and thet return eJerlrode 



inherent 

6:42; 3:8- 
34 


6:28; 5:65- 
6:19 

15. l he method ot claim I runner 
comprising 







applying a sufficient high frequency voltage 
difference to vaporize the electrically 
conductive fluid in a thin layer over at least a 
portion of the electrode terminal and to 
induce the discharge of energy to the target 
site in contact with the vapor layer. 



IJUId vlll 

mil vi v<n i 


i nhfrfnt 

UU1VI Will 

2 1 . The method of claim 1 wherein 







the voltage is in the range from 500 to 1400 
volts peak to peak. 







26. The method of claim 23 further 
comprising 







immersing the target site within a volume of 
the electrically conductive fluid and 

11:1-20 


3:48-4:7 

6:39-45 


3:65-4:17 


Page 15 of 26 


Exhibit D: 

Examples of where each limitation of the dependent claims 
of the '592 patent may be found in each reference. 


claim text \ reference 

43 

44 

45 . 

46 

47 

48 

positioning uic return cicvuuuc wiuiui mv 
volume of electrically conductive fluid to 
generate a current flow path between the 
active electrode and the return electrode. 



inherent 

6:42; 3:8- 
34 


6:28; 5:65- 
6:19 

z /. I ne metnoc ot claim zs runner 
comprising 







delivering the electrically conductive fluid to 
the target site. 

11:1-20 


3:48-4:7 

6:39-45 


3:65-4:17 

30. The method of claim 23 wherein 







the active electrode, comprises a single active 
electrode disposed near the distal end of an 
instrument shaft. 

2:8-18 

3:48-51 

5:7-19 

3:41-4:2 

1:57-2:35 

3:65-4:17 

32. The method of claim 23 wherein. 







the electrically conductive fluid comprises 
isotonic saline. 



3:48-4:7 



5:65-6:19 

34. The method of claim 23 wherein 






the return electrode is spaced from the 
active electrode such that when the active 
electrode is brought adjacent a tissue 
structure immersed in electrically conductive 
fluid, the return electrode is spaced from the 
tissue structure and the electrically 
conductive fluid completes a conduction 
path between the active electrode and the 
return elftctrode 



inherent 

6:42; 3:8- 
34 


6:28; 5:65- 
6:19 

39. The method of claim 23 further 
comprising 







applying a sufficient high frequency voltage 
difference to vaporize the electrically 
conductive fluid in a thin layer over at least a 
portion of the active electrode and to induce 
the discharge of energy to the target site in 
contact with the vapor layer. 



inherent 

inherent 


inherent 

42. The method of claim 23 wherein 







the voltage is in the range from 500 to 1400 
volts peak to peak. 








Page 16 of 26 


Exhibit D: 

Examples of where each limitation of the dependent claims 
of the '592 patent may be found in each reference. 


claim text \ reference 

49 

50 

51 

52 

53 

54 

3 . The method of claim 1 further comprising 

■ - 






immersing the target site within a volume of 
the electrically conductive fluid and 

1 :47-68 


3:30-34 

2:24-29 

3:37-64 


positioning the return electrode within the 

volume of electrical Iv conductive fluid to 
generate the current flow path between the 
electrode terminal arid the return electrode. 

1:47-68 


3:35-57 

1:30-39 

3:37-64 


A Th*» methn/t rtf rlnim 1 fiirther comnrisinf? 







/1»liw»tirio tkp ^t^r-trtr-nllv rTktlH I irti VP fllttfl tO 

uciivenng inc cictuicaiij •cviiuuv^tivw nuw w 
the target site. 

1:47-68 


3:30-34 

2:24-29 

3:37-64 


9. The method of claim 1 wherein 







the electrode terminal comprises a single 
active electrode disposed near the distal end 
of ah instrument shaft. 

3:27-44 

1:40-51 

3:35-57 

1:42-50 

3:37-64 

670 

1 1. The method of claim 1 wherein 







the electrically conductive fluid comprises 
isotonic saline. 



3:35-57 

2:24-29 



13. The method of claim 1 wherein 







the return electrode is spaced from the 
electrode terminal such that when the 
electrode terminal is brought adjacent a 
tissue structure irnmersed in electrically 
conductive fluid, the return electrode is 
spaced from the tissue structure and the 
electrically conductive fluid completes a 
conduction path between the electrode 
term inn) anH the return eler trhHe 

1:47-68 


3:35-57 

1:30-39 

3:37-64 


1 ft Tttf* m*»tlir\H r»f rlaim 1 fiirthpr 
lO. 1 11C [IlCUilHl Ul wall 11 1 lUlulvI 

comprising 







applying a sufficient high frequency voltage 

uUlCfCllvC IU ValnJI L&C U1C vtCwll ivaiijr 

conductive fluid in a thin layer over at least a 
portion of the electrode terminal and to 
induce the discharge of energy to the target 
site in contact with the vaoor laver 



inherent 

4:10 



21. The method of claim 1 wherein 







the voltage is in the range from 500 to 1400 
volts peak to peak. 







26, The method of claim 23 further 
comprising 







immersing the target site within a volume of 
the electrically conductive fluid and 

1:47-68 


3:30-34 

2:24-29 

3:37-64 



Page 17 of 26 


Exhibit D: 

Examples of where each limitation of the dependent claims 
of the '592 patent may be found in each reference. 


claim text \ reference 

49 

50 

51 

52 

.53 | 54 

positioning the return electrode within the 
volume of electrically conductive fluid to 
generate a current flow path between the 
active electrode and the return electrode. 

1:47-68 


3:35-57 

1:30-39 

3:37-64 

• 

27 The method of claim 23 further 
comprising 







delivering the electrically conductive fluid to 

UIC lolgCl MIC. 

1:47-68 


3:30-34 

2:24-29 

3:37-64 


30. The method of claim 23 wherein 







the active electrode comprises a single active 
electrode disposed near the distal end of an . 
instrument shaft 

3:27-44 

1:40-51 

3:35-57 

1:42-50 

3:37-64 

670 

32. The method of claim 23 wherein 







the electrically conductive fluid comprises 
isotonic saline. 



3:35-57 

2:24-29 



34. The method of claim 23 wherein 







me reiui ii cjecuoue ii> spaicu u urn mc 
active electrode such that when the active 
electrode is brought adjacent a tissue 
structure immersed in electrically conductive 
fluid, the return electrode is spaced from the 
tissue structure and the electrically 
conductive fluid completes a conduction 
path between the active electrode and the 

return p.lerfmrift 

1:47-68 


3:35-57 

1:30-39 

3:37-64 


jy. i iic mcinoa 01 ciairn zj luruici 
comprising 







applying a sufficient high frequency voltage 

difference to vanorizp thp electrically 
conductive fluid in a thin layer over at least a 
portion of the active electrode and to induce 
the discharge of energy to the target site in 
contact with the vapor layer. 



inherent 

4:10 



42. The method of claim 23 wherein 







the voltage is in the range from 500 to 1400 
volts peak to peak. 







Page 18 of 26 


Exhibit D: 

Examples of where each limitation of the dependent claims 
of the '592 patent may be found in each reference. 


claim text \ reference 

55 

56 

57 

58 

59 

60 

3. The method of claim 1 further comprising 








immersing the target site within a volume of 
the eIectricallv_conductive fluid and 



6:7-15 



4:30-37 

nositionine the return electrode within the 

ul/OHI Villi Jf^ Ulv 1 v&t*£Al ^rfWVW 

vnlume of electricallv conductive fluid to 
generate the current flow path between the 
electrode terminal and the return electrode. 



6:7-15 




A TVm» mpfhnrl nf claim 1 "further ComDnsblS 







ffoltt/^rincr thp plprtrimllv conductive fluid to 
me lajRci sue. 



6:7-15 



4:30-37 

9. The method of claim 1 wherein 







the electrode terminal comprises a single 
active electrode disposed near the distal end 
of an mstrument shaft. 


1:61-2:11 




4:15-29 

1 1 . The method of claim 1 wherein 






the electrically conductive fluid comprises 
isotonic saline. 



6:7-15 




13. The method of claim 1 wherein 







the return electrode is spaced from the 
electrode terminal such that when the 
electrode terminal is brought adjacent a 
tissue structure immersed in electrically 
conductive fluid, the return electrode is 
spaced from the tissue structure and the 
electrically conductive fluid completes a 
conduction path between the electrode 
terminal and the, rfin*m fJectrodf,— 



6:7-15 




IX The mrthru\ nf claim 1 further 
to. i Lie iiidiiisu KJi claim ■ iiuuiti 







applying a sufficient high frequency voltage 

U111CI Clll*C IU vay}\Jl ULC U1C CltA^U lUaiJjr 

conductive fluid in a thin layer over at least a 
portion 01 uic eiecuouc lei iiiuiai <uiu iu 
induce the discharge of energy to the target 

Qiti* in CAntwcf with thp vanor IflVPT 
out/ 111 driiuxvi vviui uic vaj/ui lojr w • 







21 . The method of claim 1 wherein 







the voltage is in the range from 500 to 1400 
volts peak to peak. 






i 

26. The method of claim 23 further 
comprising 







immersing the target site within a volume of 
the electrically conductive fluid and 



6:7-15 



4:30-37 


Page 19 of 26 


Exhibit D: 

Examples of where each limitation of the dependent claims 
of the '592 patent may be found in each reference; 


claim text V reference 

55 

56 

57 

58 

59 

60 

positioning the return electrode within the 
volume of electrically conductive fluid to 
generate a current flow path between the . 
active electrode and the return electrode. 



6:7-15 




27. The method of claim 23 further 
comprising 





- 


delivering the electrically conductive fluid to 
the target site. * 



6:7-15 



4:30-37 

30. The method of claim 23 wherein 







the active electrode comprises a single active 
electrode disposed near the distal end of an 
instrument shaft. 


1:6U2:11 




4:15-29 

32. The method of claim 23 wherein 







the electrically conductive fluid comprises 
isotonic saline. 



6:7-15 




34. The method of claim 23 wherein 







the return electrode is spaced from the 
active electrode such that when the active 

structure immersed in electrically conductive 
fluid, the return electrode is spaced from the 
tissue structure and the electrically 
conductive fluid completes a conduction 
path between the active electrode and the 

return f>)f>rtrndf> 



6:7-15 




39. The method of claim -23 further 
comprising * 







applying a sufficient high frequency voltage 
difference to vaporize the electrically 
conductive fluid in a thin layer over at least a 
portion of the active electrode and to induce 
the discharge of energy to the target site in 
contact with the vapor layer. 







42. The method of claim 23 wherein 







the voltage is in the range from 500 to 1400 
volts peak to peak. 








Page 20 of 26 


Exhibit D: 

Examples of where each limitation of the dependent claims 
of the # 592 patent may be found in each reference. 


claim text \ reference 

61 

62 

63 

64 

65 

66 

3, The method of claim 1 further comprising 







immersing the target site within a volume of 
the electrically conductive fluid arid 


'A*1f% AH 

4:3U-4o 


4.23-31 

O.04-/.10 

1 :63-2: 1 7 

positioning the return electrode within the 
volume of electrically conductive fluid to 
generate the current flow path between the 
electrode terminal and the return electrode. 


Fig/3 




- 

4. the method of claim 1 further comprising 







delivering the electrically conductive fluid to 
the target site. 


4:30-46 


4:23-31 

6:64-7:10 

1:63-2:17 

9 The method of claim 1 wherein 







the electrode terminal comprises a single 
active electrode disposed near the distal end 
of an instrument shaft. 

5:10-28 

3:28-60 


5:44-63 

5:20-36 

1:63-2:17 

11. The method of claim 1 wherein 







the electrically conductive fluid comprises 
isotonic saline. 





6:64-7:10 

3:24-33 

13. The method of claim 1 wherein 







the return electrode is spaced from the 
electrode terminal such that when the 
electrode terminal is brought adiacent a 
tissue structure immersed in electrically 
conductive fluid, the return electrode is 
spaced from the tissue structure and the 
electrically conductive fluid completes a 
conduction path between the electrode 
terminal and the. return r.lerrrode 


Fig. 3 





18. The method of claim 1 further 
comprising 







applying a sufficient high frequency voltage 
difference to vaporize die electrically 
conductive fluid in a thin layer over at least a 
portion of the electrode terminal and to 
induce the discharge of energy to the target 
site in contact with the vapor layer. 





6:56 


21. The method of claim 1 wherein 







the voltage is in the range from 500 to 1400 
volts peak to peak. 

4:28-48 






26. The method of claim 23 further 
comprising 







immersing the target site within a volume of 
the electrically conductive fluid and 


4:30-46 


4:23-31 

6:64-7:10 

1:63-2:17 


Page 21 of 26 


Exhibit D: 

Examples of where each limitation of the dependent claims 
of the '592 patent may be found in each reference; 


claim text \ reference 

61 

62 

63 

64 

65 

66 

positioning the return electrode within the 
volume of electrically conductive fluid to 
generate a current flow path between the 
active electrode and the return electrode. 


Fig. 3 





27. The method of claim 23 further 
comprising 







delivering the electrically conductive fluid to 
the target site. 


4:30-46 


4:23-31 

6:64-7:10 

1*63-2*17 

30. The method of claim 23 wherein 







the active electrode comprises a single active 
electrode disposed near the distal end of an 
instrument shaft. 

5:10-28 

3:28-60 


5:44-63 

5:20-36 

1:63-2:17 

32. The method of claim 23 wherein 





6:64-7:10 


the electrically conductive fluid comprises 
isotonic saline. 





3:24-33 

34. The method of claim 23 wherein 







the return electrode is spaced from the 
active electrode such that when the active 
electrode is brought adjacent a tissue 
structure immersed in electrically conductive 
fluid, the return electrode is spaced from the 
tissue structure and the electrically 
conductive fluid completes a conduction 
path between the active electrode arid the 

return ftlftr.tmdp 


Fig! 3 


- ■ 

■ 

■ 


39. The method of claim 23 further 
comprising 







applying a sufficient high frequency voltage 
difference to vaporize the electrically 
conductive fluid in a thin layer over at least a 
portion of the active electrode and to induce 
the discharge of energy to the target site in 
contact with the vapor layer. 




* • 

■ 

- 

• 

6:56 


42. The method of claim 23 wherein 







the voltage is in the range from 500 to 1400 
volts peak to peak. 

4:28-48 







Page 22 of 26 


Exhibit D: 

Examples of where each limitation of the dependent claims 
of the '592 patent may be found in each reference. 


claim text \ reference 

67 

68 

69 

70 

71 

72 

3. The method of claim I further comprising 







immersing the target site within a volume of 
the electrically conductive fluid arid 

A -A 11 

2:o5-3:zz 





positioning the return electrode within the 
volume of electrically conductive fluid to 
generate the current flow path between the 
electrode terminal and the return electrode. 

4:4-11 



2:67-3:8 

j 

2:29-36 

4. The method of claim I further comprising 







delivering the electrically conductive fluid to 
the target site. 

4:4-11 

2:65-3:22 


2:67-3;8 



9. The method of claim 1 wherein 







the electrode terminal comprises a single 
active electrode disposed near the distal end 
of an Instrument shaft. 

4:37-52 

4:33-43 

3:13-16 

2:37-46 

3:43-53 

236-41 

1 1 . The method of claim 1 wherein 







the electrically conductive fluid comprises 
isotonic saline. 

4:4-11 



2:67-3:8 



13. The method of claim 1 wherein 







the return electrode is spaced from the 
electrode terminal such that when the 

plfv^trrkHf* terminal hrniiPnt $tni/tccnt m 

tissue structure immersed in electrically 
conductive fluid, the return electrode is 
spaced from the tissue structure arid the 
electrically conductive fluid completes a 
conduction path between the electrode 
terminal anrifhfi renin) filectrodfi. .. 

4:4-11 



2:67-3:8 


2:29-36 

1 8. The method of claim I further 
comprising 







applying a sufficient high frequency voltage 
difference to vaporize the electrically 
conductive fluid in a thin layer over at least a 
portion of the electrode terminal and to 
induce the discharge of energy to the target 
site in contact with the vapor layer. 







2 1 . The method of claim 1 wherein 







the voltage is in the range from 500 to 1400 
volts peak to peak. 







26. The method of claim 23 further 
comprising 







immersing the target site within a volume of 
the electrically conductive fluid and 

4:4-11 

2:65-3:22 


2:67-3:8 




Page 23 of 26 


Exhibit D: 

Examples of where each limitation of the dependent claims 
of the '592 patent may be found in each reference. 


claim text \ reference 

67 

68 

69 

70 

71 

72 

positioning the return electrode within the 
volume of electrically conductive fluid to 
generate a current flow path between the 
active electrode and the return electrode. 

4:4-11 



2:67-3:8 


, 2:29-36 

27. The method of claim 23 further 
comprising 







delivering the electrically conductive fluid to 
the target site. 

4:4-11 

2:65-3:22 


2:67-3:8 



30. The method of claim 23 wherein 







the active electrode comprises a single active 
electrode disposed near the distal end of an 
instrument shaft. 

4:37-52 

4:33-43 

3:13-16 

2:37-46 

3:43-53 

2:36-41 

32. The method of claim 23 wherein 







the electrically conductive fluid comprises 
isotonic saline. 

4:4-11 



2:67-3:8 



34i The method of claim 23 wherein 







the return electrode is SDaced from the 
active electrode such that when the active 

civvti uuc k> uruugm <tuj«ivciii a umuc 

structure immersed in electrically conductive 
fluid, the return electrode is spaced from the 
tissue structure and the electrically 
conductive fluid completes a conduction 
path between the active electrode and the 
ramrn etectrnrte. 

4:4-11 



2:67-3:8 


2:29-36 

39 The method of claim 23 further 
comrjri'itTH? • 







applying a sufficient high frequency voltage 
difference to vaporize the electrically 
conductive fluid in a thin layer over at least a 
portion of the active electrode and to induce 
the discharge of energy to the target site in 
contact with the vapor layer. 







42. The method of claim 23 wherein 







the voltage is in the range from 500 to 1400 
volts peak to peak. 








Page 24 of 26 


Exhibit D: 

Examples of where each limitation of the dependent claims 
of the '592 patent may be found in each reference. 


claim text \ reference 

73 

3 The method of claim 1 further comprising 


immprtino fhf* tnropt<;ttp within a volume of 

the electrically conductive fluid and 

3:60-4:3 

r^r\cit irvn ino tliR FPti irn **lAf*trnHp within trie 

LHJ?>ltl<JllLllg UIG IwlUJII vICVrUvrUC VVIU1IU U1W 

vojume oi cicciricaiiy conuuviivc nuiu w 
generate the current flow path between the 
electrode terminal and the return electrode. 


4. ine meincxj oi ciaim i njruier cuinpriauig 


delivering the electrically conductive fluid to 
the target site. 

3:60-4:3 

9. The method of claim I wherein 


the electrode terminal comprises a single 
active electrode disposed near the distal end 
of an instrument shaft 

6:8-22 

1 1. The method of claim 1 wherein 


the electrically conductive fluid comprises 
isotonic saline. 


1 3 . The method of claim 1 wherein 


the return electrode is spaced from the 
electrode terminal such that when the 
electrode terminal is brought adjacent a 
tissue structure immersed in electrically 
conductive fluid, the return electrode is 
spaced from the tissue structure and the 
electrically conductive fluid completes a 
conduction path between the electrode 
terminal and the rp.tiim elec.trndfi. 


15. i ne metnoo or claim i runner 
comprising 


apprying a sufficient high frequency voltage 
difference to vaporize the electrically 
conductive fluid in a thin layer over at least a 
portion of the electrode terminal and to 
induce the discharge of energy to the target 
site in contact with the vapor layer. 


21 . The method of claim 1 wherein 


the voltage is in the range from 500 to 1400 
volts peak to peak: 


26. The method of claim 23 further 
comprising 


immersing the target site within a volume of 
the electrically conductive fluid and 

3:60-4:3 


Page 25 of 26 


Exhibit D: 

Examples of where each limitation of the dependent claims 
of the '592 patent may be found in each reference. 


claim text \ reference 

73 

nAQit irtnrno thf* rptiim plprtrnrfp within the 

|/VOltl Villi UtV ICtlilll ClVtU UUt VT IUI Ul UIW 

vrkliimp t\f #*lp/*tWf^i 1 1 v pnnHiirtivi* fliifrl tci 
Yi/juitic.ui ciccu icaiijr irUiiuiiL.iivc.iiuiu iv 

generate a current flow path between the 
active electrode and the return electrode. 


/ / . i ne meinoo oi ciaim runner 
comprising 


delivering me eiecuicajiy conuueuve iiuiu w 
the target site. 

3:60-4:3 

30. The method of claim 23 wherein 


the active electrode comprises a single active 
electrode disposed near the distal end .of an 
instrument shaft. 

6:8-22 

32. The method of claim 23 wherein 


the electrically conductive fluid comprises 
isotonic saline. 


34. The method of claim 23 wherein 


the return electrode is spaced from the 
active electrode such that when the active 
electrode is brought adjacent a tissue 
structure immersed in electrically conductive 
fluid, the return electrode is spaced from the 
tissue structure and the electrically 
conductive fluid completes a conduction 
path between the active electrode and the 
rftriirn elftrtrndft 


39. The method of claim 23 further 
comprising 


applying a sufficient high frequency voltage 
difference to vaporize the electrically 
conductive fluid in a thin layer over at least a 
portion of the active electrode and to induce 
the discharge of energy to the target site in 
contact with the vapor layer. 


42. The method of claim 23 wherein 


the voltage is in the range from 500 to 1400 
volts peak to peak. 



Page 26 of 26 


Exhibit E: 

Anticipation and obviousness contentions 

Smith & Nephew contends that the following claims are anticipated by at least 
each of the following primary references. Smith & Nephew reserves the right to 


supplement this contention in the event ArthroCare changes its construction of the 
asserted claims, or in the event the Court's construction of the asserted claims differs. 


Patent 

Claim 

References 

536 

46 

8,15,23,29,31,48,51,52 


47 

23,31,48,51 


55 

8, 15,22,23,26,29,31,36,38,48,51,52,65 


56 

8,15,26,29,31,36,38,51,52 


58 

22, 23, 26, 29, 38, 65 


59 

22,23,26,29 

882 

1 

8, 15,26,38,48,51,52,65 


13 

15,26,52,65 


17 

26 


18 

26 


21 

26, 52 


23 

8,26,38,48,51,52,65 


24 

8.26,38,48,51,52,65 


29 

15,26,65 


47 

26,29,38 


48 

26,29 


49 

26,29 


50 

26,29,65 


54 

48 

592 

3 

8.15,23,26,31,48,51 


4 

8,15,23,26,31,48,51 


9 

8,15,23,26,31,48,51 


11 

S, 23, 26, 31, 48, 51 


13 

8, 15,23,26,31,48,51 


18 

8, 15,26,48,51 


21 

23,26 


26 

8, 15,31,48,51 


27 

8,15,31,48,51 


30 

8, 15,31,48,51 


32 

8,31,48,51 


34 

8, 15,31,34, 48,51 


39 

8,15,48,51 


42 



1 


Smith & Nephew also contends that the following claims would have been 
obvious to one of ordinary skill in the art at the time of the invention in view of at least 
each of the following combinations of primary references, which Smith & Nephew 
contends would have been combined for at least the following reasons. Smith & Nephew 
reserves the right to supplement this contention in the event ArthroCare changes its 
construction of the asserted claims, or in the event the Court's construction of the 


asserted claims differs. 


Patent 

Claim 

Combinations 

Motivation to Combine 

536 

46 

10 with any one or more of 22, 
26, 36, 38, 65; 

any one or more of the preceding 
with any one or more of the 
anticipating references listed 
above. 

Each reference is directed to the 
same problem - applying 
electrical energy to a target site on 
a patient's body structure. 


47 

Any one or more of 8, 1 5, 26, 
29, 36, 52 with any one or more 
of 10,34; 

any one or more of the preceding 
with any one or more of the 
anticipating references listed 
above. 

Each reference is directed to the 
same problem - applying 
electrical energy to a target site on 
a patient's body structure. 


55 

1 0 with any one or more of the 
anticipating references listed 
above. 

Each reference is directed to the 
same problem - applying 
electrical energy to a target site on 
a patient's body structure; 


56 

34 with any one or more of 48, 
65; 

any one or more of the preceding 
with any one or more of the 
anticipating references listed 
above. 

Each reference is directed to the 
same problem - applying 
electrical energy to a target site on 
a patient's body structure. 


58 

Any one or more of 8, 15, 31, 
48, 51, 52 with any one or more 
of the anticipating references 
listed above. 

Each reference is directed to the 
same problem - applying 
electrical energy to a target site on 
a patient's body structure. 


2 


Patent 

Claim 

Combinations 

Motivation to Combine 


59 

32 with any one or more of 8, 
15,31,38, 48,51,52, 65; 
any one or more of the preceding 
with any one or more of the 
anticipating references listed 
above* 

Each reference is directed to the 
same problem — applying 
electrical energy to a target site on 
a patient's body structure. 

882 

1 

10 with any one or more of 22, 

23,29,31,34, 36; 

any one or more of the preceding 

with any one or more of the 

anticipating references listed 

above 

Each reference is directed to the 
same problem — applying 
electrical energy to a target site on 
a patient's body structure. 


13 

Any one or more of 1 0, 29 with 
any one or more of 8, 38, 48, 51; 
any one or more of the preceding 
with any one or more of the 
anticipating references listed 
above. 

Each reference is directed to the 
same problem applying 
electrical energy to a target site on 
a patient's body structure. 


17 

Ariv one or more of 23 29 32 

with any one or more of 8, 1 5, 

38,48,51,52,65; 

any one or more of the preceding 

with any one or more of the 

anticipating references listed 

above. 

Each reference is directed to the 
same problem — applying 
electrical energy to a target site on 
a patient's body structure. 


1 o 

Anv one or more of 2^ 9Q ^9 

with any one or more of 8, 1 5, 

38, 48,51,52, 65; 

any one or more of the preceding 

with any one or more of the 

anticipating references listed 

above. 

Rach reference is directed to the 
same problem - applying 
electrical energy to a target site on 
a patient's body structure. 


21 

Any one or more of 3 1 , 36 with 
any one or more of 8, 15, 38, 48, 
51,65; 

any one or more of the preceding 
with any one or more of the 
anticipating references listed 
above. 

Each reference is directed to the 
same problem — applying 
electrical energy to a target site on 
a patient's body structure. 


23 

Any one or more of 22, 23, 29, 
31, 36 with 15; 

any one or more of the preceding 
with any one or more of the 
anticipating references listed 
above. 

Each reference is directed to the 
same problem — applying 
electrical energy to a target site on 
a patient' s body structure. 


3 


Patent 

Claim 

Combinations 

Motivation to Combine 


24 

Any one or more of 22, 23, 29, 
36 with 15; 

any one or more of the preceding 
with any one or more of the 
anticipating references listed 
above. 

Each reference is directed to the 
same problem — applying 
electrical energy to a target site on 
a patient's body structure. 


29 

Any one or more of 10, 48, 52 
with any one or more of 8, 29; 

any UUv UI II \\Jl C l/I Ulv? pi G^OVllllg 

with any one or more of the 
anticipating references listed 
above; 

38, 51 with any one or more of 
the anticipating references listed 
above. 

Each reference is directed to the 
same problem — applying 

<*lf*rtrir5*1 ptiptov tn a taTWt site on 

a patient's body structure. 


At 

Any one or more, oi zz, ji, jo 
with any one or more of 8, 1 5, 
48,51,52,65; 

any one or more of the preceding 
with any one or more of the 
anticipating references listed 
above. 

JCriiC.II IClCICIllrC lo UHCtlCu vj .Uiw 

same problem — applying 
electrical energy to a target site on 
a patient's body structure. 


48 

Any one or more of 23, 32 with 
any one or more of 8, 15, 65; 
any . one or more of the preceding 
with any one or more of the 
anticipating references listed 
aoove. 

Each reference is directed to the 
same problem — applying 
electrical energy to a target site on 
a patient's body structure. 


49 

32 with any one. or more of 8, 
15,65; 

any one or more of the preceding 

vi/itVi qtiv r\TM* nr mnr** r\f tYtf* 
W1U1 ally UIIC Ul liJUlC.Ul LUC 

anticipating references listed 
above. 

Each reference is directed to the 
same problem — applying 
electrical energy to a target site on 
a natipnt's hodv structure 


50 

Any one or more of 8, 1 5 with 
anv one or more of the 
anticipating references listed 
above. 

Each reference is directed to the 
same problem — applying 
electrical energy to a target site on 
a patient's body structure. 


54 

3 1 with any one or more of the 
anticipating references listed 
above. 

Each reference is directed to the 
same problem — applying 
electrical energy to a target site on 
a patient's body structure. 


4 


Patent 

Claim 

Combinations 

Motivation to Combine 

592 

3 

Any one or more of 22, 29, 36, 
52 with 34; 

any one or more of the preceding 
with any one or more of the 
anticipating references listed 
above; 

38, 65 with any one or more of 
the anticipating references listed 
above. 

Each reference is directed to the 
same problem - applying 
electrical energy to a target site on 
a patient's body structure. 


4 

Any one or more of 22, 29, 36, 

38,52,65 with 34; 

any one or more of the preceding 

with any one or more of the 

anticipating references listed 

above. 

Each reference is directed to the 
same problem — applying 
electrical energy to a target site oh 
a patient' s body structure . 


? 

Any one or more of 10, 22, 29, 

36, 38, 52, 65 with 34; 

any one or more of the preceding 

with any one or more of the 

anticipating references listed 

above. 

Each reference is directed to the 
same problem -- applying 
electrical energy to a target site on 
a patient's body structure. 


M 

Any one or more of 22, 29, 36, 
38, 52^ 65 with any one or more 
of 15,34; 

any one or more of the preceding 
with any one or more of the 
anticipating references listed 
above. 

Each reference is directed to the 
same problem — applying 
electrical energy to a target site on 
a patient' s body structure. 


13 

Any one or more of 22, 29, 36, 
52 with 34; 

any one or more of the preceding 
with any one or more of the 
anticipating references listed 
above. 

Each reference is directed to the 
same problem -:- applying 
electrical energy to a target site on 
a patient's body structure. 


18 

Any one or more of 10, 38, 52, 
65 with any one or more of 23, 
31,34; 

any one or more of the preceding 
with any one or more of the 
anticipating references listed 
above. 

Each reference is directed to the 
same problem — applying 
electrical energy to a target site on 
a patient's body structure. 


5 


Patent 

Claim 

Combinations 

Motivation to Combine 


21 

Any one or more of 29, 32 with 
any one or more of 8, 15,31,34, 
48,51; 

any one or more of the preceding 
with any one or more of the 
anticipating references listed 
above. 

Each reference is directed to the 
same problem — applying 
electrical energy to a target site on 
a patient's body structure. 


26 

Any one or more of 22, 23, 26, 

29, 36, 52 with 34; 

any one or more of the preceding 

with any one or more of the 

anticipating references listed 

above; 

38, 65 with any one or more of 
the anticipating references listed 
above. 

Each reference is directed to the 
same problem — applying 
electrical energy to a target site on 
a patient's body structure. 


27 

Any one or more of 22, 23, 26, 
29, 36, 38, 52, 65 with 34; 
any one or more of the preceding 
with any one or more of the 
anticipating references listed 
above. 

Each reference is directed to the 
same problem — applying 
electrical energy to a target site on 
a patient' s body structure. 


30 

Any one or more of 1 0, 22, 23, 
26, 29, 36, 38, 52, 65 with 34; 
any one or more of the preceding 
with any one or more of the 
anticipating references listed 
above. 

Each reference is directed to the 
same problem — applying 
electrical energy to a target site on 
a patient's body structure. 


32 

Any one or more of 22, 23, 26, 

29, 36, 38, 52, 65 with any one 

or more of 15, 34; 

any one or more of the preceding 

with any one or more of the 

anticipating references listed 

above. 

Each reference is directed to the 
same problem — applying 
electrical energy to a target site on 
a patient's body structure. 


34 

Any one or more of 22, 23, 26, 
29, 36, 52 with any one or more 
of the anticipating references 
listed above. 

Each reference is directed to the 
same problem — applying 
electrical energy to a target site on 
a patient's body structure. 


Patent 

Claim 

Combinations 

Motivation to Combine 


39 

Any one or more of 1 0, 26, 38, 
52, 65 with any one or more of 
31,34; 

any one or more of the preceding 
with any one or more of the 
anticipating references listed 
above. 

Each reference is directed to the 
same problem — applying 
electrical energy to a target site on 
a patient's body structure. 


42 

Any one or more of 23, 26, 29, 

32 with any one or more of 

8, 15,31,34,48,51; 

any one or more of the preceding 

with any one or more of the 

anticipating references listed 

above. 

Each reference is directed to the 
same problem - applying 
electrical energy to a target site on 
a patient's body structure. 


7 


dsn) )|UDW ©6Dd SWL