DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendment
In light of Applicant’s amendment, claim(s) 20, is amended. Claim 21 and 29-30 previously canceled. Claims 20, 22-28, and 31-38 are now pending examination.
Response to Arguments
Applicant’s arguments, filed 4/10/2026, with respect to the rejection(s) of claim(s) 20 under U.S.C. 103 have been fully considered and are persuasive. Examiner agrees the amended limitation “the midsection extending from the front end to the rear end; an inner housing part arranged in the outer housing part, the annular space surrounding the inner housing part, the outer housing part surrounding the inner housing part and the annular space” overcomes the previous rejection as written. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Wernz, in view of Cimino, Toshiyuki, Hood and Banko.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 20, 23, 27, and 36-37 are rejected under 35 U.S.C. 103 as being unpatentable over Wernz (EP 2011458A1)(noted on IDS) (References correspond to attached Espacenet translation) (previously of record) in view of Cimino (US 20020002377 A1) in view of Toshiyuki (JPH05177169) (References correspond to attached Espacenet translation) (previously of record) in view of Hood et al. (US 4681561 A) and in view of Banko (US 20150025451 A1).
Regarding claim 20, Wernz discloses a disposable surgical instrument (20) (Figure 1-3; Paragraph 0001; 0013) (the device of Wernz is fully capable of being disposed of, whether it be after a single use or multiple uses, as there is no structure preventing the device from being disposed of if desired), comprising
a housing (22) (Figure 2-3; Paragraph 0019),
an ultrasonic transducer (26) arranged in the housing (Figure 2-3; Paragraph 0019-21) and
a tool (12) which is operatively connected to the ultrasonic transducer for the purpose of ultrasonic excitation (Figure 1; Paragraph 0019),
and the ultrasonic transducer comprising a sonotrode (46) (element 46 is vibration element, which is equivalent to a sonotrode because it provides ultrasonic vibration), a resonator (48) (clamping element 48 is a cylindrical tube which exhibits resonance as it is connected to a vibrating element) and a piezoceramic element (40) arranged between the sonotrode and the resonator (Figure 3; Paragraph 0020-21),
wherein the sonotrode comprises a midsection (entirety of sonotrode) arranged adjacent to the resonator (Figure 3), in which the sonotrode is supported in the housing (Paragraph 0019), a rear end coupled to the resonator and a front end which is arranged opposite the resonator and is reduced compared to the midsection (Figure 3; Paragraph 0021),
wherein the housing comprises an inner housing part (22) surrounding at least a portion of the midsection of the sonotrode, the midsection extending from the front end to the rear end (Figure 2; Paragraph 0019).
Wernz fails to explicitly disclose the sonotrode and/or the resonator being made of an aluminum alloy, wherein the aluminum alloy has a tensile strength greater than 400 N/mm2 and wherein the sonotrode includes regions that are configured to be exposed and come into contact with a rinsing fluid during an operation, and wherein the regions of the sonotrode are biocompatible, an outer housing part, an inner housing part arranged in the outer housing part, an annular space provided between the outer housing part and the inner housing part for supplying and/or for directing the rinsing fluid to the tool, the annular space surrounding the inner housing part, the outer housing part surrounding the inner housing part and the annular space and the inner housing part including a plurality of cooling openings in a region around the midsection of the sonotrode such that the midsection of the sonotrode and the front end of the sonotrode are configured to be exposed and come into contact with the rinsing fluid for the purpose of cooling.
However, Cimino is directed to an ultrasonic surgical instrument and teaches an instrument being made of an aluminum alloy wherein regions of the applicator that are exposed and come into contact with a rinsing fluid (outer surface of applicator, which would come into contact with any fluid provided in the surgical field) are biocompatible (Paragraphs 0002 and 0012). When combined with the device of Wernz, the sonotrode and/or the resonator would be made of an aluminum alloy and regions of the sonotrode that are configured to be exposed and come into contact with a rinsing fluid during an operation (outer surface of sonotrode) would be biocompatible.
It would be obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified Wernz with the teachings of Cimino by incorporating the sonotrode and/or the resonator of Wernz to comprise a coating of an aluminum alloy, wherein regions of the sonotrode that are exposed and come into contact with a rinsing fluid are biocompatible in order to provide sufficient fatigue strength, a sufficiently hard surface to withstand typical surgical applications, and biocompatibility characteristics that allow it to be used in a surgical environment, while being cheaper than conventional materials like titanium (Cimino Paragraph 0012-13). As both references are directed to ultrasonic surgical instruments one of ordinary skill in the art would have a reasonable expectation of success.
Wernz as modified by Cimino fails to explicitly disclose wherein the aluminum alloy has a tensile strength greater than 400 N/mm2 and wherein the inner housing part including a plurality of cooling openings in a region around the midsection of the sonotrode such that the midsection of the sonotrode and the front end of the sonotrode are configured to be exposed and come into contact with the rinsing fluid for the purpose of cooling.
Further, Toshiyuki teaches aluminum alloy with a tensile strength of 40kg/mm2 (392 N/mm2) provides high strength for an ultrasonic vibrating instrument (Paragraphs 0005-0007). Thus, it would have been obvious for the high strength coating on the sonotrode and/or the resonator of Wernz in view of Cimino to have a tensile strength of 392N/mm2 as it provided the high strength property desired as taught by Toshiyuki. Although 392N/mm2 is not greater than 400N/mm2, it is apparent, however, that the instantly claimed amount of greater than 400N/mm2 and that taught by Toshiyuki are so close to each other that the fact pattern is similar to Titanium Metals" Corp. of America v. Banner, 778 F.2d 775,227 USPQ 773 (Fed.Cir. 1985) where despite a "slight" difference in the ranges the court held that such a difference did not "render the claims patentable" or, alternatively, that "a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough so that one skilled in the art would have expected them to have the same properties". In the instant case Applicant and Toshiyuki employ a high tensile strength aluminum alloy for the same purpose, strength for ultrasonic transducers (Toshiyuki Paragraph 0002). Additionally, applicant appears to have placed no criticality on the claimed range as Applicant discloses a more preferred range than the claimed range (see Applicant’s specification, page 11, indicating “a high-strength aluminum alloy is used which has a tensile strength greater than 400 N/mm2 and in particular greater than 450 N/mm2”).
Wernz as modified by Ciminio and Toshiyuki fails to disclose wherein the inner housing part including a plurality of cooling openings in a region around the midsection of the sonotrode such that the midsection of the sonotrode and the front end of the sonotrode are configured to be exposed and come into contact with the rinsing fluid for the purpose of cooling.
However, Hood is directed to an ultrasonic surgical instrument (10) and teaches the inner housing part (inner surface of 50) including a plurality of cooling openings (62) in a midsection (Figure 3-4; Col 5, line 38-51). When combined with the instrument of Wernz, the plurality of cooling openings would be located in the midsection of the inner housing part in region around the midsection of the sonotrode such that the midsection of the sonotrode and the front end of the sonotrode are fully capable of being exposed and come into contact with the rinsing fluid (fluid). The fluid is fully capable of being used for the purpose of cooling, in addition to irrigation.
A person of ordinary skill in the art before the effective filing date of the claimed invention would have been motivated to modify Wernz as modified by Ciminio and Toshiyuki such that the inner housing part including a plurality of cooling openings, as taught by Hood, as the references and the claimed invention are directed to ultrasonic surgical instruments. It would be obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified Wernz as modified by Ciminio and Toshiyuki with the teachings of Hood by incorporating the inner housing part including a plurality of cooling openings in order to allow for irrigation fluid to pass through the instrument (Col 5, line 49-51).
Further, Banko is directed to a surgical handpiece and teaches an inner housing part (11+16) arranged in the outer housing part (10), an annular space (31) provided between the outer housing part and the inner housing part for supplying and/or for directing the rinsing fluid to the tool, the annular space surrounding the inner housing part, the outer housing part surrounding the inner housing part and the annular space (Figure 3; Paragraph 0010).
A person of ordinary skill in the art before the effective filing date of the claimed invention would have been motivated to modify Wernz as modified by Ciminio, Toshiyuki, and Hood such that the housing comprises an outer housing part, the inner housing part arranged in the outer housing part, an annular space provided between the outer housing part and the inner housing part for supplying and/or for directing the rinsing fluid to the tool, the annular space surrounding the inner housing part, the outer housing part surrounding the inner housing part and the annular space, as taught by Banko, as both references and the claimed invention are directed to surgical devices. It would be obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified Wernz as modified by Ciminio, Toshiyuki, and Hood with the teachings of Banko by incorporating the housing comprises an outer housing part, the inner housing part arranged in the outer housing part, an annular space provided between the outer housing part and the inner housing part for supplying and/or for directing the rinsing fluid to the tool, the annular space surrounding the inner housing part, the outer housing part surrounding the inner housing part and the annular space in order to allow for colling water to traverse the device (Paragraph 0009).
Regarding claim 23, Wernz further discloses wherein the sonotrode is supported in the housing (Paragraph 0019), the front end is operatively connected to the tool (Figure 3; Paragraph 0019), and a suctioning duct (36+suctioning device) extends through the sonotrode from the front end thereof to the rear end thereof with the rear end being connected to the resonator (Paragraph 0019).
Regarding claim 27, Wernz further discloses wherein the tool is a hollow needle (Figure 1; Paragraph 0018).
Regarding claim 36, Wernz further discloses wherein the housing comprises an inlet opening (27) in fluid communication with the annular space for the supply of the rinsing fluid (Paragraph 0019).
Regarding claim 37, Wernz further discloses wherein the housing has a passage opening (opening leading into 36) for a suctioning hose (36) at its rear end opposite the front end of the sonotrode, wherein the suctioning hose is connected to the suctioning duct extending through the sonotrode (Figure 2; Paragraph 0019).
Claim 22 is rejected under 35 U.S.C. 103 as being unpatentable over Wernz, in view of Cimino, Toshiyuki, Hood, and Banko and further in view of Fuchs (EP2824221) (All references correspond to attached Espacenet translation) (previously of record).
Regarding claim 22, Wernz as modified by Cimino, Toshiyuki, Hood, and Banko teaches the surgical instrument of claim 20 but fails to disclose wherein the aluminum alloy is an alloy selected from the group of the following aluminum alloys: Al-Cu4SiMg; AlCu4Mg1; AlZn4.5Mg1; AlZn5.5MgCu; AlZnMg3Cu; AlZn8MgCu.
Fuchs is directed to a medical device and teaches wherein the aluminum alloy is an alloy selected from the group of the following aluminum alloys: Al-Cu4SiMg; AlCu4Mg1; AlZn4.5Mg1 (Paragraph 0038).
A person of ordinary skill in the art before the effective filing date of the claimed invention would have been motivated to modify the aluminum alloy of Wernz as modified by Cimino, Toshiyuki, Hood, and Banko such that to be selected from the group of the following aluminum alloys: Al-Cu4SiMg; AlCu4Mg1; AlZn4.5Mg1, as taught by Fuchs, as the references and the claimed invention are directed to medical devices. It would be obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified the aluminum alloy of Wernz as modified by Cimilino, Toshiyuki, Hood, and Banko with the teachings of Fuchs by incorporating to be selected from the group of the following aluminum alloys: Al-Cu4SiMg; AlCu4Mg1; AlZn4.5Mg1 in order to be corrosion resistant and wear-resistant (Fuchs Paragraph 0001).
Claims 26, 28, and 31-32 are rejected under 35 U.S.C. 103 as being unpatentable over Wernz, in view of Cimino, Toshiyuki, Hood, and Banko and further in view of Sussman (US 20140276364 A1) (Noted on IDS).
Regarding claim 26, Wernz, as modified by Cimino, Toshiyuki, Hood, and Banko teaches the surgical instrument according to claim 20, and Wernz further discloses wherein the sonotrode at its front end operatively connected to the tool extends through an opening of the housing with a play (Figure 2; Paragraph 0019) (Wernz states “the sonotrode 26 is screwed to the needle 12 at its front end 29”, allowing for operative connection between the distal end of the sonotrode (46) with the tool (12), which would require an opening/clearance/play), and that a holder element (screw) can be set on the housing at the opening (Figure 2; Paragraph 0019), and wherein a sleeve (31) extends from the holder element and surrounds the tool at its outer side (Figure 2; Paragraph 0019) but fails to disclose an elastic sleeve.
However, Sussman teaches an elastic sleeve (131) which surrounds the tool (130) at its outer side (Figure 1; Paragraph 0026-27).
A person of ordinary skill in the art before the effective filing date of the claimed invention would have been motivated to modify Wernz as modified by Cimino, Toshiyuki, Hood, and Banko such that the sleeve is elastic, as taught by Sussman, as both references and the claimed invention are directed to phacoemulsification devices. It would be obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified Wernz as modified by Cimino, Toshiyuki, Hood, and Banko with the teachings of Sussman by incorporating an elastic sleeve in order to allow the sleeve to be flexible and expandable (Sussman Paragraph 0028).
Regarding claim 28, Wernz as modified by Cimino, Toshiyuki, Hood, and Banko teaches the surgical instrument according to claim 20, but fails to teach wherein the housing comprises plastic material and/or is made of plastic material.
However, Sussman teaches wherein the housing (121) is made of plastic material (Paragraph 0023).
A person of ordinary skill in the art before the effective filing date of the claimed invention would have been motivated to modify Wernz as modified by Cimino, Toshiyuki, and Hood such that the housing is made of plastic material, since Wernz is silent on the material of the housing, and Sussman is also directed to a phacoemulsification device. It would be obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified Wernz as modified by Cimino, Toshiyuki, and Hood with the teachings of Sussman by incorporating the housing is made of a plastic material in order to ensure the housing is substantially rigid (Sussman Paragraph 0023).
Regarding claim 31, modified Wernz teaches the surgical instrument according to claim 29 and Wernz further discloses wherein the inner housing part comprises an exit opening (30) for a front end of the sonotrode, and the outer housing part comprises an exit opening (30) aligned with the exit opening of the inner housing part and spaced therefrom in a longitudinal direction of the sonotrode (Figure 2; Paragraph 0019), wherein the exit opening the front end of the sonotrode is arranged and/or beyond which the front end of the sonotrode protrudes (Figure 2-3; Paragraph 0019) and on which a holder element (screw) can be set (Paragraph 0019) from which a sleeve (31) extends from the holder element and surrounds the tool at its outer side (Paragraph 0019). Wernz fails to disclose an elastic sleeve.
However, Sussman teaches an elastic sleeve (131) which surrounds the tool (130) at its outer side (Figure 1; Paragraph 0026-27).
A person of ordinary skill in the art before the effective filing date of the claimed invention would have been motivated to modify Wernz as modified by Cimino, Toshiyuki, Hood, and Banko such that the sleeve is elastic, as taught by Sussman, as both references and the claimed invention are directed to phacoemulsification devices. It would be obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified Wernz as modified by Cimino, Toshiyuki, and Hood with the teachings of Sussman by incorporating an elastic sleeve in order to allow the sleeve to be flexible and expandable (Sussman Paragraph 0028).
Regarding claim 32, the combination Wernz as modified by Ciminio, Toshiyuki, Hood, and Banko further discloses wherein the annular space between the inner housing part and the outer housing part is adjoined at the exit opening of the inner housing part by a further annular space (17), which is formed by the outer housing part and the front end of the sonotrode of the combination device, and which extends into an interspace (117) defined by a play between the front end of the sonotrode and the exit opening of the outer housing part and, from there, transitions into an interspace between the tool and the elastic sleeve (Banko Figure 3; Paragraph 0038).
Claims 24 and 35 are rejected under 35 U.S.C. 103 as being unpatentable over Wernz in view of Cimino in view of Toshiyuki, Hood, and Banko and further in view of Malinowski (US 5453087 A) (previously of record).
Regarding claim 24, Wernz as modified by Cimino, Toshiyuki, Hood, and Banko discloses the surgical instrument according to claim 23 but fails to explicitly disclose wherein the front end of the sonotrode comprises another metal material than aluminum or an aluminum alloy, or wherein the front end of the sonotrode is made of another metal material than aluminum or an aluminum alloy.
However, Malinowski is directed to a phacoemulsification instrument and teaches wherein the front end (27a) of the sonotrode (27) is made of a metal material other than aluminum or an aluminum alloy (Horn 27 is formed from a titanium-aluminum-vanadium alloy, thus the front part 27a is also formed of the same material) (Col 6, lines 26-28).
A person of ordinary skill in the art before the effective filing date of the claimed invention would have been motivated to modify Wernz as modified by Cimino, Toshiyuki, Hood, and Banko such that the front end of the sonotrode is made of a metal material other than aluminum or an aluminum alloy, as taught by Malinowski, as the references and the claimed invention are directed to phacoemulsification devices. It would be obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified Wernz as modified by Cimino, Toshiyuki, Hood, and Banko with the teachings of Malinowski by incorporating the front end of the sonotrode is made of a metal material other than aluminum or an aluminum alloy in order to penetrate the patient's eye for supplying ultrasonic vibrations thereto (Malinowski Col 1, line 25-26).
Regarding claim 35, Wernz as modified by Cimino, Toshiyuki, Hood, and Banko teaches the surgical instrument according to claim 20, but fails to explicitly disclose wherein the cooling openings are arranged in the inner housing part situated between two bearing rings and receiving grooves are formed in the midsection of the sonotrode.
However, Malinowski further teaches wherein the cooling openings are arranged in the inner housing part situated between two bearing rings (18, 21) and two receiving grooves (bore, groove) (Figure 1; Col 2, lines 14-19; Col 7, lines 64-66). When combined with the cooling openings of Hood, the bearing rings and receiving grooves would be formed in the midsection of the sonotrode.
A person of ordinary skill in the art before the effective filing date of the claimed invention would have been motivated to modify Wernz as modified by Cimino, Toshiyuki, Hood, and Banko such that the cooling openings are arranged in the inner housing part situated between two bearing rings and receiving grooves are formed in the midsection of the sonotrode, as taught by Malinowski, as the references and the claimed invention are directed to phacoemulsification devices. It would be obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified Wernz as modified by Cimino, Toshiyuki, Hood, and Banko with the teachings of Malinowski by incorporating the cooling openings are arranged in the inner housing part situated between two bearing rings and two receiving grooves are formed in the midsection of the sonotrode in order to cool down the sonotrode as it heats up during the procedure and secure it into place (Malinowski Col 2, lines 14-19; Col 7, lines 64-66).
Claim 25 is rejected under 35 U.S.C. 103 as being unpatentable over Wernz in view of Cimino in view of Toshiyuki Hood, and Banko and further in view of Houser (US 20090036914 A1) (previously of record).
Regarding claim 25, Wernz as modified by Cimino, Toshiyuki, Hood, and Banko teaches the surgical instrument of claim 20 and Wernz further discloses wherein the resonator is designed as a hollow cylinder (lumen 34 passes through, therefore it is hollow) (Figure 2-3; Paragraph 0021) but fails to disclose that the sonotrode has a rear end mechanically coupled to the resonator and extending through the resonator, said rear end is in mechanical engagement for the purpose of biasing the piezoceramic element arranged between the resonator and the sonotrode.
However, Houser is directed to an ultrasonic instrument and teaches the sonotrode (18+35) (the transduction portion of the transducer, as well as the connection feature connecting the transduction portion to the resonators is the sonotrode because the transduction portion provides vibration for the transducer, which is equivalent to a sonotrode) has a rear end (35) mechanically coupled to the resonator (22) and extending through the resonator (Figure 1; Paragraph 0052; 0061-62), said rear end is in mechanical engagement for the purpose of biasing the piezoceramic element (32) arranged between the resonator and the sonotrode (Figure 1; Paragraph 0061-62).
A person of ordinary skill in the art before the effective filing date of the claimed invention would have been motivated to modify Wernz as modified by Cimino, Toshiyuki, Hood, and Banko such that the sonotrode has a rear end mechanically coupled to the resonator and extending through the resonator, and said rear end is in mechanical engagement for the purpose of biasing the piezoceramic element arranged between the resonator and the sonotrode, as taught by Houser, as both references and the claimed invention are directed to ultrasonic devices. It would be obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified Wernz as modified by Cimino, Toshiyuki, Hood, and Banko with the teachings of Houser by incorporating the sonotrode has a rear end mechanically coupled to the resonator and extending through the resonator, and said rear end is in mechanical engagement for the purpose of biasing the piezoceramic element arranged between the resonator and the sonotrode in order to hold the piezoelectric components in place via compression (Houser Paragraph 0062).
Claims 33-34 are rejected under 35 U.S.C. 103 as being unpatentable over Wernz in view of Cimino in view of Toshiyuki, Hood, and Banko, in view of Sussman and further in view of Malinowski.
Regarding claim 33, Wernz, as modified by Cimino, Toshiyuki, Hood, and Banko and Sussman teaches the surgical instrument according to claim 28, but fails to disclose wherein the sonotrode comprises two axially spaced receiving grooves, each for one bearing ring, both bearing rings abutting on the housing from inside for the purpose of supporting the ultrasonic transducer.
However, Malinowski teaches wherein the sonotrode (10) comprises two axially spaced receiving grooves (bore, groove), each for one bearing ring (18, 21), both bearing rings abutting on the housing from inside for the purpose of supporting the ultrasonic transducer (Figure 1; Col 5, lines 14-20; Col 6, lines 36-38).
A person of ordinary skill in the art before the effective filing date of the claimed invention would have been motivated to modify Wernz, as modified by Cimino, Toshiyuki, Hood, Banko and Sussman, such that the sonotrode comprises two axially spaced receiving grooves, each for one bearing ring, both bearing rings abutting on the housing from inside, as taught by Malinowski, as the references and the claimed invention are directed to phacoemulsification devices. It would be obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified Wernz, as modified by Cimino, Toshiyuki, Hood, Banko and Sussman, with the teachings of Malinowski by incorporating the sonotrode comprises two axially spaced receiving grooves, each for one bearing ring, both bearing rings abutting on the housing from inside in order to hold the sonotrode in place.
Regarding claim 34, as modified by Cimino, Toshiyuki, Hood , Banko and Sussman teaches the surgical instrument according to claim 28, and further teaches wherein the front end of the sonotrode is centered by inwardly protruding protrusions (threads) of a connecting piece of the housing (nut) (Paragraph 0014) but fails to disclose wherein the sonotrode comprises a receiving groove for a bearing ring at its rear end opposite the front end.
Malinowski teaches wherein the sonotrode comprises a receiving groove (groove) for a bearing ring (21) at its rear end opposite the front end (Figure 1; Col 5, lines 14-16).
A person of ordinary skill in the art before the effective filing date of the claimed invention would have been motivated to modify Wernz, as modified by Cimino, Toshiyuki, Hood, Banko and Sussman, such that wherein the sonotrode comprises a receiving groove for a bearing ring at its rear end opposite the front end, as taught by Malinowski, as the references and the claimed invention are directed to phacoemulsification devices. It would be obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified Wernz, as modified by Cimino, Toshiyuki, Hood, Banko and Sussman, with the teachings of Malinowski by incorporating wherein the sonotrode comprises a receiving groove for a bearing ring at its rear end opposite the front end in order to secure the sonotrode in place (Malinowski Col 7, lines 64-66).
Claim 38 is rejected under 35 U.S.C. 103 as being unpatentable over Wernz in view of Cimino , Toshiyuki, Hood, and Banko, in view of Sussman, and further in view of Banko ‘150 (US 20160175150 A1) (previously of record).
Regarding claim 38, Wernz, as modified by Cimino, Toshiyuki, Hood, Banko and Sussman, teaches the surgical instrument according to claim 28, but fails to teach wherein a connection cable connected to the piezoceramic element extends out from the housing.
However, Banko is directed to a phacoemulsification device and teaches a connection cable (22) connected to the ceramic element (31, 32) extends out from the housing (20) (Figure 1A; Paragraph 0022).
A person of ordinary skill in the art before the effective filing date of the claimed invention would have been motivated to modify Wernz, as modified by Cimino, Toshiyuki, Hood, Banko and Sussman, such that a connection cable connected to the piezoceramic element extends out from the housing, as taught by Banko ‘150, as both references and the claimed invention are directed to phacoemulsification devices. It would be obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified Wernz, as modified by Cimino, Toshiyuki, Hood, Banko and Sussman, with the teachings of Banko ‘150 by incorporating a connection cable connected to the piezoceramic element extending out from the housing in order to connect the elements to a control unit (Banko ‘150 Paragraph 0022).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/Z.J./
Examiner, Art Unit 3771
/KATHERINE H SCHWIKER/Primary Examiner, Art Unit 3771
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